Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: January 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01464
`Patent 8,725,063 B2
`_______________
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`CHS Ex. 2012
`Apple v. CHS IPR2016-00794
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: January 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01464
`Patent 8,725,063 B2
`_______________
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`CHS Ex. 2012
`Apple v. CHS IPR2016-00794
`
`
`
`IPR2015-01464
`Patent 8,725,063 B2
`
`I. INTRODUCTION
`
`A. Background
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`an inter partes review of claims 1–61 of U.S. Patent No. 8,725,063 B2
`(Ex. 1001, “the ’063 patent”). Chestnut Hill Sound Inc. (“Patent Owner”)
`filed a Preliminary Response (Paper 8, “Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we conclude, under
`35 U.S.C. § 314(a), that Petitioner has not established a reasonable
`likelihood that it would prevail with respect to any of the challenged claims.
`Accordingly, we decline to institute an inter partes review of any claim of
`the ’063 patent.
`
`B. Related Matters
`The ’063 patent is the subject of Chestnut Hill Sound, Inc. v. Apple
`Inc., Civil Action No. 1:15-cv-00261 (D. Del). Pet. 1; Paper 4, 1.
`The ’063 patent also is the subject of Apple Inc. v. Chestnut Hill
`Sound Inc., Case IPR2015-01465 (PTAB). Pet. 1; Paper 4, 1.
`
`C. References Relied Upon
`Petitioner relies upon the following prior art references:
`U.S. Publication No. 2002/0002039 A1, pub. Jan. 3, 2002 (Ex. 1005,
`“Qureshey”);
`U.S. Publication No. 2003/0112585 A1, pub. June 19, 2003
`(Ex. 1008, “Silvester”);
`U.S. Patent No. 6,334,157 B1, iss. Dec. 25, 2001 (Ex. 1009,
`“Oppermann”);
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`Patent 8,725,063 B2
`U.S. Publication No. 2003/0167318 A1, pub. Sept. 4, 2003 (Ex. 1010,
`“Robbin”);
`U.S. Patent No. 7,606,790 B2, iss. Oct. 20, 2009, filed Mar. 3, 2004
`(Ex. 1014, “Levy”).
`Petitioner also supports its petition with the testimony of Melvin
`Mercer, Ph.D. (Ex. 1003, “Mercer Decl.”).
`
`D. The Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 3):
`Reference(s)
`Basis
`Qureshey
`§ 103(a)
`
`Claim(s) Challenged
`1–8, 13–16, 18, 19,
`22, 24, 25, 28–35,
`38–43, 45, 46, 48, 51,
`55–61
`9, 27, 37, 53
`
`10–12, 23, 26, 36, 44,
`52, 54
`17, 20, 47, 49
`
`Qureshey and
`Oppermann
`Qureshey and Silvester
`
`§ 103(a)
`
`§ 103(a)
`
`Qureshey and Robbin
`
`§ 103(a)
`
`Qureshey and Levy
`
`§ 103(a)
`
`21, 50
`
`
`E. The ’063 Patent
`The ’063 patent describes an audio entertainment system. Figures 1
`and 2B, reproduced below, illustrate an example:
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`Figure 1 is a block diagram of an entertainment system. Ex. 1001, 5:33–34.
`
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`Figure 2B is a pictorial view of the entertainment system. Id. at 5:37–39.
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`Entertainment system 100 includes base unit (table unit) 102 and
`control sub-assembly 104. Id. at 6:31–34. Base unit 102 includes audio
`amplifier 106, speakers 108, AM/FM tuner 114, and signal source interface
`sub-assembly 116 for connecting to one or more detachable devices
`(Auxiliary Source Modules, or “ASMs”) 118. Id. at 6:34–41. Examples of
`ASM 118 include an MP3 player, such as an iPod, and a satellite radio
`receiver. Id. at 6:43–52, 11:66–12:17. When ASM 118 is plugged into
`interface sub-assembly 116, ASM 118 supplies audio signals to audio
`amplifier 106 under the control of processor 115. Id. at 6:52–55. For
`example, if ASM 118 supplies an audio signal in digital format, the audio
`signal first is routed through processor 115, which includes a decoder. Id. at
`6:55–61. According to the ’063 patent:
`When a network adapter is used (wired or wireless), the system
`may control a remote device (personal computer, etc.) which
`can then act as a server of music and other files to the base unit
`(e.g., from Apple Computer’s iTunes service or the like) or as a
`streaming audio source. With appropriate decoder software
`executing on processor 115 or another processor (not shown),
`the device can play songs provided in various music formats,
`such as WAV, MP3, WMA, and AAC, among others.
`Id. at 6:64–7:5.
`Control sub-assembly 104 includes detachable control unit 104A and
`interface 104B. Id. at 6:41–43. Detachable control unit 104A includes
`display device 132, input devices 134A–134N, and wireless transceiver 136.
`Id. at 7:7–9. In a first mode, detachable control unit 104A is docked in
`interface 104B. Id. at 7:18–22. In a second mode, detachable control unit
`104A is undocked from the base unit and communicates with the base unit
`using wireless transceiver 136. Id. at 7:28–34, 11:57–60.
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`IPR2015-01464
`Patent 8,725,063 B2
`
`Claim 1, reproduced below (additional paragraphing supplied), is
`illustrative of the claimed subject matter:
`1. A method of using a media device, comprising:
`configuring the media device to operate in a first mode and in a
`second mode, selectively, wherein
`(A) when in the first mode, the media device performs
`the operations of
`(1) displaying, on a display of the media device, a
`list of digital media content stored on said
`media device,
`(2) receiving from a user an indication to play a
`selected digital media content from among
`the displayed list of content, and
`(3) playing the selected digital media content on
`the media device; and
`(B) when in the second mode, the media device performs
`the operations of
`(1) operatively connecting the media device with
`(a) a separate, selected first media source via
`at least in part an internet or with (b) a
`separate, selected second media source via a
`local network, to permit the media device to
`effect, at least in part, operation of the
`selected media source, and
`(2) sending, at least in part wirelessly, a media
`content control signal from the media device
`to the selected media source, said control
`signal causing the selected media source to
`download
`or
`stream media
`content
`responsive to the media content control
`signal from the selected media first or
`second source to a media output unit, for
`outputting via a media output unit that is
`separate from said media device,
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`whereby the user selectively controls the first
`media source and/or the second media
`source
`for
`content
`downloading
`or
`streaming.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`Petitioner does not propose any constructions. Pet. 6–7. Patent
`Owner proposes constructions for several terms. Prelim. Resp. 9–26.
`Nevertheless, it is not necessary to construe the terms proposed by Patent
`Owner to resolve the parties’ dispute. Even if Patent Owner’s arguments are
`rejected, Petitioner has not shown that it is reasonably likely to succeed.
`Accordingly, we decline to construe any terms expressly.1
`
`
`
`
`1 In a Decision to Institute in IPR2015-01465, issued concurrently with this
`Decision, we construe several of the terms proposed by Patent Owner on
`substantially the same arguments and evidence presented in the instant
`Preliminary Response.
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`IPR2015-01464
`Patent 8,725,063 B2
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`In an obviousness analysis, some reason must be shown as to why a
`person of ordinary skill would have combined or modified the prior art to
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`art may be found explicitly or implicitly in market forces; design incentives;
`the “‘interrelated teachings of multiple patents’”; “‘any need or problem
`known in the field of endeavor at the time of invention and addressed by the
`patent’”; and the background knowledge, creativity, and common sense of
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418–21 (2007)).
`
`
`1. Overview of Qureshey
`Qureshey describes a network-enabled “jukebox” for composing and
`listening to playlists of audio content. Ex. 1005, Abstract. Several devices
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`Patent 8,725,063 B2
`can be networked in an Internet Personal Audio Network (“IPAN”). Id.
`Figure 15, reproduced below, illustrates an example:
`
`
`
`Figure 15 is a block diagram illustrating a configuration among several
`network-enabled devices. Id. ¶ 46.
`A user accesses server site 1104 with PC 1508 over a network
`connection. Id. ¶ 151. The user composes playlists from the server site
`using IPAN software 1433 and can assign playlists to other devices on the
`network, such as device 1510 and device 1520. Id. The playlists are stored
`on server site 1104 and include URLs indicating the locations from which
`the audio files associated with the song titles in the playlist can be
`downloaded. Id. When device 1510, for example, connects to server site
`1104, the server site assigns a playlist to the device. Id. Device 1510 then
`proceeds to download the songs from the sites specified by the URLs and
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`IPR2015-01464
`Patent 8,725,063 B2
`stores the songs in disk space 1512. Id. If a particular URL is not working,
`server site 1104 will upload a different playlist from another device (e.g.,
`device 1520) the next time device 1520 connect to the network. Id. When
`device 1510 again connects to the network, server site 1104 will download
`device 1520’s playlist to device 1510. Id.
`In assigning playlists, server site 1104 can catalog the songs stored on
`the various devices (1508, 1510, 1520). Id. ¶ 174. If all the songs on the
`playlist assigned to device 1510 already are stored on device 1510, IPAN
`software 1433 catalogs the songs as being present. Id. Otherwise, IPAN
`software 1433 forms a list of songs not present on device 1510 and seeks to
`complete the list by sending to device 1510 the URLs of the songs stored on
`device 1520. Id. Qureshey also states that the IPAN can include a network
`connection between device 1510 and device 1520, for example a home
`network, “so that the first device 1510 and the second device 1520 can have
`audio files downloaded from the first device 1510 to the second device 1520
`almost instantaneously after the assignment of an audio file to the device
`1510” without the need to connect to the Internet. Id. ¶ 179. If server site
`1104 cannot locate an audio file, the song is not included on the playlist.
`Id. ¶ 174.
`Figures 17A–17I illustrate displays that are produced by web pages
`provided by server site 1104 and displayed on PC 1508. Id. ¶ 155. Figures
`17A and 17D, reproduced below, are examples:
`
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`Figure 17A is a picture illustrating playlists when IPAN manager software is
`started. Id. ¶48.
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`Patent 8,725,063 B2
`Figure 17D is a picture illustrating songs displayed in a playlist, with the
`playlist shown on the left and available songs listed on the right. Id. ¶ 160.
`Songs located on one of the devices shown in Figure 15 are shown as local
`audio files using icon 1762 (labeled in Figure 17D). Id. Songs located
`elsewhere on another device within the IPAN are shown using icon 1763
`(labeled in Figure 17D). Id.
`The user adds and deletes songs from the playlist using arrows 1799
`and 1760 (labeled in Figure 17A), respectively. Id. ¶ 155. The user can
`schedule playlists to be played at designated devices using schedule button
`1710 (labeled in Figure 17A). Id. ¶ 157. When the user edits a playlist, the
`user can press synchronize button 1718 (labeled in Figure 17A), such that
`the next time the target device connects to the server, the server will
`download the playlist to the device. Id.
`Qureshey also describes adding an audio file found on the Internet to
`server site 1104. Id. ¶173. Specifically, without accessing the server site,
`the user, at PC 1508, seeks out and locates the audio file on an Internet
`website (not shown in Figure 15) as addressed by a URL and downloads the
`audio file to the PC. Id. When the PC later connects to server site 1104, the
`PC uploads the audio file to the server site, which then makes the audio file
`available for playing. Id.
`
`
`2. Independent claims 1, 22, 31, and 51
`Claim 1 (additional paragraphing supplied) recites, when in the
`second mode,
`(2) sending . . . a media content control signal from the media
`device to the selected media source,
`
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`Patent 8,725,063 B2
`said control signal causing the selected media source to
`download or stream media content responsive to the media
`content control signal
`from the selected media first or second source to a media output
`unit,
`for outputting via a media output unit that is separate from said
`media device
`With reference to Figure 15 of Qureshey, Petitioner contends that PC 1508 is
`a media device and device 1510 is a media output unit. Pet. 9. As explained
`above, Qureshey describes that a user at PC 1508 can seek out and download
`an audio file from an Internet site (not shown in Figure 15) and that the PC
`later uploads the audio file to server site 1104 to make it available for
`playing. Ex. 1005 ¶ 173. Petitioner contends that this Internet site is a first
`media source. Pet. 17, 19–20. Regarding a second media source, Petitioner
`alternatively argues that it could be the internal storage of device 1510
`(Pet. 18, 21) or a different network-enabled device, such as device 1520
`(id. at 22).
`Patent Owner argues that Petitioner has not shown that Qureshey
`teaches a media content control signal sent from PC 1508 to the Internet site
`of Ex. 1005 ¶ 173 that causes the Internet site to download media content to
`device 1510 (the identified output unit). Prelim. Resp. 32. We agree with
`Patent Owner.
`Petitioner contends that “[t]he PC addressing a server on the Internet
`is the PC sending a control signal to the media source to cause it to
`download the file.” Pet. 19 (citing Ex. 1005 ¶ 173). Thus, Petitioner
`contends that a signal sent from PC 1508 to the Internet site of paragraph
`173 is a media content control signal, as recited in claim 1. Petitioner
`further argues that “Qureshey teaches that the PC (the media device) signals
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`IPR2015-01464
`Patent 8,725,063 B2
`an Internet server (a first media source) to download audio files (media
`content), via the PC, to the networked audio devices (media output units)
`when the audio files are in the devices’ assigned playlists.” Pet. 20.2 Thus,
`Petitioner argues that the request from PC 1508 to the Internet site to
`download an audio file causes that file to be downloaded and further causes
`the file to be streamed or downloaded from PC 1508 to device 1510 in those
`instances when the audio file is on device 1510’s playlist.
`We are not persuaded by Petitioner’s contentions. As detailed above,
`Qureshey describes that audio files are downloaded to device 1510 only after
`the user creates a playlist file on server site 1104, server site 1104 sends to
`device 1510 the playlist, and device 1510 requests the audio file using the
`URLs provided in the playlist file. Ex. 1005 ¶¶ 151, 173–74. Petitioner has
`not explained persuasively how the request sent from PC 1508 to the
`Internet site of paragraph 173 causes any of these steps.
`Petitioner argues that this limitation “must be read broadly enough to
`cover downloading media content to the media output unit through the
`media device, as described by Qureshey, because claim 6 depends from and
`further limits claim 1.” Pet. 20. Petitioner does not advance an express
`construction of claims 1 and 6 and, other than to invoke claim
`differentiation, Petitioner does not advance argument or evidence to support
`an implicit construction.
`
`
`2 We note that we have considered the testimony of Dr. Mercer cited by
`Petitioner throughout its analysis of this claim limitation. See, e.g., Ex. 1003
`¶¶ 31–36. This testimony, however, does little more than repeat (mostly
`verbatim) the arguments presented in the Petition, without citation to
`additional evidence or provision of additional meaningful explanation.
`Thus, we accord Dr. Mercer’s testimony little weight.
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`IPR2015-01464
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`We do not read claim 1 so broadly as to encompass Petitioner’s theory
`of Qureshey. The signal from PC 1508 to the Internet site of paragraph 173
`causes a file to be downloaded to the PC, and perhaps, indirectly, to server
`site 1104. A different signal (a playlist signal sent from server site 1104 to
`device 1510) causes device 1510 to seek out and download files on that
`playlist. Even assuming that the playlist signal causes device 1510 to
`download the file stored on PC 1508 originally downloaded from the
`Internet site, the playlist signal is a separate control that severs the causal
`connection between the download of the file from the Internet site to PC
`1508 and its eventual download to device 1510.
`The signal from PC 1508 to the Internet site, in essence, causes a file
`to be added to the IPAN library for later playback somewhere on the system.
`Under Petitioner’s apparent reading of claim 1, any signal directly, or
`indirectly, adding a file to a device also causes any further movement or
`playing of that file in the future, merely because the existence of the file on
`that device is a necessary condition to it being moved from that device to
`another. Petitioner, however, has provided no persuasive argument or
`evidence to show that claim 1 should be read this broadly. We conclude that
`such breadth is unreasonable.
`To prevail, Petitioner must show that the media content control signal,
`sent from media device to the first media source, causes the first media
`source to download or stream the content to the media output unit and that
`the media content is downloaded or streamed to the media output unit
`“responsive to the media content control signal.” Petitioner has not
`introduced evidence or argument sufficient to establish that it is likely to
`show this causal link.
`
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`Petitioner also has not shown that Qureshey teaches sending a media
`content control signal to a second media source.3 As stated above, Petitioner
`alternately identifies the local storage of device 1510 (Pet. 21) and “a
`different network-enabled audio device,” which we assume to mean device
`1520 (id. at 22) as the second media source. As to the local storage of
`device 1510, Petitioner argues that “Qureshey also teaches that the PC (the
`media device) sends a media content control signal to cause a network-
`enabled audio device to stream an audio file from its local storage (a second
`media source) for playback on the network-enabled audio device (a media
`output unit).” Id. at 21. As to the “different network-enabled audio device,”
`Petitioner argues that “Qureshey also teaches that playlists assigned by the
`PC (the media device) to a network-enabled audio device (the media output
`unit) can be downloaded from a different network-enabled audio device (a
`second media source) over a local network.” Id. at 22 (citing Ex. 1005 ¶ 179
`(describing a home network allowing for transfer between device 1520 and
`device 1510)).
`In each of these alternatives, Petitioner does not identify explicitly or
`explain what it alleges to be the media content control signal. Specifically,
`Petitioner does not identify a control signal sent from PC 1508 to device
`1510 or to device 1520.
`
`
`3 Patent Owner argues that the claims should be construed to require that the
`user selectively controls both the first media source and the second media
`source. Prelim. Resp. 19–22. We reject this argument in IPR2015-01465.
`Nevertheless, as explained above, it is not necessary to resolve the dispute in
`this proceeding, as Petitioner is not likely to show obviousness under a
`broader construction.
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`Petitioner’s arguments as to a second media source are problematic
`for a second reason. Claim 1 further recites “whereby the user selectively
`controls the first media source and/or the second media source for content
`downloading or streaming.” Petitioner presents arguments as to how the
`Internet site of Qureshey’s paragraph 173 (the alleged first media source) is
`selectively controlled. Pet. 25.4 As Patent Owner points out (Prelim. Resp.
`30–31), Petitioner makes no argument and presents no evidence as to
`whether the user selectively controls device 1510 or device 1520
`(alternatives for the second media source). Petitioner cites to Dr. Mercer’s
`testimony in support of its argument. Pet. 25 (citing Ex. 1003 ¶ 43).
`Dr. Mercer, however, also is silent as to whether a user selectively controls a
`second media source.
`In sum, on this record, Petitioner is not reasonably likely to show that
`Qureshey teaches “sending . . . a media content control signal from the
`media device” either to a first media source or a to second media source, that
`control signal “causing the selected media source to download or stream
`media content responsive to the media content control signal from the
`selected media first or second source to a media output unit,” as recited in
`claim 1. Nor is Petitioner reasonably likely to show that Qureshey teaches
`that a user selectively controls a second media source for content
`downloading or streaming, as recited in claim 1.
`Independent claims 22, 31, and 51 recite limitations similar in
`substance to those of claim 1 that Petitioner has not shown to be taught by
`
`
`4 This evidence and argument is not sufficient to overcome Petitioner’s
`failure to show a media content control signal sent from a media device to a
`first media source.
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`Qureshey. Petitioner refers back to its analysis of claim 1 for these
`limitations. Pet. 35 (incorporating its analysis of “1.6” and “1.7” for
`limitations it identifies as “22.6” and “22.7”), 36 (chart referencing claim 1
`analysis for claims 31 and 51). For the same reasons as given for claim 1,
`Petitioner is unlikely to show that Qureshey teaches the parallel limitations
`of claims 22, 31, and 51.
`On this record, Petitioner has not demonstrated a reasonable
`likelihood that it would prevail with respect to claims 1, 22, 31, and 51 as
`obvious over Qureshey.
`
`
`3. Remaining Obviousness Contentions
`The remaining claims depend from claims 1, 22, 31, and 51.
`Petitioner’s contentions as to the dependent claims do not present argument
`or evidence overcoming the deficiencies noted above as to claims 1, 22, 31,
`and 51. Accordingly, Petitioner has not demonstrated a reasonable
`likelihood that it would prevail with respect to:
`Claims 2–8, 13–16, 18, 19, 24, 25, 28–30, 32–35, 38–43, 45, 46, 48,
`and 55–61 as obvious over Qureshey;
`Claims 9, 27, 37, and 53 as obvious over Qureshey and Oppermann;
`Claims 10–12, 23, 26, 36, 44, 52, and 54 as obvious over Qureshey
`and Silvester;
`Claims 17, 20, 47, and 49 as obvious over Qureshey and Robbin; or
`Claims 21 and 50 as obvious over Qureshey and Levy.
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`III. CONCLUSION
`We decline to institute an inter partes review of claims 1–61.
`
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied.
`FURTHER ORDERED that no inter partes review is instituted.
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`PETITIONER
`Walter Karl Renner, axf@fr.com
`Joshua A. Griswold, IPR39521-0017IP1@fr.com
`Fish & Richardson P.C.
`
`PATENT OWNER
`Edmund J. Walsh, EWalsh-PTAB@wolfgreenfield.com
`Gerald B. Hrycyszyn, GHrycyszyn-PTAB@wolfgreenfield.com
`Wolf Greenfield & Sacks, P.C.
`
`
`
`
`
`19
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