Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: April 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`v.
`SONOS, INC.,
`Patent Owner.
`
`IPR2021-01563
`Patent 9,967,615 B2
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`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, TERRENCE W. McMILLIN, and
`GARTH D. BAER, Administrative Patent Judges.
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`571-272-7822
`
`Paper 14
`Date: April 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`v.
`SONOS, INC.,
`Patent Owner.
`
`IPR2021-01563
`Patent 9,967,615 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, TERRENCE W. McMILLIN, and
`GARTH D. BAER, Administrative Patent Judges.
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
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`IPR2021-01563
`Patent 9,967,615 B2
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`I.
`
`INTRODUCTION
`Background and Summary
`A.
`On September 28, 2021, Google LLC (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1, 2, 6–14, 18–25, and 27–29 (the
`“challenged claims”) of U.S. Patent No. 9,967,615 B2 (Ex. 1001, “the ’615
`patent”). Paper 1 (“Pet.”). Sonos, Inc. (“Patent Owner”)2 filed a
`Preliminary Response. Paper 6 (“Preliminary Response” or “Prelim.
`Resp.”). With our authorization, Petitioner thereafter filed a Reply to Patent
`Owner’s Preliminary Response (Paper 8 (“Reply”)) and Patent Owner filed a
`Sur-reply in Support of its Preliminary Response (Paper 12 (“Sur-reply”)) to
`address the issue of discretionary denial under 35 U.S.C. § 314.3
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (permitting the
`Board to institute trial on behalf of the Director). The standard for
`institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes
`review may not be instituted unless “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition, the Preliminary Response, the
`Reply, the Sur-reply, and the evidence of record, we institute an inter
`
`
`1 Petitioner identifies itself, Google LLC, as the real party-in-interest to this
`proceeding. Pet. 76.
`2 Patent Owner identifies itself, Sonos, Inc., as the real party-in-interest to
`this proceeding. Paper 3, 1.
`3 Additionally, with our authorization, Patent Owner filed a Motion to
`Dismiss Under 35 U.S.C. § 315(a) (Paper 7, “Motion”) and Petitioner filed
`an Opposition to Patent Owner’s Motion to Dismiss (Paper 10). We denied
`this Motion on April 12, 2022 (Paper 13).
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`partes review as to the challenged claims of the ’615 patent on the grounds
`presented.
`
`Related Proceedings
`B.
`The parties identify Google LLC v. Sonos, Inc., No. 3:20-cv-06754
`(N.D. Cal.) as a related proceeding in which the ’615 patent is asserted. Pet.
`76; Paper 3, 1. The Parties also identify Sonos, Inc. v. Google LLC, No.
`3:21-cv-07559 (N.D. Cal.), which was transferred from the Western District
`of Texas (Sonos, Inc. v. Google LLC, No. 6:20-cv-00881 (W.D. Tex.)), as
`involving the ’615 patent. Pet. 76; Prelim. Resp. 1; Reply 2.
`C.
`The ’615 Patent
` The ’615 patent is titled “Networked Music Playback.” Ex. 1001,
`code (54). The ’615 patent relates to “providing music for playback via one
`or more devices on a playback data network.” Id. at 1:14–15. In particular,
`the ’615 patent describes connecting one or more multimedia playback
`devices via a network to share music and other multimedia content among
`devices. Id. at 1:66–2:9. The ’615 patent also describes facilitating music
`streaming from a music-playing application to one or more multimedia
`content playback systems and locations. Id. at 2:10–17, 12:8–14.
`Figure 7 of the ’615 patent, reproduced below, shows an embodiment
`using a cloud-based network to distribute content on one or more local
`networks of multimedia playback devices. Id. at 12:19–25.
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`Figure 7 of the ’615 patent depicts system 700 including cloud network 710,
`content providers 720, 730, 740, 750, and local playback networks 760, 770.
`Id. at 12:31–34. Using cloud 710, content providers 720, 730, 740, 750
`provide multimedia content to controllers 762, 772 and local playback
`devices 762, 770 in local playback networks 760, 770. Id. at 12:34–43.
`For example, a user listens to a third party music
`application (e.g., Pandora™ Rhapsody™, Spotify™, and so on)
`on her smart phone while commuting. She’s enjoying the
`current channel and, as she walks in the door to her home,
`selects an option to continue playing that channel on her
`household music playback system (e.g., Sonos™). The
`playback system picks up from the same spot on the selected
`channel that was on her phone and outputs that content (e.g.,
`that song) on speakers and/or other playback devices connected
`to the household playback system. A uniform resource
`indicator (URI) (e.g., a uniform resource locator (URL)) can be
`passed to a playback device to fetch content from a cloud
`and/or other networked source, for example. A playback device,
`such as a zone player, can fetch content on its own without use
`of a controller, for example. Once the zone player has a URL
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`(or some other identification or address) for a song and/or
`playlist, the zone player can run on its own to fetch the content.
`Songs and/or other multimedia content can be retrieved from
`the Internet rather than a local device (e.g., a compact disc
`(CD)), for example.
`Id. at 12:44–63.
`
`D. Challenged Claims
`Petitioner challenges claims 1, 2, 6–14, 18–25, and 27–29 of the ’615
`patent. Pet. 1. Of the challenged claims, claim 1 is an independent method
`claim, claim 13 is an independent non-transitory computer readable medium
`claim, and claim 25 is an independent system claim. Ex. 1001, 17:36–18:12,
`19:48–20:27, 22:5–58. Claim 1 recites:
`1. A method comprising:
`causing, via a control device, a graphical interface to
`display a control interface including one or more transport
`controls to control playback by the control device;
`after connecting to a local area network via a network
`interface, identifying, via the control device, playback devices
`connected to the local area network;
`causing, via the control device, the graphical interface to
`display a selectable option for transferring playback from the
`control device;
`detecting, via the control device, a set of inputs to transfer
`playback from the control device to a particular playback device,
`wherein the set of inputs comprises: (i) a selection of the
`selectable option for transferring playback from the control
`device and (ii) a selection of the particular playback device from
`the identified playback devices connected to the local area
`network;
`after detecting the set of inputs to transfer playback from
`the control device to the particular playback device, causing
`playback to be transferred from the control device to the
`particular playback device, wherein transferring playback from
`the control device to the particular playback device comprises:
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`(a) causing one or more first cloud servers to add
`multimedia content to a local playback queue on the
`particular playback device, wherein adding
`the
`multimedia content to the local playback queue comprises
`the one or more first cloud servers adding, to the local
`playback queue, one or more
`resource
`locators
`corresponding to respective locations of the multimedia
`content at one or more second cloud servers of a streaming
`content service;
`(b) causing playback at the control device to be
`stopped; and
`(c) modifying the one or more transport controls of
`the control interface to control playback by the playback
`device; and
`causing the particular playback device to play back the
`multimedia content, wherein the particular playback device
`playing back the multimedia content comprises the particular
`playback device retrieving the multimedia content from one or
`more second cloud servers of a streaming content service and
`playing back the retrieved multimedia content.
`Id. at 17:36–18:12.
`
`The Asserted Grounds
`E.
`Petitioner challenges claims 1, 2, 6–14, 18–25, and 27–29 of the ’615
`patent based on the grounds set forth in the table below.
`Claims Challenged
`35 U.S.C. §
`References
`1, 6–13, 18–25, 27–29
`1034
`Al-Shaykh5, Qureshey6
`1, 6–13, 18–25, 27–29
`103
`Al-Shaykh, Qureshey, Phillips7
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent claims priority to applications filed before
`March 16, 2013, we refer to the pre-AIA version of § 103. Our opinions on
`the present record would not change if the AIA version of § 103 were to
`apply.
`5 US 2011/0131520 A1, published June 2, 2011 (Ex. 1007).
`6 US 8,050,652 B2, issued Nov. 1, 2011 (Ex. 1008).
`7 US 8,799,496 B2, issued Aug. 5, 2014 (Ex. 1006).
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`Claims Challenged
`2, 14
`2, 14
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`35 U.S.C. §
`103
`103
`
`References
`Al-Shaykh, Qureshey, Ramsay8
`Al-Shaykh, Qureshey, Phillips,
`Ramsay
`Pet. 2–3. Petitioner relies on the Declaration of Dr. Harry Bims (Ex. 1003,
`“Bims Decl.”), which provides evidence in support of the contentions in the
`Petition. Patent Owner has not submitted a declaration or other testimonial
`evidence of an expert so, at least at this stage, there is no testimony contrary
`to that of Dr. Bims to consider.9
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`As a threshold matter, we consider the arguments and evidence of the
`parties relating to discretionary denial under 35 U.S.C. § 314(a). Institution
`of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
`never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). The
`Board has held that the advanced state of a parallel district court action is a
`factor that may weigh in favor of denying a petition under § 314(a). See
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20
`(PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board,
`Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice
`Guide”), available at https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf. We consider the following factors to assess “whether efficiency,
`
`
`8 US 8,724,600 B2, issued May 13, 2014 (Ex. 1009).
`9 The Patent Owner’s Preliminary Response and Sur-reply are limited to
`arguing that the Petition should be discretionarily denied under 35 U.S.C.
`§ 314(a). Thus, at this stage, Petitioner’s unpatentability arguments and
`evidence are not disputed in any regard by Patent Owner.
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`3.
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`4.
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`2.
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`fairness, and the merits support the exercise of authority to deny institution
`in view of an earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6.
`
`Patent Owner argues that “[e]very factor weighs in favor of denial”
`and “the Board should deny institution.” Prelim. Resp. 1. Petitioner argues
`“[t]he Board should institute this proceeding because the relevant factors
`strongly weigh against discretionary denial under 35 U.S.C. § 314(a).”
`Pet. 70. Based on our review of the arguments and evidence, we determine
`not to exercise our discretion to deny institution under 35 U.S.C. § 314(a).
`1. Whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted
`Fintiv indicated that, in previous Board decisions, the existence of a
`stay pending Board resolution of an inter partes review has weighed
`strongly against denial, while a denial of such a stay request sometimes
`weighs in favor of denial. Fintiv, Paper 11 at 6–8.
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`6.
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`No stay exists in either of the pending district court proceedings.
`Pet. 72; Prelim. Resp. 3. Petitioner told the court that it would not move for
`a stay. Prelim. Resp. 3. Therefore, this factor weighs in favor of exercising
`our discretion to deny institution.
`2.
`Proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision
`The proximity factor in Fintiv, on its face, asks us to evaluate our
`discretion in light of a trial date that has been set in a parallel litigation. See
`Fintiv, Paper 11 at 3, 5 (“NHK applies to the situation where the district
`court has set a trial date to occur earlier than the Board’s deadline to issue a
`final written decision in an instituted proceeding.”; “When the patent owner
`raises an argument for discretionary denial under NHK due to an earlier trial
`date, the Board’s decisions have balanced the following factors . . . .”)
`(citing NHK, Paper 8 (footnote omitted)). As noted above in the discussion
`of a stay, Fintiv has expressed concern regarding “inefficiency and
`duplication of efforts.” Id. at 6. In its analysis of the proximity factor,
`Fintiv echoes that concern in its guidance that “[i]f the court’s trial date is at
`or around the same time as the projected statutory deadline or even
`significantly after the projected statutory deadline, the decision whether to
`institute will likely implicate other factors discussed herein, such as the
`resources that have been invested in the parallel proceeding.” Id. at 9.
`Similarly, in NHK, the Board expressed the concern that a trial before the
`deadline for a final written decision addressing the same prior art and
`arguments would have undermined the Board’s objectives of providing an
`effective and efficient alternative to district court litigation. NHK, Paper 8 at
`20 (citing Gen. Plastic, Paper 19 at 16–17).
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`The court set a trial date of May 10, 2023.10 Ex. 2003, 4. This is after
`our projected statutory deadline for a final written decision in April, 2023.
`See Prelim. Resp. 5 (“According to the one-year statutory timeline, if
`instituted, a final written decision would be expected around April 25,
`2023.”). Thus, this proceeding will be concluded before the parallel
`proceedings in district court.
`Patent Owner argues, however, that the court has invoked its “patent
`showdown procedure” and that trial on one claim of the ’615 patent may
`take place as early as the summer of 2022.11 Prelim. Resp. 4–5; see also
`Ex. 2002 (Patent Showdown Scheduling Order). Petitioner argues “Patent
`Owner only speculates as to when the court may set the ‘showdown’ trial,
`which may not even occur.” Reply 5. Petitioner further contends that, even
`if a “showdown” trial is held, it will have a narrow scope and, if this inter
`partes review proceeding is instituted, it will not overlap with this
`proceeding because it has stipulated that it “will not pursue in the Related
`Litigations the specific grounds in the Petition or any other ground raised or
`that could have reasonably been raised in the Petition.” Reply 3, 5–6.
`Therefore, if we institute, the Board and the court will not be addressing the
`same prior art and arguments.
`To the extent the court’s Patent Showdown Scheduling Order is
`relevant, it sets a briefing schedule and a hearing date for a summary
`judgment motion on one claim of the ’615 patent. See Ex. 2002, 1–2. But, it
`
`
`10 Petitioner indicates that both district court cases are proceeding according
`to the same schedule. Reply 5.
`11 Petitioner “elected independent claim 13 of the ’615 Patent for the patent
`showdown procedure; whereas [Patent Owner] has elected a claim from a
`different patent.” Prelim. Resp. 5 (footnote omitted).
`
`10
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`does not indicate whether the issues of non-infringement, invalidity, or both
`of this one claim will be considered. Id. at 1 (the “alleged infringer
`[Petitioner] shall . . . select . . . one asserted claim—presumably the . . .
`strongest case for noninfringement or invalidity”). It further indicates “[i]f
`summary judgment fails to resolve the parties’ dispute over the claim(s)
`asserted in the showdown, counsel should be prepared for a prompt trial on
`the remaining issues.” Id. at 3. This Order does not indicate when this
`contingent trial will occur or what issues will be addressed. Forecasting
`what issues may remain following summary judgment briefing and hearing
`and when, or if, trial on these issues may occur would be speculation. And,
`whatever issues remain, the scope of the “showdown” trial will be narrow
`relative to the scope of the Petition. We, therefore, accord this potential
`“showdown” trial little weight in our consideration of this factor.
`As trial in the parallel district court cases has been set for May 2023,
`and our final written decision is due before then, this factor weighs against
`exercising our discretion to deny institution.
`3.
`Investment in the parallel proceeding by the court and the parties
`Under this factor, “[t]he Board . . . consider[s] the amount and type of
`work already completed in the parallel litigation by the court and the parties
`at the time of the institution decision.” Fintiv, Paper 11 at 9. “This
`investment factor is related to the trial date factor, in that more work
`completed by the parties and court in the parallel proceeding tends to
`support the arguments that the parallel proceeding is more advanced, a stay
`may be less likely, and instituting would lead to duplicative costs.” Id. at 10.
`Patent Owner argues that “[g]iven the substantial amount of work the
`parties and several courts have already completed, and the fact that Google
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`filed its petition on the last possible day despite knowing of the ’615 Patent
`for over a year before any district court case was initiated, this factor weighs
`in favor of denial.” Prelim. Resp. 10. Petitioner argues that “[t]his factor
`also favors institution because significant discovery and Markman-related
`deadlines remain in the Related Litigations” and “[m]ost of the substantial
`investments Patent Owner notes are irrelevant to the issues presented in the
`Petition.” Reply 5–6. Petitioner also argues, “while the Petition was filed
`on the bar date, Petitioner did not engage in inexcusable delay, because it
`filed before Patent Owner responded to Petitioner’s invalidity contentions.”
`Id. at 7. Although the court and the parties have completed much work in
`the district court cases, it appears that no substantive orders have been
`entered and that the completed work does not overlap with the
`unpatentability issues in this proceeding. We determine this factor to be
`neutral or to weigh slightly in favor of denying institution.
`4.
`Overlap between issues raised in the petition and in the parallel
`proceeding
`“[I]f the petition includes the same or substantially the same claims,
`grounds, arguments, and evidence as presented in the parallel proceeding,
`this fact has favored denial.” Fintiv, Paper 11 at 12. “Conversely, if the
`petition includes materially different grounds, arguments, and/or evidence
`than those presented in the district court, this fact has tended to weigh
`against exercising discretion to deny institution under NHK.” Id. at 12–13.
`Petitioner stipulates “that if the Board institutes its Petition, it will not
`pursue in the Related Litigations the specific grounds in the Petition or any
`other ground raised or that could have reasonably been raised in the
`Petition.” Reply 3. We agree with Petitioner that this stipulation will
`prevent overlap between the factual and legal issues presented in the Petition
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`and the factual and legal issues in the district court cases. We also agree
`with Petitioner that “[b]ecause the institution decision will precede any
`potential trial; the district court and the Board will not conduct duplicative
`review or provide conflicting decisions. Petitioner’s Sotera stipulation
`strongly favors institution.” Id. (citing Sotera Wireless, Inc. v. Masimo
`Corp., IPR2020- 01019, Paper 12 at 18-19 (PTAB Dec. 1, 2020)
`(precedential as to § II.A); Sand Revolution II, LLC v. Cont’l Intermodal
`Grp.-Trucking LLC, IPR2019- 01393, Paper 24 at 11-12 (PTAB June 16,
`2020) (informative)).
`This proceeding also involves substantially more claims of the ’615
`patent than the district court cases. Petitioner challenges claims 1, 2, 6–14,
`18–25, and 27–29 (22 claims) in this proceeding. Pet. 1. “At issue in the
`district court now for the ’615 patent are claims 13, 14, 15, 18, 19, 20, 21,
`25, 26” (9 claims). Prelim. Resp. 14. There are 15 claims of the ’615 patent
`(claims 1, 2, 6–12, 22–24, 27–29) challenged in the Petition that are not at
`issue in the district court.
`Because the Board will not be considering the same or substantially
`the same claims, grounds, arguments, and evidence as presented in the
`district court litigations, we determine that this factor weighs heavily against
`exercising our discretion to deny institution.
`5. Whether the petitioner and the defendant in the parallel proceeding
`are the same party
`The parties are the same in the district court litigations. Pet. 74;
`Prelim. Resp. 16. However, our final written decision should precede trial in
`the district court and we are likely to address unpatentability first. Under
`these circumstances, estoppel pursuant to 35 U.S.C. §315(e)(2) is likely to
`apply and bar Petitioner from asserting that any challenged claim is invalid
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`on any ground that the Petitioner raised or reasonably could have raised
`during this proceeding. We determine, therefore, that this factor weighs
`against exercising our discretion to deny institution.
`6.
`Other circumstances that impact the Board's exercise of discretion,
`including the merits
`We consider the merits of the Petition to be strong. At least at this
`stage of this proceeding, Patent Owner does not challenge any aspect of
`Petitioner’s unpatentability showing. See generally Prelim. Resp.
`Moreover, we are persuaded, based upon the arguments and the evidence
`presented in the Petition (and analyzed below), that the showing of
`unpatentability of the challenged claims is well-supported.
`We determine that this factor weighs against exercising our discretion
`to deny institution.
`7.
`Holistic Assessment of Factors and Conclusion
`Applying a holistic view, we determine that the efficiency and
`integrity of the system are best served by institution. Thus, after considering
`the factors outlined in the precedential order in Fintiv, we do not exercise
`our discretion to deny institution under § 314(a).
`B.
`Claim Construction
`Claim construction in this proceeding is governed by 37 C.F.R.
`§ 42.100(b), which provides:
`
`In an inter partes review proceeding, a claim of a patent,
`or a claim proposed in a motion to amend under §42.121, shall
`be construed using the same claim construction standard that
`would be used to construe the claim in a civil action under
`35 U.S.C. 282(b), including construing the claim in accordance
`with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.
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`Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–
`19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
`customary meaning, as would have been understood by a person of ordinary
`skill in the art at the time of the invention, in light of the language of the
`claims, the specification, and the prosecution history of record. See Thorner
`v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`There is a “heavy presumption,” however, that a claim term carries its
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We only construe
`terms to the extent necessary to determine the dispute between the parties.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy.’”)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
` Petitioner relies on claim constructions determined by the court and
`Patent Owner’s proposed constructions for a number of terms. Pet. 12. The
`Petition states:
`In the related litigation, before the case was transferred,
`the District Court for the Western District of Texas held that the
`following terms that appear in the ’615 patent should be
`construed to their plain and ordinary meanings: “multimedia,”
`“network interface,” “playback device,” and “local area
`network.” Exs. 1016-1017. Additionally, although dropped
`from consideration before argument and ruling, and thus not
`construed by the Texas district court, [Patent Owner] and the
`defendants agreed to construe “one or more transport controls
`to control playback” as “one or more user input elements, each
`enabling control of a respective playback-related function.” Ex.
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`1012 at 4. Additionally, [Patent Owner] proposed construing
`“wireless communication interface” as “physical component of
`a device that provides a wireless interconnection with a local
`area network.” Id. at 3.
`[Patent Owner] also asserted the plain and ordinary
`meaning for the following claim terms: “first cloud servers,”
`“second cloud servers of a streaming content service,” and
`“playback queue.” Id. at 4. For the purposes of this IPR,
`[Petitioner] adopts the constructions of the District Court for the
`Western District of Texas and [Patent Owner] ’s proposed
`claim constructions for those terms not presented for
`construction and construed by the district court. See Bims
`[Decl.], ¶¶38-40.
`
`Id. Patent Owner does not present any claim construction arguments. See
`generally Prelim. Resp. We preliminarily adopt the constructions set forth in
`the Petition for the purpose of considering the merits of the Petition.12 And,
`we determine that it is not necessary to discuss or construe any additional
`claim terms to decide whether trial should be instituted.
`C.
`Legal Standards
`A patent claim is unpatentable as obvious 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.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations
`including: we (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 ordinary
`
`
`12 We wish to hear from Patent Owner regarding claim construction and to
`have the record more fully developed prior to making any non-preliminary
`claim construction determinations.
`
`16
`
`
`
`IPR2021-01563
`Patent 9,967,615 B2
`
`skill in the art; and (4) objective evidence of non-obviousness.13 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). Petitioners cannot satisfy their
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`D.
`Level of Ordinary Skill in the Art
`With regard to the level of ordinary skill in the art, Petitioner
`contends:
`
`A POSITA would have had a bachelor’s degree in physics,
`mechanical engineering, electrical engineering, or audio
`engineering (or an equivalent degree), and three years of
`experience designing or implementing networked wireless
`systems related to streaming media over the Internet. Bims
`[Decl.], ¶¶20–23. With more education,
`for example,
`postgraduate degrees and/or study, less experience is needed to
`attain an ordinary level of skill in the art. Similarly, more
`experience can substitute for formal education. Id.
`Pet. 11. Patent Owner does not address the level of ordinary skill in the art.
`See generally Prelim. Resp.
`Petitioner’s proposal is consistent with the technology described in the
`Specification and the cited prior art. In order to determine whether
`Petitioner has demonstrated a reasonable likelihood of showing the
`
`
`13 The parties have not asserted or otherwise directed our attention to any
`objective evidence of nonobviousness.
`
`17
`
`
`
`IPR2021-01563
`Patent 9,967,615 B2
`
`unpatentability of at least one of the challenged claims, we adopt Petitioner’s
`proposed level of skill in the art.
`Cited References
`E.
`Al-Shaykh (Ex. 1007)
`1.
`Al-Shaykh is titled “System and Method for Transferring Media
`Content from a Mobile Device to a Home Network.” Ex. 1007, code (54).
`Al-Shaykh “relates to a system and a method which enable a media
`application on the mobile device to share media content with rendering
`devices in the home network.” Id. ¶ 2.
`Figure 1 of Al-Shaykh, reproduced below, “illustrates a system for
`transferring media content from a mobile device to a home network.” Id.
`¶ 68.
`
`
`Figure 1 of Al-Shaykh, reproduced above, depicts system 10 for transferring
`media content 15 from mobile device 11 to rendering devices 21, 22, 23 on
`home network 20. Id. ¶ 78. “[M]obile device 11 may have a display screen
`capable of displaying user interface elements and/or visual media content.”
`Id. Rendering devices 21, 22, 23 “may be any rendering device capable of
`
`18
`
`
`
`IPR2021-01563
`Patent 9,967,615 B2
`
`rendering the media content received using the home network 20 as known
`to one skilled in the art.” Id. ¶ 81. Mobile device 11 uses a media
`application to access media content 15 stored locally or remotely provided
`via the Internet. Id. ¶¶ 82–83.
`Figure 2, reproduced below, “illustrates a user interface of a media
`application having a set of controls and indications in an embodiment of the
`present invention.” Id. ¶ 69.
`
`
`Figure 2 of Al-Shaykh, reproduced above, depicts user interface 31 for the
`media application of mobile device 11. Id. ¶ 85. User interface 31 includes
`media controls 42 for controlling media-related tasks (id. ¶ 88) and set of
`controls and indications 35 for enabling the user to transfer media content to
`rendering devices 21, 22, 23 (id. ¶ 89).
`[M]obile device 11 may access and/or obtain the media content
`from a remote content service using a 3G carrier network for use
`in a media application on the mobile device 11. Then, the mobile
`device 11 may relay the media content to the target rendering
`device using the home network 20. In this case, the media
`content from the remote content service may flow through the
`
`19
`
`
`
`IPR2021-01563
`Patent 9,967,615 B2
`
`
`mobile device 11 if the transfer of the media content is enabled
`using the set of controls and indications 35.
`Id. ¶ 95.
`
`Qureshey (Ex. 1008)
`2.
`Qureshey is titled “Method and
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