petition for inter partes review of u.s. patent no....
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Petition for Inter Partes Review of U.S. Patent No. 6,199,076
i
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In the Inter Partes Review of: Trial Number:
U.S. Patent No. 6,199,076 Panel: To Be Assigned
Filed: Oct. 2, 1996
Issued: Mar. 6, 2001
Inventor(s): Logan et al.
Assignee: Personal Audio LLC
Title: Audio Program Player Including a Dynamic Program Selection Controller
Mail Stop Inter Partes Review Commissioners for Patents P.O. Box 1450 Alexandria, VA 22313-1450
PETITION FOR INTER PARTES REVIEW UNDER
35 U.S.C. § 311 AND 37 C.F.R. § 42.100
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
ii
TABLE OF CONTENTS
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ......................... 1
A. 37 C.F.R. § 42.8(b)(1): Real Party-In-Interest .............................................. 1
B. 37 C.F.R. § 42.8(b)(2): Related Matters ....................................................... 1
C. 37 C.F.R. § 42.8(b)(3) and (4): Counsel and Service Information ............... 1
D. Payment of Fees – 37 C.F.R. § 42.103 .......................................................... 2
II. SUMMARY OF THE ’076 PATENT .............................................................. 2
A. Brief Description of the Alleged Invention of the ’076 Patent ..................... 2
B. Summary of the Prosecution History of the ’076 Patent .............................. 2
C. Summary of Litigation History ..................................................................... 4
D. IPR Proceeding (IPR2015-00494) ................................................................ 4
III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ........................... 5
A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 5
B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
Requested ................................................................................................................ 5
1. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested ................... 5
2. 37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Ground(s) on
Which the Challenge Is Based ............................................................................. 5
3. Claim Construction 37 C.F.R. § 42.104(b)(3) .............................................. 6
IV. THERE IS A REASONABLE LIKELIHOOD THAT ONE OR MORE
CLAIMS OF THE ’076 PATENT IS UNPATENTABLE UNDER 37 C.F.R. §
42.104(b)(4) and (5). ...............................................................................................23
A. Person Of Ordinary Skill in the Art (POSITA) ...........................................23
B. Summary of Prior Art ..................................................................................23
1. U.S. Patent Application Pub. No. 2002/0177914 to Tim Chase (“Chase”) 23
2. Loeb, S., “Architecting Personalized Delivery of Multimedia Information",
Communications of the ACM, December 1992, Vol. 35, No. 12 ("Loeb”) ......27
3. U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”) .................28
C. Ground 1 – Claims 1 and 4-6 are obvious under 35 U.S.C. 103(a) over
Chase in view of Loeb ..........................................................................................28
1. Claim 1 ........................................................................................................29
2. Claim 4 ........................................................................................................42
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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3. Claim 5 ........................................................................................................43
4. Claim 6 ........................................................................................................43
D. Ground 2 – Claims 2-3 and 14-15 Are Obvious Under 35 U.S.C. 103(a)
over Chase in view of Loeb in view of Inazawa ..................................................44
1. Claim 2 ........................................................................................................44
2. Claim 3 ........................................................................................................51
3. Claim 14 ......................................................................................................56
4. Claim 15 ......................................................................................................59
V. RELIEF REQUESTED ...................................................................................60
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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EXHIBIT LIST
Exh. No. Description
1001 U.S. Patent No. 6,199,076 to Logan, et al. (“’076 Patent”).
1002 Declaration of Martin Walker.
1003 Publicly Available File History of U.S. Patent No. 6,199,076 (“’076 File
History”)
1004 U.S. Unpublished Patent Application No. 08/705,797 to Tim Chase (“Chase
Parent”)
1005 U.S. Patent Application Publication No. 2002/0177914 to Tim Chase
(“Chase”)
1006 U.S. Provisional Patent Application No. 60/003,164 to Tim Chase (“Chase
Provisional”)
1007 U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”)
1008 Loeb, S., "Architecting Personalized Delivery of Multimedia Information",
Communications of the ACM, December 1992, Vol. 35, No. 12 ("Loeb”)
1009 Order Construing Claim Terms of United States Patent Nos. 6,199,076 and
7,509,178, Personal Audio, LLC v. Apple, Inc. et al, case 9:09-cv-00111-
RC, Eastern District of Texas, Document 258, filed 12/21/10.
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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1010 Order Denying Defendant’s Motion for Summary Judgment of
Indefiniteness, Personal Audio, LLC v. Apple, Inc. et al, case 9:09-cv-
00111-RC, Eastern District of Texas, Document 292, filed 1/31/11.
1011 Order Granting in Part and Denying in Part Plaintiff’s Motion for
Reconsideration of Order Denying Defendant’s Motion for Summary
Judgment of Indefiniteness, Personal Audio, LLC v. Apple, Inc. et al, case
9:09-cv-00111-RC, Eastern District of Texas, Document 358, filed 5/18/11.
1012 Order Re: Apple’s Motions for JMOL, Personal Audio, LLC v. Apple, Inc.
et al, case 9:09-cv-00111-RC, Eastern District of Texas, Document 512,
filed 8/19/11.
1013 Ron Person, Special Edition, Using Windows 95, QUE, 1995 (“Person”).
1014 Publicly Available File History of Reexamination Control No. 90/011,579
1015 Appendices A-E to U.S. Provisional Patent Application No. 60/003,164 to
Tim Chase (“Chase Software Appendices”)
1016 Exhibit A to Joint Claim Construction and Prehearing Statement, Personal
Audio, LLC v. Acer America, et al., Case No. 1:14-cv-8-RC, Eastern
District of Texas, Document 192, filed 2/13/15.
1017 Publicly Available File History of Reexamination Control No. 95/001,295
of U.S. Patent No. 7,509,178.
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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Lenovo (United States) Inc., Lenovo Holding Company, Inc., Lenovo Group
Ltd., Google Inc., and Barnes & Noble, Inc., (collectively referred hereinafter as
“Petitioner”), respectfully request Inter Partes review ("IPR") of claims 1-6 and
14-15 of U.S. Patent No. 6,199,076 ("the ’076 Patent") pursuant to 35 U.S.C. § 311
and 37 C.F.R. § 42.100.
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
A. 37 C.F.R. § 42.8(b)(1): Real Party-In-Interest
Real parties-in-interest for Petitioner are Lenovo (United States) Inc.,
Lenovo Holding Company, Inc., Lenovo Group Ltd., Google Inc., and Barnes &
Noble, Inc.
B. 37 C.F.R. § 42.8(b)(2): Related Matters
Patent Owner, Personal Audio LLC (“Personal Audio”), has asserted the
’076 Patent in Personal Audio v. Acer America, et al., Case No. 1:14-cv-8-RC and
Personal Audio LLC v. Fuhu, Inc., Case No. 1:13-cv-513-RC, both in the United
States District Court for the Eastern District of Texas. These cases may affect, or
be affected by, a decision in this proceeding. The ’076 Patent is currently subject to
another IPR proceeding (IPR2015-00494) that may affect, or be affected by, a
decision in this proceeding (Petitioner is not a real party-in-interest or privy with
respect to this other IPR proceeding).
C. 37 C.F.R. § 42.8(b)(3) and (4): Counsel and Service Information
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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Petitioner designates Daniel M. De Vos, Reg. No. 37,813, as Lead Counsel,
and Matthew N. Nicholson, Reg. No. 62,889 as Backup Counsel, both available at
1279 Oakmead Parkway, Sunnyvale, CA 94085 (T: 408-720-8300; F: 408-720-
8383), or electronically by email at [email protected].
D. Payment of Fees – 37 C.F.R. § 42.103
The undersigned authorizes Deposit Account No. 022666 be charged: 1) the
$23,000 fee set forth in 37 C.F.R. § 42.15(a) for this Petition for IPR that requests
review of eight (8) claims ($9,000 for the IPR Request fee and $14,000 for the IPR
Post Institution fee); and 2) any additional fees that may be due with this Petition.
II. SUMMARY OF THE ’076 PATENT
A. Brief Description of the Alleged Invention of the ’076 Patent
The ’076 Patent is directed to an audio program player that will play a
sequence of audio program segments or files and accept commands from the user
to skip forward or backward in the sequence. An “audio player device” (which
may be a computer that includes a CPU, display, mouse, keyboard, etc.) connects
to a server to download “audio program segments.” A “sequencing file” defines
the sequence of the audio program segments (the order in which the segments will
be played or what segment comes next when the user issues a command to skip
forward or backward in the sequence).
B. Summary of the Prosecution History of the ’076 Patent
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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The application leading to the ’076 Patent was filed on 10/2/96. A final
rejection in view of US Patents 5,153,759 and 5,810,600 was issued on 1/4/01. In
response, the Patent Owner filed an appeal brief arguing that while the references
disclosed program segments, they did not disclose a separate file of data for
establishing the scheduled playback sequence or skipping to the beginning of the
next program segment in the sequence. Ex. 1003 at 26-34. This argument was
apparently persuasive as the reasons for allowance states that the prior art of record
failed to teach, suggest, or render obvious “‘receiving and storing a file of data
establishing a sequence in which said program segments are scheduled …
continuously reproducing said program segments in the order established…’
coupled with ‘a first command indicative of a request to skip…discontinuing the
reproduction of the currently playing program segment and instead continuing the
reproduction at the beginning…’” Ex. 1003 at 25.
An ex parte reexamination of claims 1-3 and 14-15 of the ’076 patent was
instituted (Control No. 90/011,579, Exhibit 1014) in conjunction with a previous
litigation (the “Apple litigation”). Subsequent to the ex parte reexam filing, the
claims were construed by the court in the Apple litigation including several
“means-plus-function” limitations. The reexam examiners adopted the court’s
claim construction and as a result confirmed the claims because they found the
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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cited art lacked equivalent structure for the “specific algorithm steps” of the ’076
Patent. Ex. 1014 at 8-18 and 134-143.
An inter partes reexamination of a related patent (7,509,178) was also
instituted (Control No. 95/001,295, Exhibit 1017) in conjunction with the Apple
litigation. All claims remained rejected through the Action Closing Prosecution
(3/7/2011) (Ex. 1017 at 2104-2161) and the Right of Appeal Notice (10/5/2011)
(Ex. 1017 at 314-358). The inter partes reexamination was subsequently
terminated under 35 U.S.C. 317(b) on 2/22/12 (Ex. 1017 at 1-6) responsive to the
Apple litigation’s dismissal (detailed below), even though the PTO was rejecting
all claims.
C. Summary of Litigation History
The ’076 Patent has been asserted multiple times in the District Court for the
Eastern District of Texas, including Personal Audio, LLC v. Apple Inc. et al., Civil
Action No. 9:09-CV-111 on 6/25/2009 (the Apple litigation). Apple asserted that
various claims of the ’076 were invalid, and on 7/8/2011 the jury rejected Apple’s
invalidity arguments. Apple filed for appeal on 10/20/2011, but then jointly filed a
notice to dismiss (12/27/2011) due to settlement which was granted (1/5/2012).
D. IPR Proceeding (IPR2015-00494)
An IPR petition challenging claims 1-17 of the ’076 Patent was filed by
Microsoft Corp. on December 24, 2014 (IPR2015-00494). Petitioner is not a real
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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party-in-interest or privy with respect to that proceeding. The grounds raised in this
request are not redundant to the grounds raised in IPR2015-00494.
III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
Petitioner hereby certifies that the ’076 Patent is available for IPR and the
Petitioner is not barred or estopped from requesting IPR of claims 1-6 and 14-15
on the grounds identified herein. Petitioner does not own the ’076 Patent, has not
previously initiated a civil action challenging the validity of any claims of the ’076
Patent, and is submitting this petition less than one year after Petitioner was first
served with a complaint alleging infringement of the ’076 Patent. The estoppel
provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR.
B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
Requested
1. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested
Petitioner requests IPR of claims 1-6 and 14-15 of the ’076 Patent.
2. 37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Ground(s) on
Which the Challenge Is Based
IPR of claims 1-6 and 14-15 on the grounds set forth in the table below:
Ground Proposed Statutory Rejections for the ’076 Patent
1 Claims 1 and 4-6 are obvious under 35 U.S.C. 103(a) over Chase in
view of Loeb.
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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2 Claims 2-3 and 14-15 are obvious under 35 U.S.C. 103(a) over Chase
in view of Loeb and further in view of Inazawa.
3. Claim Construction 37 C.F.R. § 42.104(b)(3)
In an IPR, claim terms in an unexpired patent are given their broadest
reasonable construction in light of the specification of the patent in which they
appear. 37 C.F.R. § 42.100(b). However, since courts use the narrower
construction standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
and several claim terms were construed under that standard during the Apple
litigation, out of an abundance of caution the Petitioner is showing that the prior art
teaches the narrower claim construction adopted in the Apple litigation. Although
Petitioner is proposing the same construction of these terms as construed in the
Apple litigation, Petitioner understands that the district court may construe the
terms differently in the co-pending litigation.
The claim construction from the Apple litigation is spread across four
documents (cited as Exhibits 1009, 1010, 1011, and 1012 to the instant petition).
Exhibit 1012 includes a summary of the claim construction. Exhibit 1011 includes
changes to previous claim constructions shown via strikethrough and underline.
Any terms not included in this section are given their broadest reasonable
interpretation (BRI). The claim constructions below are made only for the
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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purposes of this IPR, and Petitioner reserves the right to present different
constructions in the related litigation.
a) “player” (claims 1-4)
The BRI of “player” is “a device that reproduces sound from digital audio
content.” Ex. 1009 at 9-16; see also Ex. 1001 at 4:28-35, 7:41-44, and 7:61-63.
The BRI of “player” includes a desktop or laptop computer, a personal device for
an individual listener, and can be used by a radio DJ since the specification
describes several different possibilities for the player such as “‘a conventional
laptop or desktop personal computer’,” “‘numerous other information storage,
processing and communications schemes may be substituted for the preferred
Internet server and PC client player architecture shown in FIG. 1’,” “ ‘notebook
computers and PDAs’,” and “‘portable computers of the type which may be used
in a car or on public transportation.’” Ex. 1009 at 9-16 citing the ’076 Patent (Ex.
1001) at 4:28-35, 7:41-44, 7:49-57, and 7:61-63. In fact, the district court found in
the Apple litigation that there is no place identified in the specification or
prosecution history where the inventors “explicitly limited their invention to use by
a single listener or expressly disclaimed the use of their invention by a radio DJ.”
Ex. 1009 at 16.
b) “file of data establishing a sequence” (claims 1 and 14)
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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The BRI of the term “file of data establishing a sequence” is “a file of data
that identifies the order in which audio program segments are to be played and that
may contain information about the sequence of events that occur during playback.”
Ex. 1009 at 18-20, which quotes the ’076 patent (Ex. 1001) at 8:39-41, 8:54-55,
and 12:7-10.
c) “selected audio program segments” (claim 1)
The BRI of the term “selected audio program segments” is “audio program
segments that have been chosen by or for a user.” Ex. 1009 at 42-44 and 48, citing
the ’076 Patent (Ex. 1001) at 6:41-48, 6:61-68, 8:20-23, 8:39-44, 8:50-51, 9:12-15,
9:31-33, and 18:21-28.
d) “means for storing…” (claim 1)
Claim 1 recites “means for storing a plurality of program segments, each of
said program segments having a beginning and an end,” which should be
construed under § 112, ¶ 6. The function is “storing a plurality of program
segments.” Ex. 1009 at 48-49. The structure corresponding to the “storing”
function can be the following and equivalents thereof: (1) “A data storage system
consisting of both high speed RAM storage and a persistent mass storage device,
such as a magnetic disk memory; or [2] A replaceable media, such as an optical
disk cartridge.” Ex. 1009 at 49-51, citing the ’076 Patent (Ex. 1001) at 4:36-38 and
7:63-65).
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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e) “means for receiving and storing …” (claim 1)
Claim 1 recites “means for receiving and storing a file of data establishing a
sequence,” which should be construed under § 112, ¶ 6. The function is “receiving
and storing a file of data establishing a sequence.” Ex. 1009 at 22-23.
The structure for the “receiving” function can be the following structures
and equivalents thereof:
1. A conventional high speed data modem and modem dial up
driver software for connecting via conventional dial up
telephone SLIP or PPP TCP/IP series data communication
link to an Internet service provider which provides access
to the Internet; [Ex. 1001 at 5:35-36, 5:40-48, cited by Ex.
1009 at 25]
2. An ISDN or cable modern link for connecting to an Internet
service provider which provides access to the Internet; [Ex.
1001 at 10:4-5, cited by Ex. 1009 at 25]
3. Cellular radio, cellular phone, or satellite links; [Ex. 1001
at 7:44-47, cited by Ex. 1009 at 25]
4. A radio or infrared link for connecting to a local
communications server computer linked to the Internet;
[Ex. 1001 at 7:50-52, cited by Ex. 1009 at 25]
5. A place in which a replaceable media, such as an optical
disk cartridge, may be inserted into the player; or [Ex. 1001
at 7:63-66, cited by Ex. 1009 at 25]
6. A direct link implemented using the Cellular Digital Packet
Data (CDPD) service for providing access to the Internet
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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using the TCP/IP protocol. [Ex. 1001 at 7:67-8:2, cited by
Ex. 1009 at 25]
Ex. 1009 at 25-28, and 30.
The structure for the “storing” function can be the following corresponding
structures and equivalents thereof:
1. A data storage system consisting of both high speed RAM
storage and a persistent mass storage device, such as a
magnetic disk memory; or [Ex. 1001 at 4:36-38, cited by
Ex. 1009 at 28]
2. A replaceable media, such as an optical disk cartridge. [Ex.
1001 at 7:63-65, cited by Ex. 1009 at 28]
Ex. 1009 at 28-30.
f) “means for accepting…” (claim 1) and “input means for
accepting…” (claim 14)
Claim 1 recites “means for accepting control commands from a user of said
player” and claim 14 recites “input means for accepting control commands from a
user,” which should both be construed under § 112, ¶ 6. The function for these
terms is “accepting control commands” or “accepting control commands from a
user.” Ex. 1010 at 8. The structure for the “accepting” function can be the
following and equivalents thereof:
1. A microphone, sound card, and conventional speech
recognition software; [Ex. 1001 at 4:42-44, cited by Ex.
1010 at 15]
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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2. A keyboard; [Ex. 1001 at 13:49-51, cited by Ex. 1010 at
9]
3. A pointing device such as a mouse, trackball, or touch
pad; or [Ex. 1001 at 5:26-29 and 14:26-29, cited by Ex.
1010 at 9]
4. A hand controller connected by a infrared link to the
player computer. [Ex. 1001 at 14:27-29, cited by Ex. 1010
at 9]
Ex. 1010 at 8-16.
g) “means for continuously reproducing…” (claim 1)
Claim 1 recites “means for continuously reproducing said program segments
in the order established by said sequence in the absence of a control command,”
which should be construed under § 112, ¶ 6. The function of this term is
“continuously reproducing said program segments in the order established by said
sequence in the absence of a control command.” Ex. 1010 at 16. The corresponding
structure is the following structure and equivalents thereof:
A sound card that includes a digital to analog converter;
headphones or one or more speakers; and a general purpose
computer programmed to perform the algorithm that is illustrated
in the flow chart of Figure 3 at items 233, 235, 237, 239, and 261
and more fully described at column 12, line 16 to column 13, line
11 and column 34, line 28 to column 35, line 44.
Specifically, this algorithm includes the following steps:
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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(1) beginning playback with the program segment
identified by the ProgramID contained in the
Selection_Record specified by the CurrentPlay variable;
(2) when the currently playing program segment
concludes, incrementing the CurrentPlay variable by one
and fetching and playing the program segment identified
by the ProgramID contained in the next Selection_Record
in the sequencing file;
(3) repeating step (2) until the last Selection_Record in
the sequencing file is reached, which resets the
CurrentPlay variable to "1" to begin the playing sequence
again with the first Selection_Record in the sequencing
file.
Ex. 1012 at 66-67. See also, Ex. 1010 at 16-22, modified by Ex.
1011 at 11-12.
h) “means for detecting a first command…” (claim 1)
Claim 1 recites “means for detecting a first command indicative of a request
to skip forward,” which should be construed under § 112, ¶ 6. The function of this
term is “detecting a first command indicative of a request to skip forward.” Ex.
1010 at 23. The corresponding structure is the following and equivalents thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
261, 262, and 275. Specifically, this algorithm includes the
following steps:
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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(1) determining whether input from the means for
accepting control commands is a command using an "if-
then-else" programming construct; and
(2) if the input is a command, using a "branch"
programming construct to select one of the player's
available commands, which include a "Skip" command, for
execution.
Ex. 1010 at 23-26.
i) “means responsive to said first command…”
Claim 1 recites “means responsive to said first command for discontinuing
the reproduction of the currently playing program segment and instead continuing
the reproduction at the beginning of a program segment which follows said
currently playing program in said sequence,” which should be construed under §
112, ¶ 6. The function of this term is “in response to a ‘Skip’ command,
discontinuing the reproduction of the currently playing program segment and
instead continuing the reproduction at the beginning of a program segment which
follows said currently playing program in said sequence.” Ex. 1010 at 30. The
corresponding structure is the following and equivalents thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
269 and 235 and more fully described at column 15, lines 21 to 25
and column 34, line 28 to column 35, line 48. Specifically, this
algorithm includes the following steps:
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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(1) scanning forward in the sequencing file to locate the
next Selection_Record of the appropriate LocType;
(2) resetting the CurrentPlay variable to the record number
of that Selection_Record; and
(3) fetching and playing the program segment identified
by the ProgramID contained in the new Selection_Record.
Ex. 1010 at 28-31, modified by Ex. 1011 at 11-13.
j) “means for detecting a second command…” (claim 2)
Claim 2 recites “means for detecting a second command indicative of a
request to skip backward,” which should be construed under § 112, ¶ 6. The
function of this term is “detecting a second command indicative of a request to
skip backward.” Ex. 1010 at 23. The corresponding structure is the following and
equivalents thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
261, 262, and 278. Specifically, this algorithm includes the
following steps:
(1) determining whether input from the means for
accepting control commands is a command using an “if-
then-else” programming construct; and
(2) if the input is a command, using a “branch”
programming construct to select one of the player’s
available commands, which include a “Back” command,
for execution.
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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Ex. 1010 at 23-26.
k) “means responsive to a single one of said second commands…”
(claim 2)
Claim 2 recites “means responsive to a single one of said second commands
for discontinuing the reproduction of the currently playing program segment and
instead continuing the reproduction at the beginning of said currently playing
program,” which should be construed under § 112, ¶ 6. The function for this term
is “in response to a single ‘Back’ command, discontinuing the reproduction of the
currently playing program segment and instead continuing the reproduction at the
beginning of said currently playing program.” Ex. 1010 at 27. The corresponding
structure is the following structure and equivalents thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
269 and 235 and more fully described at column 15, lines 49 to
59. Specifically, this algorithm includes the following steps:
(1) if the currently playing program segment has played for
a predetermined amount of time, resetting the playback
position to the beginning of the program segment; and
(2) playing the program segment from its beginning.
Ex. 1012 at 68-69. See also, Ex. 1010 at 28-31, modified by Ex.
1011 at 11 and 13.
l) “means responsive to the detection of two consecutive…”
(claim 3)
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Claim 3 recites “means responsive to the detection of two consecutive ones
of said second commands for discontinuing the reproduction of the currently
playing program segment and instead continuing the reproduction at the beginning
of a program segment which precedes the currently playing program segment,”
which should be construed under § 112, ¶ 6. The function for this term is “in
response to two consecutive ‘Back’ commands, discontinuing the reproduction of
the currently playing program segment and instead continuing the reproduction at
the beginning of a program segment which precedes the currently playing program
segment.” Ex. 1010 at 27. The corresponding structure is the following and
equivalents thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
269, 235, 261, 262, and 278 and more fully described at column
15, lines 49 to 59 and column 34, line 28 to column 35, line 53.
Specifically, this algorithm includes the following steps:
(1) in response to a first "Back" command, if the currently
playing program segment has played for a predetermined
amount of time, resetting the playback position to the
beginning of the program segment and playing the
program segment from its beginning;
(2) in response to a second "Back" command, if the
currently playing program segment has not yet played for
said predetermined amount of time, scanning backward in
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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the sequencing file to locate the previous
Selection_Record of the appropriate LocType;
(3) resetting the CurrentPlay variable to the record number
of that Selection_Record; and
(4) fetching and playing the program segment identified
by the ProgramID contained in the new Selection_Record.
Ex. 1012 at 69. See also, Ex. 1010 at 28-32, modified by Ex. 1011
at 11 and 14.
m) “editing means for modifying said data…” (claim 5)
Claim 5 recites “editing means for modifying said data establishing said
sequence.” This term was not previously construed in the Apple litigation. In co-
pending litigation, Personal Audio has proposed the following construction: “A
player client programmed to: 1. Add a program segment; and/or 2. Delete a
program segment; and/or 3. Assign a new or different order to a given program
segment; and Update the order for the program segments in the serialized
sequence” and cites the ’076 Patent at 1:6-9; 1:64-2:3; 2:44-3:27; 5:47-59; 6:62-
9:38; 9:51-10:6; 10:44-54; 12:21-40; 17:5-14; 18:60-19:15; 30:39-54; Figs. 1 and
2, and Claims 5 and 6. Ex. 1016 at 22. Petitioner submits that there is not
corresponding structure provided in the ’076 Patent and thus this claim is invalid
under § 112. However, for the purposes of this IPR, if this element is found to meet
the requirements of § 112, ¶ 6, the function is “modifying said data establishing
said sequence” and the structure is “A player client programmed to: 1. Add a
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
18
program segment; and/or 2. Delete a program segment; and/or 3. Assign a new or
different order to a given program segment; and Update the order for the program
segments in the serialized sequence.”
n) “means for reordering the sequence…” (claim 6)
Claim 6 recites “wherein said editing means includes means for reordering
the sequence established by said data.” This term was not previously construed in
the Apple litigation. In co-pending litigation, Personal Audio has proposed the
following construction: “A player client programmed to: 1. Assign a new or
different order to a given program segment; and 2. Update the order for the
program segments in the serialized sequence” and cites the ’076 Patent at 1:6-9;
1:64-2:3; 2:44-3:27; 5:47-59; 6:62-9:38; 9:51-10:6; 10:44-54; 12:21-40; 17:5-14;
18:60-19:15; 30:39-54; Figs. 1 and 2, and Claims 5 and 6. Ex. 1016 at 22-23.
Petitioner submits that there is not corresponding structure provided in the ’076
Patent and thus this claim is invalid under § 112. However, for the purposes of this
IPR, if this element is found to meet the requirements of § 112, ¶ 6, the function is
“reordering the sequence established by said data” and the structure is “A player
client programmed to: 1. Assign a new or different order to a given program
segment; and 2. Update the order for the program segments in the serialized
sequence.”
o) “output means…” (claim 14)
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Claim 14 recites “output means for producing audible sounds in response to
analog audio signals,” which should be construed under § 112, ¶ 6. The function
for this term is “producing audible sounds in response to analog audio signals.” Ex.
1009 at 51. The corresponding structure “can be the following structures and
equivalents thereof: 1. One or more speakers; or 2. Headphones.” Ex. 1009 at 52.
See also, Ex. 1001 at 5:24-25.
p) “processing means for translating…” (claim 14)
Claim 14 recites “processing means for translating said digitally recorded
audio program segments into analog audio signals delivered to said output means
for reproducing said recorded program segments in a form audible to said user,”
which should be construed under § 112, ¶ 6. The function for this term is
“translating said digitally recorded audio program segments into analog audio
signals delivered to said output means for reproducing said recorded program
segments in a form audible to said user” and the corresponding structure is the
following structure and equivalents thereof: “A sound card that includes a digital to
analog converter and directs the converted analog audio signals to headphones or
one or more speakers.” Ex. 1010 at 34-35; see Ex. 1001 at 4:41-46; and 4:51-63.
q) “processing means responsive to a first one…” (claim 14)
Claim 14 recites “processing means responsive to a first one of said control
commands for discontinuing the translation of the currently playing program
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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segment and instead continuing the translation at the beginning of the next
program segment in said sequence,” which should be construed under § 112, ¶ 6.
The function for this term is “in response to a ‘Skip’ command, discontinuing the
translation of the currently playing program segment and instead continuing the
translation at the beginning of the next program segment in said sequence." Ex.
1010 at 27. The corresponding structure is the following structure and equivalents
thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
269 and 235 and more fully described at column 15, lines 21 to 25
and column 34, line 28 to column 35, line 48. Specifically, this
algorithm includes the following steps:
(1) scanning forward in the sequencing file to locate the
next Selection_Record of the appropriate LocType;
(2) resetting the CurrentPlay variable to the record number
of that Selection_Record; and
(3) fetching and playing the program segment identified
by the ProgramID contained in the new Selection_Record.
Ex. 1012 at 70-71. See also, Ex. 1010 at 28-30; and 32-33,
modified by Ex. 1011 at 11, 14-15.
r) “processing means responsive to a second one…” (claim 14)
Claim 14 recites “processing means responsive to a second one of said
control command for discontinuing the translation of the currently playing
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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program and instead continuing the translation at the beginning of said currently
playing program,” which should be construed under § 112, ¶ 6. The function for
this term is “in response to a 'Back' command, discontinuing the translation of the
currently playing program and instead continuing the translation at the beginning
of said currently playing program.” Ex. 1010 at 27. The corresponding structure
is:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
269, and 235 and more fully described at column 15, lines 49 to
59. Specifically, this algorithm includes the following steps:
(1) if the currently playing program segment has played
for a predetermined amount of time, resetting the playback
position to the beginning of the program segment; and
(2) playing the program segment from its beginning.
Ex. 1012 at 71. See also, Ex. 1010 at 28-30 and 33, modified by
Ex. 1011 at 11 and 15.
s) “means responsive to two consecutive…” (claim 15)
Claim 15 recites “means responsive to two consecutive ones of said second
control commands for discontinuing the translation of the currently playing
program and instead continuing the translation at the beginning of a program
segment which precedes said currently playing program in said sequence,” which
should be construed under § 112, ¶ 6. The function for this term is “in response to
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
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two consecutive ‘Back’ commands, discontinuing the translation of the currently
playing program and instead continuing the translation at the beginning of a
program segment which precedes said currently playing program in said
sequence.” Ex. 1010 at 28. The corresponding structure is:
The structure corresponding to the claimed function is the
following structure and equivalents thereof:
A general purpose computer programmed to perform the
algorithm that is illustrated in the flow chart of Figure 3 at items
269, 235, 261, 262, and 278 and more fully described at column
15, lines 49 to 59 and column 34, line 28 to column 35, line 53.
Specifically, this algorithm includes the following steps:
(1) in response to a first "Back" command, if the currently
playing program segment has played for a predetermined
amount of time, resetting the playback position to the
beginning of the program segment and playing the program
segment from its beginning;
(2) in response to a second "Back" command, if the
currently playing program segment is near its beginning,
scanning backward in the sequencing file to locate the
previous Selection_Record of the appropriate LocType;
(3) resetting the CurrentPlay variable to the record number
of that Selection_Record; and
(4) fetching and playing the program segment identified by
the ProgramID contained in the new Selection_Record.
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Ex. 1012 at 71-71. See also, Ex. 1010 at 28-30 and 33-34,
modified by Ex. 1011 at 11, 16.
IV. THERE IS A REASONABLE LIKELIHOOD THAT ONE OR MORE
CLAIMS OF THE ’076 PATENT IS UNPATENTABLE UNDER 37
C.F.R. § 42.104(b)(4) and (5).
A. Person Of Ordinary Skill in the Art (POSITA)
A POSITA is an individual with the equivalent of a four-year degree from an
accredited institution (usually denoted as a B.S. degree) in either computer science
or electrical engineering and approximately two to three years of programming
experience. Additional graduate education might substitute for experience, while
significant experience in the field of computer programming might substitute for
formal education. Ex. 1002, Walker Decl. at ¶ 16. A POSITA would have had
knowledge of the literature concerning audio player software and hardware such
as, for instance, the Windows 95 CD Player application featuring familiar play,
pause stop and track selection buttons that perform the same functions found in
standalone players. See e.g., Ex. 1013 at 1019-1022; Ex. 1002, Walker Decl. at ¶¶
16 and 25-27.
B. Summary of Prior Art
1. U.S. Patent Application Pub. No. 2002/0177914 to Tim Chase (“Chase”)
Chase (Ex. 1005) published on 11/28/2002. Chase is a continuation of U.S.
Unpublished Patent Application No. 08/705,797 to Tim Chase (“Chase Parent”)
filed 8/30/1996 (Ex. 1004) and claims priority to U.S. Provisional Patent
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
24
Application No. 60/003,164 to Tim Chase (“Chase Provisional”) filed 9/1/1995
(Ex. 1006), both of which are incorporated by reference in Chase. Apart from the
claims, the content of Chase and the Chase Parent are the same. Chase and the
Chase Parent also expressly incorporate by reference all software appendices filed
with the Chase Provisional application, including software appendices A-E entitled
“DAX Source,” “Driver Source,” “DAC DSP Source,” “Jock Box Terminal Source
Code,” and “DMS Source” respectively (“Chase Software Appendices”). Ex. 1005
at ¶¶ 0001-0002 and 0004; and Ex. 1004 at 3-4. Chase was not relied on during any
previous examination of the ’076 Patent and is not cumulative or redundant of any
previously presented prior art.
Chase, including the content of the Chase Software Appendices, is prior art
under 35 USC § 102(e) at least as of Chase Parent’s filing date of 8/30/1996.
Chase and the Chase Parent expressly incorporate by reference the Chase Software
Appendices (Ex. 1015), and therefore the content of the Chase Software
Appendices are effectively part of Chase. See Advanced Display Sys. v. Kent State
University, 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“[i]ncorporation by reference
provides a method for integrating material from various documents into a host
document – a patent or printed publication in an anticipation determination - by
citing such material in a manner that makes clear that the material is effectively
part of the host document as if it were explicitly contained therein”); Ultradent
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25
Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997)
(“the rules of practice” permit “incorporation of prior art by reference”). In an
anticipation context under pre-AIA 102(b), the Federal Circuit recognized that
“invalidity by anticipation requires that the four corners of a single, prior art
document describe every element of the claimed invention” and “[m]aterial not
explicitly contained in the single, prior art document may still be considered for
purposes of anticipation if that material is incorporated by reference into the
document.” See Advanced Display Sys., Inc., 212 F.3d at 1282. Since pre-AIA
section 102(b) requires either a patent or a printed publication (both printed
documents), under the principle of Advanced Display, the material incorporated by
reference into the patent or printed publication is to be considered to be part of that
patent or printed publication. Thus, the content of the Chase Software Appendices
is “effectively part of [Chase and Chase Parent] as if it were explicitly contained
therein” and therefore is part of the publication of Chase. Moreover, the Chase
Software Appendices are printed documents, indexed by the Chase Provisional
application number, stored at the USPTO and are available to anyone in the public
upon request and payment of the fee set forth in 37 CFR § 1.19(a). Since the
content of the Chase Software Appendices is common to Chase, the Chase Parent
and the Chase Provisional (through the incorporation by reference in Chase and the
Chase Parent), Chase (including the content of the Chase Software Appendices) is
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26
prior art under 35 USC § 102(e) at least as of Chase Parent’s filing date of
8/30/1996 (the Chase Software Appendices also qualify as of the Chase
Provisional filing date of 9/1/1995). See In re Giacomini, 612 F.3d 1380, 1384-85
(Fed. Cir. 2010) (patent applied in § 102(e)(2) rejection was prior art as of filing
date of corresponding provisional application for commonly disclosed subject
matter); Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008).
Chase (including the content of the Chase Software Appendices) also falls
within the purview of § 311(b) for the same reasons expressed above concerning
qualification under 102(e): a) the content of the Chase Software Appendices being
effectively part of the Chase printed publication as if it were explicitly contained
therein; and/or b) the Chase Software Appendices being printed documents,
indexed by the Chase Provisional application number (which is indexed by the
Chase Parent’s publication number which incorporates the Chase Provisional and
the Chase Software Appendices), stored at the USPTO, and are available to anyone
in the public upon request and payment of the fee set forth in 37 CFR 1.19(a).
Chase discloses a system for playback of audio files that includes an
affiliate terminal, which itself includes an affiliate controller that receives and
stores audio files (containing audio segments) and play list files among other data.
Ex. 1005 at ¶¶ 0040, 0042, and 0065-66. The play list identifies the order in which
the audio segments will be played without intervention. Ex. 1005 at ¶¶ 0201 and
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0184. The affiliate terminal can include a remote control terminal with control
keys that enable a user to navigate playback of the audio files; this navigation
includes selecting a segment from the play list, starting and stopping playback,
starting playback of the next segment, and fast forwarding/rewinding through the
current segment or to a next/previous segment. Ex. 1005 at ¶¶ 0067, 0184-186,
and Fig. 5. Playback of the audio segments is sequentially based on the playlist
when there is no intervention through the remote control terminal. Ex. 1005 at ¶
0184. Chase discloses software code that continuously plays the segments in the
play list based on the order of segments in the play list. Ex. 1005 at ¶¶ 0001-0002
and 0004, incorporating by reference the Chase Software Appendices (Ex. 1015) at
pgs. 68, 143, 405, 415, 573-574, and 702-703. The disclosed software code
advances to the next or previous song on the playlist. Id.
2. Loeb, S., “Architecting Personalized Delivery of Multimedia
Information", Communications of the ACM, December 1992, Vol. 35,
No. 12 ("Loeb”)
Loeb (Ex. 1008) was published in December 1992 in the “Communications
of the ACM” magazine (volume 35, Issue 12) and therefore was made available to
the extent that a person of ordinary skill in the subject matter, exercising
reasonable diligence, could locate it, and is thus prior art to the ’076 Patent under
35 USC § 102(b). See Ex. 1002, Walker Decl. at ¶ 75. Loeb discloses a
“personalized music system” where audio programs are selected based on program
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preference data or program selections from a listener such that the playback
session is personalized to the preferences of the listener. Ex. 1008 at pgs. 6-7. The
list of selected audio programs and the audio programs themselves are transmitted
across a network to the listener’s terminal. Ex. 1008 at Fig. 1; pg. 7 (top of left
column); and pg. 8 (left and middle column). The listener’s terminal includes a
user interface that allows listeners to control playback of the selected audio
programs including starting/stopping and skipping through the selected audio
programs. Ex. 1008 at Fig. 3; pg. 6-7 (starting at lower right column of pg. 6); and
pg. 9 (lower left column and upper middle column).
3. U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”)
Inazawa (Ex. 1007) issued 3/7/89 and is thus prior art under 35 U.S.C. §
102(b). Inazawa discloses a user interface on a disc player for skipping through
audio programs. The user interface includes a key (“program selecting key 11”) to
skip to the beginning of the currently playing audio program or to the beginning of
a preceding program based on when the key is manipulated. Ex. 1007 at 3:50-62,
4:38-5:2, and 6:30-7:31. Inazawa also discloses a key (“program selecting key
10”) to control skipping forward to the next audio program. Ex. 1007 at 3:42-49
and 5:6-54. Inazawa was not relied on during any previous examination of the ’076
Patent and is not cumulative or redundant of any previously presented prior art.
C. Ground 1 – Claims 1 and 4-6 are obvious under 35 U.S.C. 103(a) over
Chase in view of Loeb
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Claims 1 and 4-6 are obvious over Chase in view of Loeb. Chase and Loeb
are analogous art to the ’076 Patent, each directed to audio players. Each reference
discloses “an audio program player which automatically plays a predetermined
schedule of audio program segments and which further includes simple controls”
(’076 Patent at 2:6-9) to allow the user to listen to audio segments and navigate
forward and backward within the schedule.
1. Claim 1
- [1-pre] “A player for reproducing selected audio program segments
comprising, in combination”
Petitioner does not believe that the preamble is limiting. Regardless, Chase
discloses an affiliate terminal that includes an affiliate controller that receives
audio files, play list files, and commands (Ex. 1005 at ¶¶ 0065-66 and 0040),
outputs audio signals that allow a user to listen to audio segments or audio
programs (Ex. 1005 at ¶ 0067), and includes the ability for a user to select desired
audio segments and programs for listening. Ex. 1005 at ¶ 0067. The affiliate
terminal includes the ability for a user to select desired audio segments and
programs for listening. Ex. 1005 at ¶ 0067. The affiliate terminal includes a remote
control terminal that includes control keys to enable a user to select a program
from a playlist, start and stop playback, start play of the next segment, fast
forward/rewind through the current segment or to a next/previous segment. Ex.
1005 at ¶¶ 0067, 0184-1086, and Fig. 5.
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- [1a] “means for storing a plurality of program segments, each of
said program segments having a beginning and an end”
Chase discloses the affiliate terminal including a data storage system to store
incoming audio files (that contain program segments) such as a hard disk, memory,
and a frame buffer. Ex. 1005 at ¶¶ 0042, 0066, and 0071-73. Each audio segment
has a beginning and an end. Ex. 1005 at ¶ 0046: “Each cart file…also includes
beginning…and ending data frame numbers…into the corresponding audio file.
The beginning and ending data frame numbers identify the starting and ending
points of the corresponding audio segments.”
- [1b] “means for receiving and storing a file of data establishing a
sequence in which said program segments are scheduled to be
reproduced by said player”
Chase discloses an affiliate terminal having an antenna for receiving live
data packets, data files, and envelopes from a satellite. Ex. 1005 at ¶ 0065. The
envelope may include a play list. Ex. 1005 at ¶¶ 0023 and 0041. The play list
identifies the order in which the audio segments are to be played. Ex. 1005 at ¶
0201 (“Normally the Affiliate terminal will play sequences of audio under the
control of a play list. Play lists are ordered sequence of audio events”) and ¶ 0184
(“Generally… the playback of audio segments from within a program are
sequential based on the play list.”). The affiliate terminal stores incoming data that
includes the play list on a data storage system such as a hard disk, memory, and
data buffer. Ex. 1005 at ¶¶ 0066, 0071-73, and 0202.
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31
- [1c] “means for accepting control commands from a user of said
player”
Chase discloses that the affiliate terminal’s remote control terminal includes
control keys to enable a user to select a program from a playlist, start and stop
playback, start play of the next segment, fast forward/rewind through the current
segment or to a next/previous segment. Ex. 1005 at ¶¶ 0067, 0184-1086, and Fig.
5. Petitioner considers the user of Chase (which may be a radio DJ) to meet this
limitation regarding a user because, as discussed above, the district court in the
Apple litigation found that there is no place identified in the ’076 Patent’s
specification or prosecution history where the inventors “explicitly limited their
invention to use by a single listener or expressly disclaimed the use of their
invention by a radio DJ.” Ex. 1009 at 16. However, out of an abundance of
caution concerning the claim term “user of said player,” Loeb teaches a
“personalized music system in which songs are played at a listener’s workstation,
using its built-in audio capability” and the “listener’s terminal must have audio and
graphics output capabilities.” Ex. 1008 at pgs. 6 and 9.
A POSITA would have been motivated to modify Chase’s affiliate
terminal/remote terminal to have features of the “listener’s workstation” of Loeb.
For instance, a POSITA would be motivated to combine Chase and Loeb so as to
allow for a personalized selection of a list of songs to be delivered across a
network to a player with audio output (e.g., a headset) and have a simple, high
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level user interface that allows listeners to control playback of the songs, including
starting/stopping the songs at any time and stepping forward and backward through
the list of songs; such a user interface “induces nearly instant acceptance and
allows people to use the LyricTime prototype with almost no preparation.” Ex.
1008 at pgs. 6-7; Fig. 3; and pg. 9 (lower left column to upper middle column). A
POSITA would have a reasonable expectation of success considering the ubiquity
of user interfaces for listening to audio. Ex. 1002, Walker Decl. at ¶¶ 26, 74-76,
80-85, and 87. Also, Chase and Loeb could have been combined by a POSITA
using known methods (using common programming techniques) to yield a
predictable result, namely a terminal/workstation for a listener with aspects of
Loeb’s user interface. Ex. 1002, Walker Decl. at ¶¶ 80-85 and 87.
- [1d] “means for continuously reproducing said program segments
in the order established by said sequence in the absence of a control
command”
Chase discloses that the affiliate terminal plays programs in a play list based
on the order in the play list in the absence of a control command. Ex. 1005 at ¶
0184 (“Generally, without intervention by the remote control terminal 58, the
playback of audio segments from within a program are sequential based on the
play list.”). In this regard, Chase discloses that the affiliate terminal may be
implemented on a personal computer running a conventional operating system,
such as Windows 95 and include a sound card that includes a digital to analog
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converter. Ex. 1005 at ¶¶ 0066, 0071-0072, 0080-0083; and Figs. 6-7. Further,
Chase discloses software code that continuously plays the segments in the play list
based on the order in the play list and meets the construed 112 ¶ 6 structure of this
limitation. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference the
Chase Software Appendices. With respect to the first step of the algorithm
detailed above in section III(B)(3)(g), the “CMD_PLY” command is processed by
the ProcessCommands() function that plays the current audio element. Ex. 1005 at
¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 68 and 573-574.
The ProcessCommands() function invokes the Play() method of the Player class
which in turn invokes the Play() method of the rPlayer class. Ex. 1005 at ¶¶ 0001-
0002 and 0004, incorporating by reference Ex. 1015 at 415 and 574. The Play()
method of the rPlayer class “cue[s] up the track and start[s] the decoder playing,”
including cueing the track specified by the “CurElement” variable (equivalent to
“CurrentPlay” in the construed 112 ¶ 6 structure) and invoking the Play() method
of the decoder class to start the decoder playing. Ex. 1005 at ¶¶ 0001-0002 and
0004, incorporating by reference Ex. 1015 at 405. Specifically, the Play() method
of the decoder class invokes the DecoderPlay method of the AudioCard class. Ex.
1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 143. The
DecoderPlay method issues commands to the hardware by invoking the
DeviceIoControl method. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by
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reference Ex. 1015 at 702-703. The possible commands, listed in the DaxCodes.h
file (Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at
855), include the command ccDecoderPlay. The DecoderPlay method sends the
ccDecoderPlay command to the hardware through the DeviceIoControl function,
which causes the player to play the cued element. Ex. 1005 at ¶¶ 0001-0002 and
0004, incorporating by reference Ex. 1015 at 702-703.
With respect to the second step of the algorithm detailed above in section
III(B)(3)(g), Chase discloses that when an audio segment completes playing, the
next segment plays. The Player generates an event, when the currently playing
program segment concludes, that is handled by the Event() method of the rPlayer
class. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at
408-409. The Event function stops the player by invoking the Stop() method. Ex.
1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 409. Then
this Event function finds the next element to play using the FindNextElement
function and passes the parameter FORWARD to the FindNextElement function.
Id. This causes the FindNextElement function to return the next audio segment on
the list. The FindNextElement function increments the element pointer “st” (which
is set as “CurElement”) to find the pointer to the next element and returns the
pointer to the Event function. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating
by reference Ex. 1015 at 402-403 and 409. This returned pointer to the next
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segment is in turn passed by the Event function as (tp) to the function
SetCurrentElement. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by
reference Ex. 1015 at 409. The SetCurrentElement identifies a pointer to the next
item on the list and invokes the CueElement function. Ex. 1005 at ¶¶ 0001-0002
and 0004, incorporating by reference Ex. 1015 at 401-402 and 409. The
CueElement function configures the player to start playing the selected segment.
Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 407-
408. For instance, the CueElement function calls the Decoder::CueCart method,
which in turn calls the GetAudioFile function to get the name of the cart (which in
turn calls the GetFileName function to get the name of the file), and calls the
PhysicalCue function to physically cue the audio. Ex. 1005 at ¶¶ 0001-0002 and
0004, incorporating by reference Ex. 1015 at 145-146; and 50. The PhysicalCue
function calls the Cue function, which in turn calls the LoadSegment function,
which in turn invokes the DeviceIoControl method passing the command
ccLoadSegmentInfo to load the next segment for playback. Ex. 1005 at ¶¶ 0001-
0002 and 0004, incorporating by reference Ex. 1015 at 146-147, 150, and 707-708.
With respect to the third step of the algorithm detailed above in section
III(B)(3)(g), Chase discloses that when the last segment on the list finishes playing,
an event is generated which is handled as described above by the rPlayer::Event()
method. When at the end of the list, the FindNextElement function is not able to
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find the next element. Accordingly, the FindNextElement function returns null to
the Event method. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference
Ex. 1015 at 403. The null return is detected by the Event method and the
SetCurrentElement method is invoked instead with the pointer “StartedAt.” Ex.
1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 409. As
before, the SetCurrentElement identifies a pointer to the element identified with
the StartedAt variable (instead of the next element) and invokes the CueElement
function. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015
at 401-402, 409, and 414. The CueElement function configures the player to start
playing as detailed above. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by
reference Ex. 1015 at 407-408 and 144-146. Accordingly, the decoder will begin
again at the beginning of the list.
- [1e] “means for detecting a first command indicative of a request to
skip forward”
A command to skip forward was well known at the time of the alleged
invention. For example, Personal Audio admitted that: “[i]t is to be understood
that applicant does not claim that all of the functions set forth in the dependent
claims are patentable per se. Plainly, for example, conventional CD players allow
the user to skip forward to the beginning of the next track on the disk or to skip
backward to proceeding tracks…” Ex. 1003 at 52 (emphasis added).
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Chase discloses detecting a command to skip forward that allows a user to
override the normal sequence of the audio segments by selecting audio programs
out of sequence. Ex. 1005 at ¶ 0184. The affiliate terminal includes sensor inputs
that monitor for play back requests including a request “that the DAC 52 start play
of the next segment queued in the DAC 52, … fast forward/rewind through the
current segment or to a next/previous segment.” Ex. 1005 at ¶ 0186. In addition,
Loeb teaches a personalized music system that has an interface for allowing a
listener to control playback of songs including skipping through a list of selected
songs. Ex. 1008 at pg. 6 (lower right column); Fig. 3; pg. 7: (“The… interface
contains buttons for controlling the playing of songs. These buttons allow the
listener to step backward and forward through the list of selected songs…”) and
pg. 9: (“…[users] provided more implicit (skipping or replaying songs) than
explicit feedback”).
Although Loeb discloses the functionality of detecting a command indicative
of a request to skip forward, Loeb does not explicitly disclose structure in the form
of an algorithm as discussed in section III(B)(3)(h), which utilizes fundamental
programming constructs such as “if-then-else” and “branch” programming
constructs. Chase, however, discloses structure in the form of the affiliate terminal
implemented on a personal computer (running a conventional operating system
such as Windows 95) and software code that detects commands from users. Ex.
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1005 at ¶¶ 0066; and 0001-0002 and 0004, incorporating by reference the Chase
Software Appendices. The disclosed software code teaches the function
ProcessCommands() that “process[es] requests from the connected user.” Ex. 1005
at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 571. The
ProcessCommands() function calls the GetCommand function. Ex. 1005 at ¶¶
0001-0002 and 0004, incorporating by reference Ex. 1015 at 572. The
GetCommand function “reads in a given command from the user and parses it.”
Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 781.
The GetCommand function reads a buffer and determines, using an “if-then-else”
programming construct, whether data read from the buffer matches a command in
the table CmdTable and returns a code for the command if found. Ex. 1005 at ¶¶
0001-0002 and 0004, incorporating by reference Ex. 1015 at 779-781. If the
GetCommand function returns a code for the command, the ProcessCommands()
function uses a “branch” programming construct (a switch statement) to select an
available command such as a command “CMD_STP” to stop the playing of an
audio element, a command “CMD_RNE” to read the next audio element, and a
command “CMD_PLY” to play the an audio element. Ex. 1005 at ¶¶ 0001-0002
and 0004, incorporating by reference Ex. 1015 at 571-574.
A person of ordinary skill in the art would have recognized that applying the
known technique of using an “if-then-else” programming construct to determine
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whether input is a command and a “branch” programming construct to select an
available command, as taught by Chase, to implement the detection of a request to
skip to the next song in the personalized music system taught by Loeb, would have
yielded the predictable result of detecting a request to skip to the next song. Ex.
1002, Walker Decl. at ¶¶ 91-92. This would have been nothing more than the use
of fundamental programming constructs and well within the capabilities of a
person of ordinary skill. Ex. 1002, Walker Decl. at ¶¶ 85 and 91-92.
- [1f] “means responsive to said first command for discontinuing the
reproduction of the currently playing program segment and instead
continuing the reproduction at the beginning of a program segment
which follows said currently playing program in said sequence”
Performing a skip forward command to skip forward to the next song was
well known at the time of the alleged invention. For example, Personal Audio
admitted that: “[i]t is to be understood that applicant does not claim that all of the
functions set forth in the dependent claims are patentable per se. Plainly, for
example, conventional CD players allow the user to skip forward to the beginning
of the next track on the disk or to skip backward to proceeding tracks…” Ex. 1003
at 52 (emphasis added).
Chase discloses an affiliate terminal that discontinues playing the currently
playing program segment and instead plays the program segment that follows the
currently playing program. For example, the remote control terminal allows a user
to override the normal sequence of the audio segments by selecting audio programs
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out of sequence. Ex. 1005 at ¶ 0184. The user may also request through the
remote control terminal “that the DAC 52 start play of the next segment queued in
the DAC 52, … fast forward/rewind through the current segment or to a
next/previous segment.” Ex. 1005 at ¶ 0186. In addition, Loeb teaches a
personalized music system that has an interface for allowing a listener to control
playback of songs including skipping forward a list of selected songs. Ex. 1008 at
pg. 6 (lower right column); Fig. 3; pg. 7: (“The… interface contains buttons for
controlling the playing of songs. These buttons allow the listener to step backward
and forward through the list of selected songs…”) and pg. 9: (“…[users] provided
more implicit (skipping or replaying songs) than explicit feedback”). For instance,
Figure 3 illustrates an interface that shows the song currently playing (“Aint
Misbehavin – Louis Armstrong”), the previous song (“Elmers Tune – Benny
Goodman”), and the next song in the list (“Gotta Give – Ella Fitzgerald”), and a
button to step forward through the list of selected songs. A person of ordinary skill
would understand Loeb to teach that when the button to step forward through the
list of selected songs is selected while a song is currently playing, the currently
playing song is stopped and the next song on the list is played. Ex. 1002, Walker
Decl. at ¶¶ 75-76. For instance, if the button to step forward is selected while the
song “Aint Misbehavin – Louis Armstrong” is playing, that song will stop playing
and the next song on the list (“Gotta Give – Ella Fitzgerald”) will begin playing.
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Although Chase and Loeb discloses the functionality of discontinuing the
playback of the currently playing song and instead playing the next song in
response to a command from a user, Chase and Loeb do not explicitly disclose the
exact 112 ¶ 6 construed structure discussed in section III(B)(3)(i). Chase, however,
discloses structure in the form of the affiliate terminal implemented on a personal
computer (running a conventional operating system such as Windows 95) and
software code to advance to the next song. Ex. 1005 at ¶¶ 0066; and 0001-0002
and 0004, incorporating by reference the Chase Software Appendices. The
disclosed software code teaches a function rPlayer:FindNextElement that scans
forward in the play list to find the next playable element including advancing the
element pointer forward until it finds the first playable object (a track, play list, or
cart) and then returns that pointer to the Event function. Ex. 1005 at ¶¶ 0001-0002
and 0004, incorporating by reference Ex. 1015 at 402-403 and 409. The Event
function then passes to the function SetCurrentElement the returned pointer (tp) to
the next segment. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference
Ex. 1015 at 409. The SetCurrentElement sets the element corresponding to the
returned pointer (tp) as the current element (“CurElement”) and invokes the
CueElement function. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by
reference Ex. 1015 at 401-402 and 409. The CueElement function configures the
player to start playing as detailed above with respect to claim portion [1d].
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A POSITA would have recognized that the application of this code (using
common programming techniques) for a player to advance to the next song in the
playlist, as taught by Chase, to implement the functionality of stopping the
reproduction of a currently playing song and beginning playback of the next song
in response to a command, as taught by Chase and Loeb, would have the
predictable result of allowing a user to skip to the next song in a list of selected
songs. Ex. 1002, Walker Decl. at ¶¶ 26, 80-85 and 93-94. Also, a POSITA would
have been motivated to modify Chase’s affiliate terminal/remote terminal to have
features of the “listener’s workstation” of Loeb. For instance, a POSITA would be
motivated to combine Chase and Loeb so as to allow for a player stop the
reproduction of a currently playing song and begin playback of a listener-selected
song (e.g., next song) in response to a command; such a user interface “induces
nearly instant acceptance and allows people to use the LyricTime prototype with
almost no preparation.” Ex. 1008 at pgs. 6-7; Fig. 3; and pg. 9 (lower left column
to upper middle column); see also Ex. 1002, Walker Decl. at ¶¶ 26, 80-85 and 93.
A POSITA would have a reasonable expectation of success considering the
ubiquity of user interfaces for listening to audio. Ex. 1002, Walker Decl. at ¶¶ 26,
75-77, 80-85, and 87.
In light of the above, claim 1 is obvious over Chase in view of Loeb.
2. Claim 4
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- “A player as set forth in claim 1 wherein said sequence established
by said data forms an endless circular sequence of program
segments”
Chase discloses that the affiliate terminal plays programs in a play list based
on the order in the play list in the absence of a control command, where the
sequence forms an endless circular sequence of program segments, as discussed
with respect to claim [1d]. See also Ex. 1002, Walker Decl. at ¶ 95. Thus, claim 4
is obvious over Chase in view of Loeb.
3. Claim 5
- “A player as set forth in claim 1 including editing means for
modifying said data establishing said sequence”
Chase discloses the remote control terminal of the affiliate terminal includes
the ability for a user to scroll through the play list and select, out of turn, a segment
from the play list, which modifies the sequence of the play list. Ex. 1005 at ¶ 0186.
Chase also discloses the affiliate terminal includes an audio server 180 that may
implement a delete message to delete a cart, rack, or play list, which would update
the order of playback of the play list. Ex. 1005 at ¶ 0195, column 15: (“…DEL
<element><type> - <element> The English name of the element to delete. <type>
The type of the element to delete (e.g., cart, rack, playlist, log).” Thus, claim 5 is
obvious over Chase in view of Loeb.
4. Claim 6
- “A player as set forth in claim 5 wherein said editing means includes
means for reordering the sequence established by said data”
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Chase discloses the remote control terminal of the affiliate terminal includes
the ability for a user to scroll through the play list and select, out of turn, a segment
from the play list, which modifies the sequence of the play list. Ex. 1005 at ¶ 0186.
Selecting an audio segment to play out of turn assigns a new/different order to that
audio segment and updates the order for all of the segments in the play list. Thus,
claim 6 is obvious over Chase in view of Loeb.
D. Ground 2 – Claims 2-3 and 14-15 Are Obvious Under 35 U.S.C. 103(a)
over Chase in view of Loeb in view of Inazawa
Claims 2-3 are obvious over Chase in view of Loeb and further in view of
Inazawa. Chase and Loeb are analogous art to the ’076 Patent as detailed above
with respect to Ground 1. Inazawa is also analogous art to the ’076 Patent as
Inazawa is directed to a player, like the ’076 Patent. Further, Inazawa discloses the
player with program selection keys to allow a user to navigate forward and
backward between partitions or tracks and to restart a currently playing track. Ex.
1007 at Abstract, 2:11-26, 3:42-62, 4:38-5:54.
1. Claim 2
As described above, Chase and Loeb disclose a user interface by which a
listener can navigate audio program files identified by a playlist (including
skipping forward and back), and the combination of Chase and Loeb makes
obvious the function and structure for a user interface to respond to a “skip forward
program selection command” (see claim [1e]-[1f]). Although the combination of
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Chase and Loeb fails to disclose the specific manner of navigation in claim 2 in
sufficient detail to meet the construed 112 ¶ 6 interpretation discussed in sections
III(B)(3)(j)-(k), the combination of Chase, Loeb, and Inazawa makes obvious the
limitation.
- [2a] “A player as set forth in claim 1 further comprising means for
detecting a second command indicative of a request to skip
backward, and”
A command to skip backwards was well known at the time of the alleged
invention. For example, Personal Audio admitted that: “[i]t is to be understood that
applicant does not claim that all of the functions set forth in the dependent claims
are patentable per se. Plainly, for example, conventional CD players allow the user
to skip forward to the beginning of the next track on the disk or to skip backward
to proceeding tracks…” Ex. 1003 at 52 (emphasis added).
With regard to the function, the description of Chase and Loeb with regard
to claim [1e] applies here. Ex. 1005 at ¶¶ 0184-0186 and Ex. 1008 at pg. 6 (lower
right column); Fig. 3; pg. 7; and pg. 9; Ex. 1002, Walker Decl. at ¶¶ 74-76, and 80-
85. Inazawa discloses a disc player with: 1) a first key (“program selecting key
10”) to control forward program selection to skip to the beginning of audio
programs following the currently playing audio program; and 2) a second key
(“program selecting key 11”) to control reverse program selection to skip to the
beginning of the currently playing audio program or to the beginning of preceding
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programs. Ex. 1007 at Fig. 1, 3:43-62, 2:66-3:4, 1:51-59, and 7:32-56. When
reading Inazawa, it should be noted that “reproduced address data Q” represents
address data read from the disc and supplied to a first register 7. Ex. 1007 at 3:25-
36. From this first register 7, the address data QN (the currently playing audio
program has an “address N”) is supplied to an operational circuit block 8. Ex.
1007 at 3:36-42.
When the first or second program selecting key 10 or 11 is manipulated, a
key input signal Ku or Kd is generated and supplied to an operational circuit block
8. Ex. 1007 at Fig. 1 and 3:63-67. The operational circuit block 8 then produces
designated address QX to which the disc player is to skip. Ex. 1007 at Fig. 1 and
3:67-4:37; Ex. 1002, Walker Decl. at ¶ 104.
As for structure, the description of Chase and Loeb with regard to claim [1e]
applies here. Ex. 1005 at ¶¶ 0001-0002, 0004, 0185-0186, incorporating by
reference Ex. 1015 at 571-574 and 779-781; Ex. 1002, Walker Decl. at ¶ 199,
element 2.a. Inazawa discloses a more hardware centric approach to perform a
skip back operation (an operational circuit block 8 that responds to the receipt of
no signals, the Ku signal, or the Kd signal by respectively doing nothing, skipping
forward, and skipping backward (see above discussion)). The software versus
hardware approaches in Chase and Inazawa are a mere design choice, and a
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POSITA would know how to implement the operation of Inazawa in the context of
the software in Chase. Ex. 1002, Walker Decl. at ¶¶ 107-109.
Rationales to combine are addressed at the end of the next claim limitation.
- [2b] “means responsive to a single one of said second commands for
discontinuing the reproduction of the currently playing program
segment and instead continuing the reproduction at the beginning of
said currently playing program”
With regard to the function, the description of Chase and Loeb with regard
to claim [1f] applies here. Ex. 1005 at ¶¶ 0184-0186 and Ex. 1008 at ¶¶ pg. 6
(lower right column); Fig. 3; pg. 7; and pg. 9; Ex. 1002, Walker Decl. at ¶¶ 74-76,
80-85, and 119 at element 2.b. As discussed above, Inazawa discloses a key
(“program selecting key 11”) to control reverse program selection on a disc player
to skip to the beginning of the currently playing audio program or to the beginning
of preceding programs. Ex. 1007 at 3:50-62, 2:66-3:4, 1:51-59, and 7:32-56.
With regard to the structure, the only occurrence of language close to a
claimed “single one of said second commands” and “two consecutive ones of said
second commands” (see claim 3) is found in the claims. The specification of the
’076 patent instead discloses the use of a time period. Ex. 1001 Figure 3 at items
261, 262, and 278, 15:42-59. Thus, the Court interpreted the claim limitation to
require the time period as discussed in the above claim construction section.
Chase discloses a general purpose computer programmed to perform a skip
back operation that includes scanning backward in the context of a playlist file to
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find the previous playable element, setting the current element as the found
playable element, and fetching/playing that found playable element (in similar
manner as discussed above concerning claim [1f], but specifying the direction as
“BACKWARD” instead of “FORWARD” in the FindNextElement function).
Thus, the function rPlayer:FindNextElement scans backward in the play list to find
the next playable element including advancing the element pointer backward until
it finds the first playable object (a track, play list, or cart) (a “LocType”) and then
returns that pointer to the Event function, which passes to the function
SetCurrentElement the returned pointer (tp) to the previous segment. Ex. 1005 at
¶¶ 0066, 0001-0002, and 0004, incorporating by reference Ex. 1015 at 50, 144-
147, 150, 401-403, 407-409, and 707-708. The SetCurrentElement sets the
element corresponding to the returned pointer (tp) as the current element
(“CurElement”) and invokes the CueElement function. Ex. 1005 at ¶¶ 0001-0002
and 0004, incorporating by reference Ex. 1015 at 401-402 and 409. The
CueElement function configures the player to start playing as detailed above with
respect to claim portion [1d].
Inazawa discloses a time period started as part of its reverse program
selection mode that is used when determining whether the disc player will skip
back to the beginning of the currently playing audio program or skip back to the
preceding audio program. Ex. 1007 at 3:50-58; 4:38-5:2 and 6:30-7:31. In
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Inazawa, the currently playing audio program has an “address N” and a preceding
audio program has an “address N-1.” Ex. 1007 at 6:5-8; 6:61-7:20; and 7:32-56.
Upon a manipulation of the program selecting key 11 within the duration t3 (i.e.,
while the audio program is playing within a predetermined time period duration t3),
a skip backward to the beginning of the preceding program at address N-1 (the
“two consecutive ones of said second commands” of claim 3) is performed. Ex.
1007 at 6:61-7:20; 7:31-56; 6:17-60; and Figures 2A-D; Ex. 1002, Walker Decl. at
¶¶ 103-106.
In contrast, upon a manipulation of the program selecting key 11 after the
duration t3 (i.e., after the audio program has been playing a predetermined amount
of time, and equivalent to the construed 112 ¶ 6 structure “if the currently playing
audio segment has played for a predetermined amount of time”), a skip to the
beginning of the current audio program at address N (the beginning of the current
audio program) is performed, playing the audio program therefrom (equivalent to
the construed 112 ¶ 6 structure “resetting the playback position to the beginning of
the program segment; and playing the program segment from its beginning”). Ex.
1007 at 7:21-56; Ex. 1002, Walker Decl. at ¶¶ 103, 106.
Thus, Inazawa discloses a user interface to skip back during playback, to
play from the beginning of the current program, based on a key press after
expiration of a time period. The software versus hardware approaches in Chase
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and Inazawa are a mere design choice, and a POSITA would know how to
implement the operation of Inazawa in the context of the software in Chase. Ex.
1002, Walker Decl. at ¶ 107.
A POSITA would be motivated to add the features of Inazawa to the
combination of Chase and Loeb to improve the user interface such that the same
control key can be used to control backing up to the beginning of the current audio
program or the beginning of a preceding audio program based on a time period. In
fact, Inazawa’s purpose of providing a user interface for a listener controller audio
playback device is reflected by Inazawa’s title (“DISC PLAYER WITH
PROGRAM SELECTION CONTROL” Ex. 1009 at title), and the expressed
advantage of being able to “quickly and surely search any desired one of the
program information partitions recorded on the disc in both directions forwarding
and reversing the address provided to each program information partition on the
record disc with use of the address information and then reproduce an information
signal from the searched program information partition immediately after the
search thereof is finished.” Ex. 1009 at 1:51-59; Ex. 1002, Walker Decl. at ¶ 108.
A POSITA would have had a reasonable expectation of success considering the
ubiquity of user interfaces for listening to audio. Ex. 1002, Walker Decl. at ¶¶ 27
and 108. Also, Chase, Loeb, and Inazawa could have been combined by a
POSITA using known methods (using common programming techniques) to yield
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a predictable result, namely the user interface with the skip backward based on a
time period. Ex. 1002, Walker Decl. at ¶ 109. Further, a POSITA could have
taken the known technique from Inazawa to improve the combination of Chase and
Loeb in the same way, and the result would have been predictable (i.e., a user
interface to control skipping back to the beginning of a current audio program or a
preceding audio program). Ex. 1002, Walker Decl. at ¶ 109. Thus, claim 2 is
obvious in view of the combination of Chase, Loeb, and Inazawa.
2. Claim 3
- “A player as set forth in claim 2 further comprising means
responsive to the detection of two consecutive ones of said second
commands for discontinuing the reproduction of the currently
playing program segment and instead continuing the reproduction
at the beginning of a program segment which precedes the currently
playing program segment”
Although the combination of Chase and Loeb fails to disclose the specific
manner of navigation in claim 3 in sufficient detail to meet the construed 112 ¶ 6
interpretation discussed in section III(B)(3)(l), the combination of Chase, Loeb,
and Inazawa makes obvious the limitation.
As discussed above with regard to Claim 2, with regard to the function, the
description of Chase and Loeb with regard to claim [1f] applies here. Ex. 1005 at
¶¶ 0184-0186 and Ex. 1008 at ¶¶ pg. 6 (lower right column); Fig. 3; pg. 7; and pg.
9. Also, as discussed above, Inazawa discloses a key (“program selecting key 11”)
to control reverse program selection on a disc player to skip to the beginning of the
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currently playing audio program or to the beginning of preceding programs. Ex.
1007 at 3:50-62, 2:66-3:4, 1:51-59, and 7:32-56. When the second program
selecting key 11 is initially manipulated, the key input signal Kd previously
discussed is supplied to not only the operational circuit block 8, but also a key
input signal checker 15. Ex. 1007 at Fig. 1, 3:63-67, and 4:53-55. The
operational circuit block 8 performs the processing operation for the address QN
(derived from the first register 7) and the key input signal so as to produce
designated address QX (the address to which the disc player is to skip ) (Ex. 1007
at Fig. 1, 3:67-4:3, and 4:4-37), while the key input signal checker 15
“discriminates” the initial manipulation from an “additional manipulation” of key
11 (Ex. 1007 at Fig. 1 and 4:53-60). Specifically, responsive to the initial
manipulation, the key input signal checker 15 causes a signal Tc to be received by
the operational circuit block 8 for a time period t3 via a timer 16 and an OR gate
14. Ex. 1007 at Fig. 1, 4:60-5:2, and 6:17-60. A second manipulation of the key
11 during t3 causes a skip backward to the preceding program. Ex. 1007 at 6:61-
5:20. Thus, the operational circuit block 8, key input signal checker 15, time 16,
and OR gate 14 of Inazawa operate to detect two consecutive manipulations of the
second key (“program selecting key 11”) to a request to skip backward to a
preceding program (the claimed “discontinuing the reproduction … and instead
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continuing the reproduction at the beginning of a program segment which precedes
the currently playing program segment”). Ex. 1002, Walker Decl. at ¶¶ 104-106.
With regard to the structure, as discussed above the only occurrence of
language close to the claimed a “single one of said second commands” (see claim
2) and “two consecutive ones of said second commands” (claim 3) is found in the
claims. The specification of the ’076 patent instead discloses the use of a time
period. Ex. 1001 Figure 3 at items 261, 262, and 278, 15:42-59. Thus, the Court
interpreted the claim limitation to require the time period as discussed in the above
claim construction section.
As discussed above, Chase discloses a general purpose computer
programmed to perform a skip back operation that includes scanning backward in
the context of a playlist file to find the previous playable element, setting the
current element as the found playable element, and fetching/playing that found
playable element (in similar manner as discussed above concerning claim [1f], but
specifying the direction as “BACKWARD” instead of “FORWARD” in the
FindNextElement function. Thus the function rPlayer:FindNextElement scans
backward in the play list to find the next playable element including advancing the
element pointer backward until it finds the first playable object (a track, play list,
or cart) (a “LocType”) and then returns that pointer to the Event function, which
passes to the function SetCurrentElement the returned pointer (tp) to the previous
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segment. Ex. 1005 at ¶¶ 0066, 0001-0002, and 0004, incorporating by reference
Ex. 1015 at 50, 144-147, 150, 401-403, 407-409, and 707-708. The
SetCurrentElement sets the element corresponding to the returned pointer (tp) as
the current element (“CurElement”) and invokes the CueElement function. Ex.
1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 401-402
and 409. The CueElement function configures the player to start playing as
detailed above with respect to claim portion [1d].
As discussed above, Inazawa discloses a time period started as part of its
reverse program selection mode that is used when determining whether the disc
player will skip back to the beginning of the currently playing audio program or
skip back to the preceding audio program. Ex. 1007 at 3:50-58; 4:38-5:2 and 6:30-
7:31. (When reading Inazawa, it should be noted that the currently playing audio
program has an “address N” and a preceding audio program has an “address N-1.”
Ex. 1007 at 6:5-8; 6:61-7:20; and 7:32-56.) Specifically, Inazawa discloses that
when the program selecting key 11 is initially manipulated (producing the signal
Ts illustrated in Fig. 2A), a reverse program selection mode is entered where: 1) a
timer 16 is started (duration of t1 in Fig. 2B); and 2) a skip to the beginning of the
current audio program (identified at address N) is performed that includes moving
the optical head to the area according to address N (the beginning of the current
audio program) and playing the audio program therefrom. Ex. 1007 at 6:17-60.
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Upon a manipulation of the program selecting key 11 when the duration t3
has expired (which occurs after the audio program has been playing an amount of
time), a skip to the beginning of the current audio program (identified at address N)
is performed that includes moving the optical head to the area according to address
N (the beginning of the current audio program) and playing the audio program
therefrom. Ex. 1007 at 7:21-56. This manipulation (referred to here as the “first
manipulation) equates to the first of the claimed “two consecutive ones of said
second commands” because it is after the time period caused by the above
discussed initial manipulation and because it operates just as that initial
manipulation did (causes a resetting of the playback position to the beginning of
the program and playing of that program from the beginning (see the “first ‘Back’
command” from the claim construction)). In addition, just as with the initial
manipulation, this first manipulation causes the operational circuit block 8, key
input signal checker 15, time 16, and OR gate 14 operate to detect any additional
manipulation within a newly started time period t3. An additional manipulation
(referred to here as the “second manipulation”) when the duration t2 expires but
before t3 expires (thus while the audio program is playing but before the duration t3
expires), causes a skip backward to the beginning of the preceding program at
address N-1. Ex. 1007 at 6:61-7:20; 7:31-56. Thus, this second manipulation
equates to the second of the claimed “two consecutive ones of said second
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commands” because it is before the time period has expired and it causes the
preceding program to be played.
Thus, Inazawa discloses a more hardware centric approach (operational
circuit block 8, system controller, 9, key input signal checker 15, timer 16, etc.)
that scans backward in the sequence of the disc to locate the previous track, resets
the address to N-1 (equivalent to “CurrentPlay” in the construed 112 ¶ 6 structure),
and play that program. In essence, choosing a hardware implementation or a
software implementation is merely a design choice, and a POSITA would know
how to implement the operation of Inazawa in the context of the software of Chase.
Ex. 1002, Walker Decl. at ¶ 107.
A POSITA would be motivated to add the features of Inazawa to the
combination of Chase and Loeb for at least the same reason as expressed with
regard to claim 2. Thus, claim 3 is obvious in view of the combination of Chase,
Loeb, and Inazawa.
3. Claim 14
- [14-pre] “A programmed digital computer for reproducing audio
programs, said computer comprising, in combination:”
See analysis for claim [1-pre].
- [14a] “a mass storage device for storing a plurality of digitally
recorded audio program segments, each of said segments having a
beginning and an end”
See analysis for claim [1a].
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57
- [14b] “and further receiving and storing a file of data establishing a
sequence in which said program segments are scheduled to be
played”
See analysis for claim [1b].
- [14c] “input means for accepting control commands from a user”
See analysis for claim [1c].
- [14d] “output means for producing audible sounds in response to
analog audio signals”
Chase discloses that the affiliate terminal includes an audition audio headset
59 that allows a user to listen to at least a portion of the audio segments/programs
stored on the memory. Ex. 1005 at ¶ 0067.
- [14e] “processing means for translating said digitally recorded
audio program segments into analog audio signals delivered to said
output means for reproducing said recorded program segments in a
form audible to said user”
Chase discloses the affiliate terminal including a digital audio card (DAC)
52 that includes a digital signal processor (DSP) 104 that includes a digital to
analog converter that outputs the playback of the audio segments as an analog
signal. Ex. 1005 at ¶ 0068. Chase also discloses that the affiliate terminal includes
an audition audio headset 59 that allows a user to listen to at least a portion of the
audio segments/programs stored on the memory. Ex. 1005 at ¶ 0067. Petitioner
considers the user of Chase (which may be a radio DJ) to meet this limitation
regarding a user because, as discussed above, the district court in the Apple
litigation found that there is no place identified in the ’076 Patent’s specification or
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
58
prosecution history where the inventors “explicitly limited their invention to use by
a single listener or expressly disclaimed the use of their invention by a radio DJ.”
Ex. 1009 at 16. However, out of an abundance of caution concerning the claim
term “user,” Loeb teaches a “personalized music system in which songs are played
at a listener’s workstation, using its built-in audio capability” and the “listener’s
terminal must have audio and graphics output capabilities.” Ex. 1008 at pgs. 6 and
9.
A POSITA would have been motivated to modify Chase’s affiliate terminal
to which the audition audio headset 59 is connected to have features of the
“listener’s workstation” of Loeb. For instance, a POSITA would be motivated to
combine Chase and Loeb so as to allow for a personalized selection of a list of
songs to be delivered across a network to a player with audio output (e.g., a
headset) with a simple, high level user interface that allows listeners to control
playback of the songs, including starting/stopping the songs at any time and
stepping forward and backward through the list of songs; such a user interface
“induces nearly instant acceptance and allows people to use the LyricTime
prototype with almost no preparation.” Ex. 1008 at pgs. 6-7; Fig. 3; and pg. 9
(lower left column to upper middle column). A POSITA would have a reasonable
expectation of success considering the commonality of audio output to a headset
for listening to audio. Ex. 1002, Walker Decl. at ¶ 112. Also, Chase and Loeb
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could have been combined by a POSITA using known methods (audio output to a
headset was well known) to yield a predictable result, namely a terminal with a
headset for listening to the audio. Ex. 1002, Walker Decl. at ¶ 113.
- [14f] “processing means responsive to a first one of said control
commands for discontinuing the translation of the currently playing
program segment and instead continuing the translation at the
beginning of the next program segment in said sequence, and”
See analysis for claim [1f].
- [14g] “processing means responsive to a second one of said control
command for discontinuing the translation of the currently playing
program and instead continuing the translation at the beginning of
said currently playing program.”
See analysis for claim [2b].
In light of the above, claim 14 is obvious over Chase in view of Loeb and
further in view of Inazawa.
4. Claim 15
- “A programmed digital computer for reproducing audio programs
as set forth in claim 14 further comprising means responsive to two
consecutive ones of said second control commands for discontinuing
the translation of the currently playing program and instead
continuing the translation at the beginning of a program segment
which precedes said currently playing program in said sequence.”
See analysis for claim 3.
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
60
V. RELIEF REQUESTED
For the foregoing reasons, Inter Partes review of claims 1-6 and 14-15 of
U.S. Patent No. 6,199,076 and cancellation of claims 1-6 and 14-15 of the ’076
Patent is respectfully requested.
Date: March 6, 2015 Respectfully submitted,
/Daniel M. De Vos / Daniel M. De Vos Reg. No. 37,813 Attorney for Petitioner
Petition for Inter Partes Review of U.S. Patent No. 6,199,076
61
CERTIFICATE OF SERVICE
The undersigned hereby certifies, pursuant to 37 C.F.R. §§ 42.6(e) and
41.105, that a complete copy of the foregoing Petition for Inter Partes Review of
U.S. Patent No. 6,199,076, along with all exhibits and other supporting documents,
are being served via Priority Mail Express (formerly called Express Mail) on
March 6, 2015, upon the patent owner’s attorneys of record for the patent at the
following address:
NIXON & VANDERHYE, PC
901 North Glebe Road, 11th Floor
Arlington VA 22203
/Matthew N. Nicholson / Matthew N. Nicholson Reg. No. 62,889