Case: 17-1162
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`Document: 60-1
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`Page: 1
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`Filed: 08/01/2018
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`(1 of 18)
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`NOTE: This disposition is nonprecedential.
`
`@Hniteh gamma @nutt of gppeals
`
`for the jfeheral QEiruu’t
`
`GOOGLE LLC,
`Appellant
`
`V.
`
`PERSONAL AUDIO, LLC,
`Cross-Appellant
`
`2017-1162, 2017-1166, 2017-2110, 2017-2111
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00845, IPR2015-00846.
`
`Decided: August 1, 2018
`
`DAN L. BAGATELL, Perkins Coie LLP, Hanover, NH,
`argued for appellant. Also represented by LANE M.
`POLOZOLA, Seattle, WA; MATTHEW NOAH NICHOLSON,
`Nicholson De Vos Webster & Elliott LLP, San Jose, CA;
`JEANNINE YOO SANO, White & Case LLP, Palo Alto, CA.
`
`VICTOR G. HARDY, Hardy Parrish Yang, LLP, Austin,
`TX, argued for cross-appellant. Also represented by
`MINGHUI YANG.
`
`

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`Case: 17-1162
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`Document: 60-1
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`GOOGLE LLC V. PERSONAL AUDIO, LLC
`
`Before PROST, Chief Judge, BRYSON and O’MALLEY,
`Circuit Judges.
`
`BRYSON, Circuit Judge.
`
`Google LLC appeals from two decisions of the Patent
`Trial and Appeal Board in inter partes review proceed-
`ings, each involving a patent owned by cross-appellant
`Personal Audio, LLC.
`In the first case, the Board held
`claims 1 and 4 of Personal Audio’s US. Patent No.
`
`6,199,076 (“the ’076 patent”) to be unpatentable for obvi-
`ousness, but held claims 2, 3, 14, and 15 of the ’076 patent
`to be patentable.
`In the second case,
`the Board held
`claims 1—4, 9, and 13 of US. Patent No. 7,509,178 (“the
`’178 patent”) to be unpatentable for obviousness, but held
`claims 5—8, 14—17, 28, and 29 of the ’178 patent to be
`patentable.
`Google appeals
`from the Board’s non-
`obviousness decisions; Personal Audio cross-appeals fiom
`the Board’s obviousness rulings. We affirm.
`
`I
`
`Both the ’076 patent and the ’178 patent are directed
`to an audio program and message distribution system in
`which a host system organizes and transmits program
`segments to a client. The claimed audio program player
`receives a sequence of programs to be played based on the
`listener’s preferences. The program player also provides
`navigation tools that enable the user to navigate to other
`program segments or to the beginning of the currently
`playing segment.
`
`Certain claims of the two patents recite a “skip back-
`ward” program selection command that, depending on the
`circumstances, either restarts the current program seg-
`ment or begins playback of the previous segment. As
`recited by the claims and construed by the Board, the
`“skip backward” limitations of both patents disclose a
`
`

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`computer algorithm that responds to one or more “back”
`commands in different ways depending on how long the
`current program has been playing.
`If the current pro-
`gram has played for at least a predetermined period of
`time, the “back” command will cause the system to reset
`to the beginning of the currently playing program. If the
`current program has not played for a predetermined
`amount of time, the “back” command will cause the sys-
`tem to begin playback of the immediately preceding
`segment in the playlist. For example,
`if the predeter-
`mined time is set at three seconds, and track 5 has been
`playing for three seconds or less, a “back” command would
`begin playback of track 4; if track 5 has been playing for
`more than three seconds, a “back” command would restart
`track 5.
`
`Certain claims also recite “skip” and “go” commands.
`The “skip” command plays the audio segment that follows
`the currently playing segment. The “go” command per-
`mits the user to play a “listener-selected” audio program
`segment. Some claims also include the limitation that the
`player reproduces “selected audio program segments,”
`which the Board construed as “audio program segments '
`that have been chosen by or for a user.” Similarly, some
`of the claims require that the sequence file be “personal-
`ized to the preferences” of the listener.
`
`Google asserted four prior art references before the
`Board, of which three are relevant to this appeal. The
`first
`is US. Patent App. Pub. No. 2002/0177914 A1
`(“Chase”), a published patent application that discloses a
`system for distributing nationally syndicated radio pro-
`grams or national advertising campaigns to local radio
`stations. Chase describes an “affiliate terminal” in which
`
`the local radio station’s disc jockey can pause and play
`audio selections from the playlist provided by the national
`broadcaster, can go to the next or previous segment, and
`
`

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`can use up and down arrows to select and play a desired
`program from within the list.
`
`The second prior art reference is an article written by
`Shoshana Loeb (“Loeb”). The Loeb reference describes a
`personalized music system called “LyricTime,” which can
`select audio files for playing based on a listener profile.
`The audio files in the LyricTime system can be transmit-
`ted to the listener’s computer, television, or other termi-
`nal with input capabilities. The system also provides the
`listener with the ability to play and pause the audio, and
`to navigate forward and backward through the selected
`audio files.
`
`The third relevant prior art reference is US. Patent
`No. 4,811,315, entitled “Disc Player with Program Selec-
`tion Control” (“Inazawa”).
`Inazawa, which describes a
`navigation system on a CD player, was introduced to
`show the “skip backward” limitations.
`Inazawa discloses
`a system that has two program selection keys, one to
`move forward and the other to move in reverse. On a
`
`single press of the “back” button, the device moves the
`optical head of the CD player to the beginning of the
`currently playing track. Inazawa, col. 6, 11. 17—29. If that
`button is pressed a second time within a period designat-
`ed as t3, the optical head instead moves to the beginning
`of the previous track.
`Id., col. 6, line 61, to col. 7, line 20.
`Otherwise, if that button is pressed a second time after
`the expiration of the t3 time period, the optical head again
`moves to the beginning of the currently playing track. Id.,
`(:01. 7, ll. 21—31.
`
`Importantly, after the first button press, there is a
`short reset period, identified as t2, which is the time that
`it takes for the optical head to move into the proper
`position at the beginning of the current track.
`Id., col. 6,
`11. 41—54. The reset time varies, depending on factors
`such as the distance between the current location of the
`
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`optical head and its destination. As a result, the period
`designated as t3 does not represent audio playback time,
`but rather begins running from the first press of the
`program selection key, and includes some amount of reset
`time during which no audio playback is occurring.
`
`The Board held that the prior art rendered all of the
`limitations obvious except for the “skip backward” limita-
`tions. Google appeals from the Board’s conclusion that
`Inazawa does not render the “skip backward” limitations
`obvious. Personal Audio cross-appeals from the Board’s
`conclusions that Chase and Loeb render the claims con-
`
`taining the “skip” and “go” limitations obvious, that Chase
`and Loeb disclose “selected audio program segments,” and
`that there was a motivation to combine Chase and Loeb in
`
`a manner that would disclose that the audio is “personal-
`ized to the preferences” of the listener.
`
`II
`
`In its appeal, Google argues that Inazawa renders the
`claims containing the “skip backward” limitations obvi-
`ous. Because substantial evidence supports the Board’s
`conclusion that Inazawa describes a fundamentally differ-
`ent algorithm that does not render the claimed algorithm
`obvious, we affirm.
`
`First, Google argues that the time period t3 disclosed
`in Inazawa constitutes a “predetermined amount of time”
`under the Board’s claim construction and therefore ren-
`
`ders obvious the “skip backward” limitations in claims 5,
`6, and 14 of the ’178 patent. The stipulated claim con-
`structions, which were adopted by the Board, provide that
`the “skip backward” claim limitations either reset to the
`beginning of the current segment or the beginning of the
`previous segment depending on whether “the currently
`playing audio program file has played for a predetermined
`amount of time.”
`
`

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`The Board distinguished Inazawa from the ’178 pa-
`tent on the ground that Inazawa’s algorithm is based not
`on a predetermined amount of audio playback, but rather
`on a predetermined amount of time after the “back”
`button is first pressed. Google argues on appeal that the
`’178 patent’s “predetermined amount” of playback can
`include the time consumed by the reset function. For that
`reason, Google argues, Inazawa’s t3, which includes both
`the reset period and the period of playback, can satisfy
`the “predetermined amount of time” limitation in the
`“skip backward” claims of the ’178 patent.
`
`Google’s argument is unsupported by the claims and
`specification of the ’178 patent, both of which support
`Personal Audio’s argument
`that
`the “predetermined
`amount of time” limitation excludes the reset period. For
`example, claim 5 of the ’178 patent recites “wherein said
`processor responds to a skip backward program selection
`command .
`.
`. at a time when said currently playing audio
`program has played for at least a predetermined amount
`of time.” ’178 patent, col. 46, 11. 42—49 (emphasis added).
`The claim recites a predetermined amount of play time for
`the audio program, which does not contemplate reset
`time. Similarly, the specification of the ’178 patent states
`that “after any given segment has played for a predeter-
`mined amount of time, the BACK command should reset
`the playback to [the] beginning of the current segment .
`.
`.
`unless the playback point is already near the beginning,
`in which case the transition is made to the prior seg-
`ment.” Id., col. 15, 11. 53—59 (emphasis added).
`
`In an effort to overcome this unambiguous language,
`Google relies on figure 3 of the ’178 patent. That figure,
`according to Google,
`shows that
`the “predetermined
`amount” of playback includes reset time.
`
`Figure 3 is a flow chart that illustrates the “principle
`[sic] steps performed during a playback session in the
`
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`’178 patent, col. 4, 11. 13—15.
`illustrative embodiment.”
`Google points to three boxes in that flow chart. The first,
`box 267, contains the instruction “Record Segment End
`and New Start.” An arrow points from box 267 to box
`269. Box 269 contains the instruction “Reset to Next
`
`Segment Start.” An arrow points from box 269 to box 235.
`Box 235 contains the instruction “Continue Playback.”
`Google argues that box 267, the “Record Segment” box,
`designates when the “predetermined amount” of playback
`time begins. For that reason, Google argues, the reset
`time represented by box 269 must be part of the “prede-
`termined amount of” time for
`the playback function,
`which resumes at box 235. The relevant portion of figure
`3 is set forth below.
`
`End
`
`L..____|'""""" 267
`
`
`239
`
`Record
`
`
`Continue
`Segment
`
`
`
`End and
`Playback
`
`
`
`New sum
`
`4M
`
`
`Google’s argument is predicated on the theory that
`box 267 designates when the timer starts for the “prede-
`termined amount” of playback. However, the specification
`does not draw any connection between the “Record Seg-
`ment End and New Start” function and the playback
`timer function.
`The specification explains that “the
`system records the start of the new segment on the log file
`.
`.
`. at 267 and switches the current playback position in
`the program sequence file 214 to the new setting at 269,
`and the playback continues at 235.” ’178 patent, col. 14,
`11. 35-39; see also id., at col. 15, 11. 59—62 (“The system
`responds to BACK commands by resetting the playback
`point to the desired point in the sequence and recording
`the start time, volume setting and new program segment
`ID in the log file as indicated at 267.”). The “Record
`Segment End and New Start” function thus refers to
`
`

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`' entries made in a log file that records the start time and
`various other settings; the specification contains nothing
`to suggest that the period of playback time is based on the
`time of those entries in the log file, rather than when the
`playback actually resumes at box 235, “Continue Play-
`back.” Because the claims and the specification make
`clear that what is measured is “playback” time, Google’s
`argument about when the log file is written does not
`establish that reset time is included in “playback” time.
`We therefore see no error in the Board’s conclusion that
`
`InazaWa’s t3 is a different algorithm than the one claimed
`in the ’178 patent.
`
`Google next argues that, even if the claimed “prede-
`termined amount of time” excludes reset time, Inazawa
`discloses a time period defined by what Google refers to as
`“t3 minus t2,” where t2 is defined as the reset time. That
`period, according to Google, constitutes a predetermined
`period of playback time and therefore renders claims 5, 6,
`and 14 of the ’178 patent obvious. Google contends that t3
`is a predetermined amount of time and that the reset time
`t2 is also a “predetermined amount of time” because while
`it is variable, it is “formulaic and time-bound.” According-
`ly, Google argues that the time after 132 elapses but before
`t3 elapses is a “predetermined amount of” playback time.
`Inazawa does not describe the variable period required for
`reset following a “back” command as part of the playback
`time; rather, the concept of a period consisting of to, minus
`t2 is a construct devised by Google.
`
`Regardless of whether the “t3 minus t2” argument is
`timely,1 it is unpersuasive for the simple reason that t3
`
`1 The Board found that the “t3 minus t2” argument
`was not timely presented because it was not raised in
`Google’s inter partes review petition or in its reply, but
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`minus t2 is not a predetermined amount of playback time.
`The reset time t2 in Inazawa is variable and is based on
`
`when the user presses the “back” program selecting key
`and various factors about
`the length of the currently
`playing track, the playback point, and the location of the
`optical head; it is not and cannot be known in advance,
`unlike the predetermined amount of playback time dis-
`closed in the ’178 patent. As the Board held, Inazawa
`does not use or calculate t3 minus t2; instead, it measures
`time from the first button press, and not from the begin-
`ning of actual playback. The court sees no error in the
`Board’s conclusion that the t3 minus t2 argument is un-
`persuasive even if it was properly preserved.
`
`Google also challenges the Board’s conclusion that
`Inazawa discloses the skip-back functionality recited in
`
`was raised only during the oral argument before the
`'Board. Google contends its t3 minus t2 argument was in
`made in response to Personal Audio’s argument that the
`“predetermined amount of time” had to run from the
`beginning of the currently playing file. That argument,
`Google contends, was not made until the oral argument
`before the Board. Personal Audio, however, argued in its
`patent owner’s response that “[n]one of the prior art of
`record teach the function provided by the controls of
`skipping back based on a predetermined time an audio
`segment has played. . ..
`Inazawa, however, does not
`disclose controls based [on] the amount of time that the
`audio file has played, but rather based upon whether
`‘selection key’ is pressed a second time with a ‘duration t3’
`after the first key is pressed.” Given that Personal Audio
`made that argument in its written response,
`there is
`substantial force to the Board’s conclusion that Google’s
`failure to raise its t3 minus t2 argument in its reply re-
`sulted in a waiver of the argument.
`
`

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`claims 2, 3, 14, and 15 of the ’076 patent. Although the
`language of those claims differs from that of the “skip
`backward” claims in the ’178 patent, the parties stipulat-
`ed to, and the Board adopted, a construction that required
`the skip-back limitations of the ’076 patent to be based on
`a calculation of whether “the currently playing program
`segment has played for a predetermined amount of time.”
`Google raises the same arguments regarding Inazawa
`with regard to the ’076' patent that it did for the ’178
`patent. For the reasons described above, we affirm the
`Board’s conclusion that Inazawa does not disclose the
`
`claimed skip-back functionality of the ’076 patent.
`
`Finally, Google argues that the inclusion of reset time
`in the “predetermined amount of” playback time would
`have been obvious because “any differences between the
`prior art’s skip-back functionality and what the claims
`require were mere matters of design choice.” According to
`Google, the Board did not conduct a complete analysis of
`that argument, and this court should therefore remand
`for the Board to give further consideration to that conten-
`tion.
`
`Google did not argue in its papers to the Board that
`choosing between calculating the “predetermined amount
`of time” based on playback time and calculating that
`period based on a button press is simply an obvious
`design choice. Rather, Google’s only argument
`to the
`Board about obvious design choice was that Inazawa
`discloses a “predetermined amount of” playback, and that
`the difference between Inazawa’s hardware implementa-
`tion and the claimed invention’s software implementation
`would have been an obvious design choice. See J .A. 246—
`47 (Google’s petition for inter partes review of the ’076
`patent, arguing that “[t]he software versus hardware
`approaches in Chase 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
`
`

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`Chase”); J.A. 16129 (Google’s petition for inter partes
`review of the ’178 patent, making the same argument
`verbatim); J.A. 256 (’076 petition, arguing “[i]n essence,
`choosing a hardware implementation or a software im-
`plementation 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”); J .A. 16132 (’178
`petition, making the same argument verbatim).
`
`Because Google did not present the Board with its
`“design choice” argument
`to bridge the gap between
`Inazawa’s algorithm and the one recited in the ’178 and
`’076 patents, we do not consider this new argument on
`appeal. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed.
`Cir. 2012) (“[W]e generally do not consider arguments
`that the applicant failed to present to the Board”).
`
`III
`
`In its cross-appeal, Personal Audio raises three issues.
`Because substantial evidence supports the Board’s con-
`clusions that the claims the Board held unpatentable
`would have been obvious, we affirm.
`
`First, Personal Audio argues that the Board erred in
`relying on the same disclosure in the Chase and Loeb
`references to satisfy both the “skip” and “go” commands of
`claims 1 and 4 of the ’178 patent. As recited in the pa-
`tents, the “skip” command directs the player to moVe to
`the next audio segment in the playlist, and the “go” com-
`mand directs the player to move to a “listener-selected”
`audio segment.
`Personal Audio argues that neither
`Chase nor Loeb teaches an algorithm that enables the
`player to skip to a listener-selected song, as required by
`the “go” command. Personal Audio further contends that
`“skip” and “go” are recited as separate commands, and
`that the Board improperly treated them as one and the
`same.
`
`

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`We find no error in the Board’s legal analysis. The
`Board agreed with Google’s argument that the “skip” and
`“go” commands can be rendered obvious by the same
`portions of prior art. The Board’s holding is consistent
`with the principle that in infringement or obviousness
`analysis, a single element, feature, or mechanism can
`ordinarily satisfy multiple claim limitations, including by
`performing multiple claimed functions.
`See Powell U.
`Home Depot USA, Inc, 663 F.3d 1221, 1231—32 (Fed.
`Cir. 2011); Linear Tech. Corp. v. ITC, 566 F.3d 1049, 1055
`(Fed. Cir. 2009); Rodime PLC 0. Seagate Tech“, Inc, 174
`F.3d 1294, 1305 (Fed. Cir. 1999) (“[A] particular means
`may perform more than one function”); In re Kelley, 305
`F. 2d 909, 915-16 (CCPA 1962) (same).
`
`As to the Board’s factual analysis, we conclude that
`substantial evidence supports the Board’s finding that the
`claimed “skip” and “go” functions would have been obvi-
`ous in light of Chase and Loeb. The “skip” function recit-
`ed in claim 4 is expressly disclosed in both Chase and
`Loeb. Personal Audio therefore focuses on the “go” func-
`tion recited in claims 1 and 4 and. argues that the Board
`improperly found that Chase and Loeb rendered that
`function obvious. We disagree.
`
`The Board noted that Chase, in referring to a radio
`station disc jockey, provides
`that
`the “DJ may use
`up/down arrows on the remote control terminal to scroll
`through a play list displayed to the DJ and select, out of
`turn, a segment from the play list.” Google argued, and
`the Board agreed, that although Chase and Loeb do not
`disclose the precise algorithmic structure identified in the
`claim construction,
`those references render the claimed
`
`algorithmic structure obvious.
`
`In the portions of Google’s petition addressed to the
`“go” function, which the Board adopted, Google pointed
`out that Chase discloses “that
`the affiliate terminal’s
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`remote control terminal allows a user to override the
`
`normal sequence of the audio segments by selecting audio
`programs out of sequence,” and that control keys on the
`remote control terminal “enable the user to select a de-
`
`sired program from within the play list.” Google also
`cited expert testimony, which the Board credited, that
`Loeb discloses a user interface “for allowing a listener to
`control playback of songs including skipping through a
`list of selected songs.” And in its reply before the Board,
`Google cited the portions of Chase disclosing that the user
`may use the control keys “to scroll through a play list”
`and to “select, out of turn, a segment from the playlist.”
`In support of those arguments, Google’s expert testified
`that Chase’s algorithm for navigating to a new program
`and beginning the playback of that program “can be
`predictably applied for implementing the functionality to
`allow a user to select and start playing a program from
`the list (such as taught by Loeb).” The Board’s conclusion
`that the “skip” and “go” commands would have been
`obvious is therefore supported by substantial evidence.
`
`Second, Personal Audio argues that Chase and Loeb
`do not render obvious the phrase “reproducing selected
`audio program segments,” which appears in the preamble
`of claim 1 of the ’076 patent. As construed by the Board,
`the term “selected audio program segments” means “audio
`program segments that have been chosen by or for a
`user.” The Board found that term, which appears only in
`the preamble, not to be limiting.
`In any event, however,
`the Board found that Chase discloses that function, as
`construed.
`
`We assume, without deciding, that the preamble lan-
`guage is limiting; we conclude, however, that the Board’s
`finding that Chase discloses reproducing “audio program
`segments that have been chosen by or for a user” is sup-
`ported by substantial evidence. As the Board found,
`Chase teaches that a national broadcaster can create a
`
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`playlist of audio files to be distributed to an individual
`affiliate terminal—that is, audio segments chosen by the
`national broadcaster for an individual disc jockey, who is
`the user of Chase’s system. Although Personal Audio
`urged the Board to adopt a narrower claim construction of
`“selected audio program segments,” requiring a selection
`based on the individual preferences of that user,
`the
`Board rejected that argument as being unsupported by
`the language of the claims or the specification, and Per-
`sonal Audio does not appeal the Board’s claim construc-
`tion.
`Instead, Personal Audio argues that the Board’s
`claim construction should be interpreted to refer only to
`selections made by or for individual listeners. Personal
`Audio characterizes the Chase reference as teaching the
`selection of programs “for producers, DJ3, and other non-
`users,” and therefore contends that the Board’s obvious-
`
`ness analysis, which relied on Chase, is flawed.
`
`We see no reason to disturb the Board’s ruling on that
`issue. The Board’s reference to program segments “that
`have been chosen by or for a user” does not on its face
`require that the selections be based on the individual
`preferences of particular users. Moreover, the specifica-
`tion of the ’076 patent makes clear that program selec-
`tions can be based on group characteristics of users,
`indicating that the referenced selections are not limited to
`those made by individual users or based on individual
`user preferences.
`Thus, as the Board concluded,
`the
`language of the claim construction does not exclude
`“systems in which a broadcaster selects audio program
`segments for play by a DJ 3’2
`
`2 We also reject Personal Audio’s argument that a
`disc jockey cannot be a “user” within the meaning of the
`claim construction, as there is no support in the patent for
`imposing such a restriction on the meaning of “user.”
`
`

`

`Case: 17-1162
`
`Document: 60-1
`
`Page: 15
`
`Filed: 08/01/2018
`
`(15 of 18)
`
`GOOGLE LLC V. PERSONAL AUDIO, LLC
`
`15
`
`Finally, Personal Audio makes the related argument
`that the Board failed to articulate a motivation to com-
`
`bine Chase and Loeb with respect to the claims that
`require playback that is “personalized to the preferences
`of [the] listener.” Google’s petition and the Board’s deci-
`sion relied on Loeb as disclosing this limitation, and it
`does not appear that Personal Audio has challenged that
`finding on appeal. Rather, Personal Audio argues that
`“the Board provide[d] no explanation for why one would
`modify Chase to provide personalization based [on] pref-
`erences of the DJ when Chase is explicitly intended to
`provide personalization to a general broadcast
`radio
`audience who unquestionably do not use the Chase sys-
`tem.”
`
`The Board addressed that argument directly. It found
`that both Chase and Loeb are “directed to audio program
`players and network-based audio systems,” and that both
`Chase and Loeb suggest “distributing audio to selected
`end users,” which include Chase’s disc jockeys as the
`, users of the Chase system. The Board correctly noted
`that obviousness does not require the physical combina-
`tion of elements from various references, but
`instead
`requires an assessment of what the combined teachings of
`those references would have suggested to a person of skill
`in the art. Because the Board’s finding of a motivation to
`combine the references is supported by substantial evi-
`dence, and because Loeb discloses playback of audio
`“personalized to the preferences of [the]
`listener,” we
`affirm the Board’s ruling as to the claims that were found
`to be unpatentable.
`
`Each party shall bear its own costs for this appeal.
`
`AFFIRMED
`
`

`

`Case: 17-1162
`
`Document: 60-2
`
`Page: 1
`
`Filed: 08/01/2018
`
`(16 of 18)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 08/01/2018
`
`The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
`Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered by the Clerk's Office.
`
`Each side shall bear its own costs.
`
`Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(9) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`
`Peter R. Marksteiner
`Clerk of Court
`
`cc: Dan L. Bagatell
`Victor G. Hardy
`Matthew Noah Nicholson
`Lane M. Polozola
`Jeannine Yoo Sano
`
`Minghui Yang
`
`17-1162, -1166, -2110, -2111: Google LLC v. Personal Audio, LLC
`United States Patent and Trademark Office, Case Nos. lPR2015-00845, |PR2015-00846
`
`

`

`Case: 17-1162
`
`Document: 60-3
`
`Page:1
`
`Filed: 08/01/2018
`
`(17 of 18)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`7 17 MADISON PLACE, N.W.
`WASHINGTON, DC. 20439
`
`PETER R. MARKSTEINER
`CLERK OF COURT
`
`202-27 5-8000
`
`Information Sheet
`
`Petitions for Rehearing and Petitions for Hearing and Rehearing En Banc
`
`1. When is a petition for rehearing appropriate?
`
`The Federal Circuit grants few petitions for rehearing each year. These petitions for
`
`rehearing are rarely successful because they typically fail to articulate sufficient
`
`grounds upon which to grant them. Of note, petitions for rehearing should not be used
`
`to reargue issues previously presented that were not accepted by the merits panel
`
`during initial consideration of the appeal. This is especially so when the court has
`
`entered a judgment of affirmance without opinion under Fed. Cir. R. 36. Such
`
`dispositions are entered if the court determines the judgment of the trial court is based
`
`on findings that are not clearly erroneous, the evidence supporting the jury verdict is
`
`sufficient, the record supports the trial court’s ruling, the decision of the administrative
`
`agency warrants affirmance under the appropriate standard of review, or the judgment
`or decision is without an error of law.
`
`2. When is a petition for hearing/rehearing en banc appropriate?
`
`En banc consideration is rare. Each three-judge merits panel is charged with deciding
`
`individual appeals under existing Federal Circuit law as established in precedential
`
`opinions. Because each merits panel may enter precedential opinions, a party seeking
`
`en banc consideration must typically show that either the merits panel has (1) failed to
`
`follow existing decisions of the US. Supreme Court or Federal Circuit precedent or (2)
`
`followed Federal Circuit precedent that the petitioning party now seeks to have
`
`overruled by the court en banc. Federal Circuit Internal Operating Procedure #13
`
`identifies several reasons when the Federal Circuit may opt to hear a matter en banc.
`
`3. Is it necessary to file either of these petitions before filing a petition for
`
`a writ certiorari in the US. Supreme Court?
`
`No. A petition for a writ of certiorari may be filed once the court has issued a final
`
`judgment in a case.
`
`For additional information and filing requirements, please refer to Fed.
`
`Cir. R. 40 (Petitions for Rehearing) and Fed. Cir. R. 35 (Petitions for
`
`
`
`
`
`Hearing or Rehearing En Banc).
`
`Revised May 10, 2018
`
`

`

`Case: 17-1162
`
`Document: 60-4
`
`Page: 1
`
`Filed: 08/01/2018
`
`(18 of 18)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`717 MADISON PLACE, N.W.
`WASHINGTON, DC. 20439
`
`PETER R. MARKSTEINER
`CLERK OF COURT
`
`202-275-8000
`
`Information Sheet
`
`Filing a Petition for a Writ of Certiorari
`
`There is no automatic right of appeal to the Supreme Court of the United States from
`
`judgments of the Federal Circuit. Instead, a party must file a petition for a writ of
`
`certiorari which the Supreme Court will grant only when there are compelling reasons. See
`
`Supreme Court Rule 10.
`
`Time. The petition must be filed in the Supreme Court of the United States within 90 days
`
`of the entry of judgment in this Court or within 90 days of the denial of a timely petition for
`
`rehearing. The judgment is entered on the day the Federal Circuit issues a final decision in
`
`your case. The time does not run from the issuance of the mandate. See Supreme Court
`Rule 13.
`
`Fees. Either t