Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 41
`Entered: March 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`PERSONAL AUDIO LLC,
`Patent Owner.
`
`Case IPR2015-00846
`Patent 7,509,178 B2
`
`Before MITCHELL G. WEATHERLY, DAVID C. McKONE, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`

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`IPR2015-00846
`Patent 7,509,178 B2
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`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Google, Inc. (“Petitioner”)1 filed a petition (Paper 6, “Pet.”) to
`institute an inter partes review of claims 1–9, 13–17, 28, and 29 (the
`“challenged claims”) of U.S. Patent No. 7,509,178 B2 (Ex. 1001, “the ’178
`patent”). Petitioner supported the Petition with the Declaration of Martin G.
`Walker, PhD (Ex. 1002). Personal Audio LLC (“Patent Owner”) timely filed
`a Preliminary Response. Paper 13 (“Prelim. Resp.”). On September 17,
`2015, based on the record before us at the time, we instituted an inter partes
`review of claims 1–9, 13–17, 28, and 29. Paper 18 (“Institution Decision” or
`“Dec.”). We instituted the review on the following challenges to the claims:
`
`References
`
`U.S. Patent Publication No. 2002/0177914
`A1 (Ex. 1007, “Chase”) and Shoshana Loeb,
`Architecting Personalized Delivery of
`Multimedia Information, VOL. 35, NO. 12
`COMMUNICATIONS OF THE ACM 39–48
`(Dec. 1992) (Ex. 1011, “Loeb”)
`
`Basis
`
`Claims
`
`§ 103 1–4, 9, and 13
`
`Chase, Loeb, and U.S. Patent No. 4,811,315
`(Ex. 1009, “Inazawa”)
`
`§ 103 5, 6, 14–17, 28,
`and 29
`
`Chase, Loeb, Inazawa, and U.S. Patent No.
`4,609,954 (Ex. 1010, “Bolton”)
`
`§ 103 7 and 8
`
`
`1 With our prior authorization, the parties filed joint motions to terminate the
`proceeding with respect to original petitioner Barnes & Noble, Inc., Paper
`20, and original petitioners Lenovo (United States) Inc., Lenovo Holding
`Company, Inc., and Lenovo Group Ltd., Paper 22. We granted the motions
`and dismissed Barnes & Noble, Inc., Lenovo (United States) Inc., Lenovo
`Holding Company, Inc., and Lenovo Group Ltd. from the proceeding, which
`left Google, Inc. as the sole remaining petitioner. Paper 24.
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`Patent 7,509,178 B2
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`After we instituted this proceeding, Patent Owner filed a Patent
`Owner Response in opposition to the Petition (Paper 29, “PO Resp.”) that
`was supported by the Declaration of Kevin C. Almeroth, PhD (Ex. 2016).
`Petitioner filed a corrected Reply in support of the Petition (Paper 31,
`“Reply”). Patent Owner did not move to amend any claim of the
`’178 patent.
`We heard oral argument on June 16, 2016. A transcript of the
`argument has been entered in the record (Paper 38, “Tr.”).
`We entered our Final Written Decision on September 9, 2016, Paper
`39 (“Final Written Decision” or “Final Dec.”), in which we concluded that
`claims 1–4, 9, and 13 were unpatentable but claims 5–8, 14–17, 28, and 29
`were not unpatentable. Final Dec. 44. Petitioner filed a timely Request for
`Rehearing in which it asks that we reconsider the Final Written Decision and
`find that claims 5–8, 14–17, 28, and 29 are unpatentable as challenged in the
`Petition. Paper 40 (“Reh’g Req.” or “Request for Rehearing”). For the
`reasons that follow, we deny the Request for Rehearing.
`B. STANDARD FOR RECONSIDERATION
`The party filing a request for rehearing of a final written decision has
`the burden of showing that the decision should be modified, and the request
`for rehearing must specifically identify all matters the party believes the
`Board misapprehended or overlooked and the place at which each matter
`was previously addressed in its papers during the trial. 37 C.F.R. § 42.71(d).
`Therefore, Petitioner bears the burden of establishing that we
`misapprehended or overlooked the matters that it requests that we review.
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`II. ANALYSIS
`In our Final Written Decision we concluded that Petitioner failed to
`establish by a preponderance of evidence that the combination of Chase,
`Loeb, and Inazawa rendered claims 5, 6, 14–17, 28, and 29 obvious, Final
`Dec. 35–42, and that the combination of Chase, Loeb, Inazawa, and Bolton
`rendered claims 7 and 8 obvious, id. at 43. Both conclusions were based on
`Petitioner’s failure to establish by a preponderance of evidence that Inazawa
`taught aspects of claims 5, 6, and 14 to which we referred as the “skip back
`algorithm.” Final Dec. 35–42.
`The parties agree that the skip back algorithm is a portion of the
`algorithm that is recited in means-plus-function form as a “processor for
`continuously delivering a succession of said audio program files.” Pet. 6
`(adopting District Court interpretation of “processor for” in related Apple
`Litigation2); PO Resp. 22, 30, 33 (implicitly adopting means-plus-function
`nature of “processor for”). The algorithm is generally depicted in Figure 3
`of the ’178 patent.
`Petitioner argues that we should overturn our prior decision regarding
`claims 5, 6, 14–17, 28, and 29 because we “overlooked or misapprehended
`the claim construction with respect to claims 5, 6, and 14 and the claims that
`depend from those claims” in two ways. Reh’g Req. 1–13. First, Petitioner
`contends that we wrongly interpreted the skip back algorithm as one that
`“precludes multiple button presses.” Id. at 1. Second, Petitioner contends
`that we wrongly interpreted the skip back algorithm as referring to a
`“predetermined time” that is measured “from the beginning of the currently
`
`2 Personal Audio LLC v. Apple, Inc., et al., Case No. 9:09-cv-00111
`(E.D. Tex.) (the “Apple Litigation”)
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`playing audio program file.” Id. at 5–6. Based on these allegedly erroneous
`claim interpretations, Petitioner contends that we wrongly concluded that the
`prior art, particularly Inazawa, fails to describe the claimed skip back
`algorithm. Id. at 1–11. Petitioner also contends that, even if we were to
`maintain our interpretation of the skip back algorithm, we wrongly
`concluded that Inazawa fails to describe that algorithm. Id. at 11–13. We
`disagree with Petitioner on both contentions and maintain our determination
`that Petitioner failed to establish that Inazawa describes the claimed skip
`back algorithms of recited in claims 5, 6, and 14 and their respective
`dependent claims 7, 8, 15–17, 28, and 29.
`A. MULTIPLE BUTTON PRESSES
`Petitioner contends that we wrongly interpreted claims 5, 6, and 14 as
`reciting a “skip back algorithm” that “precludes multiple button presses.”
`Reh’g Req. 1. In doing so, Petitioner identifies two statements in the Final
`Written Decision that it contends reflect the manner in which we
`“misapprehended” the meaning of these claims. For the reasons expressed
`below, we disagree.
`Petitioner quotes our statement that the “plain terms recited in claims
`5, 6, and 14 require that the skip back algorithm is invoked by the same
`command, a ‘skip backward program selection’ in claims 5 and 6, and a
`‘third one of said control commands’ in claim 14.” Id. at 2 (quoting Final
`Dec. 39–40 with Petitioner’s emphasis). Petitioner argues that the use of the
`indefinite article “a” preceding “skip backward program selection
`command” in claims 5 and 6 dictates that claims 5 and 6 refer to different
`“skip backward” commands. Id. at 2–3.
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`Petitioner’s argument is unpersuasive for two reasons. First,
`Petitioner’s argument was not advanced in any paper during the trial and is
`thus an improper basis for modifying the Final Written Decision on
`rehearing. See 37 C.F.R. § 42.71(d) (requests for rehearing must identify
`“the place where each [contested] matter was previously addressed” during
`trial).
`Second, even if Petitioner’s argument were properly before us, it is
`unpersuasive. In its Reply, Petitioner correctly noted that claims 5, 6, and 14
`were “nearly identical” as they relate to the skip backward algorithm.
`Reply 14. Claim 14 twice refers to the command that executes the skip
`backward algorithm, first as “a third one of said control commands,”
`Ex. 1001, 48:50, and then as “said third one of said control commands,”
`id. at 48:58. Petitioner identifies no evidence supporting its argument that
`the use in claim 6 of “a” to introduce the “skip backward program selection”
`represents anything other than a typographical error.
`Additionally, the Specification describes, as the structure
`corresponding to means-plus-function limitations of claims 5, 6, and 14, an
`algorithm in which one “BACK command” results in two different outcomes
`depending upon whether it is issued before or “after any given segment has
`played for a predetermined amount of time.” Ex. 1001, 15:47–59. When the
`BACK command issues after the predetermined amount of time elapses, the
`currently playing segment is restarted from its beginning. Id. at 15:53–56.
`Claim 5 recites this outcome of the BACK command. When the BACK
`command issues before the predetermined amount of time elapses, the prior
`segment in the playlist is played back. Id. at 15:57–59. Claim 6 recites this
`outcome of the BACK command. Both outcomes are recited in claim 14.
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`For all these reasons, we do not disturb our prior interpretation of
`claims 5, 6, and 14, and we disagree that we interpreted these claims to
`“preclude multiple button presses.”
`B. PREDETERMINED TIME
`Petitioner contends that we wrongly interpreted claims 5, 6, and 14 as
`requiring that the “skip back algorithm” refers to a “predetermined time”
`that is measured “from the beginning of the currently playing audio program
`file.”3 Id. at 5–6 (quoting Final Dec. 41 with Petitioner’s emphasis).
`Petitioner describes the Final Written Decision as “correctly” reciting the
`agreed upon interpretation of the skip back algorithm that was first
`promulgated by the District Court in the Apple Litigation. Id. at 6 (citing
`Final Dec. 11–15). Petitioner contends, however, that we “improperly added
`a limitation that the skip back algorithm requires a predetermined time from
`the beginning of the currently playing audio program file.” Id.
`Petitioner’s argument is unpersuasive. The agreed upon interpretation
`of the skip back algorithm to which Petitioner refers states:
`Specifically, this algorithm includes the following steps:
`(1) if the currently playing audio program file has played
`for a predetermined amount of time, resetting the playback
`position to the beginning of the audio program file; and
`(2) playing the audio program file from its beginning.
`
`3 Petitioner also identifies the following statement as reflecting our
`misapprehension of the predetermined time of the skip back algorithm: “the
`’178 patent describes the skip back algorithm as determining whether to skip
`to the beginning of the current program segment or the beginning of the
`previous program segment based on the amount of time that has lapsed since
`the beginning of the current program segment.” Reh’g Req. 5. We consider
`Petitioner to present the same argument with respect to both bases of alleged
`misapprehension.
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`Final Dec. 11–12 (citing Ex. 1014, 18–19).
`This passage, by stating “if the currently playing audio program file
`has played for a predetermined amount of time” plainly and necessarily
`implies that the “predetermined amount of time” refers to an amount of time
`to be compared to the amount of time that “the currently playing audio
`program file has played.” To determine the amount of time that “the
`currently playing audio program file has played” from any reference point
`other than the beginning of the playback would render the amount of
`playback time arbitrary and therefore impossible to compare to the
`predetermined amount of time.
`Petitioner attempts to explain its position by contending that the
`amount of playback time is measured from the recording of the start time in
`item 267 shown in Figure 3, which occurs “before the beginning of the
`currently playing audio program file” which is shown in item 235 in
`Figure 3. Reh’g Req. 7–8. Petitioner fails, however, to quantify the
`difference in time between the execution of items 267 and 235 in Figure 3 or
`even whether any difference in time exists. More importantly, however,
`none of the plain language of claims 5, 6, and 14 or the agreed upon
`interpretations of that language refers to any time “before the beginning of
`the currently playing audio program file” as the reference time for measuring
`whether the predetermined amount of time has elapsed.
`Additionally, Petitioner’s analysis of Figure 3 and its contention that
`the predetermined amount of time is measured from a time “before the
`beginning of the currently playing audio file” were not advanced in any
`paper during the trial and, thus, are not properly before us under 37 C.F.R.
`§ 42.71(d). In fact, Petitioner’s current position is inconsistent with its prior
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`argument that because “Inazawa starts a timer to measure t3 and starts
`playing the current song (program segment) after an initial press of the
`program selecting key 11,” Inazawa “effectively measures whether ‘the
`currently playing audio program’ has or has not yet played ‘for a
`predetermined amount of time.’” Reply 13. Petitioner’s argument
`recognizes that the start of playback is also the reference point for measuring
`whether the predetermined amount of time has passed.
`For all these reasons, we do not disturb our prior description of claims
`5, 6, and 14 as “determining whether to skip to the beginning of the current
`program segment or the beginning of the previous program segment based
`on the amount of time that has lapsed since the beginning of the current
`program segment.” That description remains consistent with our
`interpretation of claims 5, 6, and 14 as stated at pages 11–15 of the Final
`Written Decision.
`C. INAZAWA COMPARED TO CLAIMS 5, 6, AND 14
`Many of Petitioner’s arguments that Inazawa describes the claimed
`skip back algorithm depend upon one or the other argued changes to our
`interpretation of the meaning of the claimed algorithm. See Reh’g Req. 5
`(“Because claims 5, 6, and 14 do not preclude multiple button presses in the
`‘skip back algorithm,’ . . . the Board should not have dismissed Inazawa’s
`teachings due to an initial press of the program selecting key 11.”), 9–11
`(depending upon argued change in meaning of “predetermined amount of
`time”). Because we do not alter our interpretation of the claimed skip back
`algorithm, we are not persuaded by these arguments.
`Nevertheless, Petitioner also argues that:
`even if the Board maintains its view that the claimed
`predetermined time cannot include Inazawa’s duration t2 in
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`which the optical head is moved to the beginning of the program
`segment, but instead is only an amount of time from the
`beginning of the currently playing audio program file, Inazawa
`still discloses the required functionality.
`Id. at 11. Petitioner contends that it explained the factual basis for its
`argument at the oral hearing. Id. at 11–12. More specifically, Petitioner
`argues that an ordinarily skilled artisan would have understood that after
`Inazawa’s time period t2 (representing the time needed to move Inazawa’s
`optical head) expires, audio would begin playing. Id. (citing Ex. 1002
`¶ 112).4 Petitioner contends that the time period represented in Inazawa as
`t2-t3 (i.e, the duration of time elapsing between times t2 and t3) would
`constitute a predetermined amount of time measured from the beginning of
`playback. Id. at 12–13. Petitioner argues that because pressing a back
`button after expiration of the t2-t3 time period causes a skip backward to the
`currently playing program, Inazawa describes the skip back algorithm of
`claims 5, 6, and 14. Id. at 13.
`
`
`4 Petitioner also alleges that it cited supporting evidence for this proposition
`in its Reply and in the Petition. Reh’g Req. 12. Petitioner contends that it
`cites pages 107–10 and 116–17 of Dr. Walker’s Declaration on page 13 of its
`Reply, but it does not. Rather, Petitioner cites pages 110 and 117–18, which
`address the prosecution history of claims 5, 6, and 14, but do not address
`how an ordinarily skilled artisan would have understood the operation of
`Inazawa. Petitioner also alleges that it cites evidence supporting its
`contention about Inazawa’s operation on page 46 of the Petition, where it
`cites, among other evidence, ¶ 112 of Dr. Walker’s Declaration, which does
`address how Inazawa operates. Reh’g Req. 12 (citing Ex. 1002 ¶ 112);
`Pet. 46 (citing Ex. 1002 ¶ 112). Petitioner’s argument that Inazawa’s time
`period t2-t3 represents a measure of time from the beginning of playback was
`not, however, presented in the Petition or in the Reply.
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`Petitioner’s argument is unpersuasive for at least two reasons. First,
`Petitioner’s argument is not properly before us because it was proffered for
`the first time at the oral hearing, Tr. 29:25–30:9, 82:21–83:6, and then
`reiterated in the Request for Rehearing, Reh’g Req. 11–13. See 37 C.F.R.
`§ 42.70(a) (“A party may request oral argument on an issue raised in a
`paper”); § 42.71(d) (“The request [for rehearing] must specifically identify
`. . . the place where each matter was previously addressed in a motion, an
`opposition, or a reply.”). Petitioner argues that we should consider its
`argument even though it was newly raised at oral hearing because Patent
`Owner also argued for the first time at oral hearing that the “predetermined
`amount of time” of claims 5, 6, and 14 was an amount of time measured
`from the beginning of playback. Reh’g Req. 11 (arguing that Patent Owner
`Response at 41–51 did not contain this argument). Petitioner contends,
`without citing authority, that we “must allow [Petitioner] to respond as a
`matter of fairness and due process.” Id. Petitioner’s argument is
`unpersuasive because Patent Owner sufficiently argued in the Patent Owner
`Response that the “predetermined amount of time” is measured from the
`beginning of playback. Patent Owner repeatedly refers to comparing the
`amount of time the audio file has played to the predetermined amount of
`time for determining whether to skip to the beginning of the current or
`previous audio segment. E.g., PO Resp. 44 (“None 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.”), 46 (“Inazawa’s
`‘duration t3’ does not refer to the time audio file has played” and Inazawa
`does not describe “how long a current program segment has played, as
`claimed”). The amount of time an audio segment has played plainly refers
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`to time measured from the beginning of the playback. Petitioner had ample
`opportunity to address Patent Owner’s argument in its Reply.
`Second, even if we were to decide that Petitioner’s argument is
`properly before us now, Petitioner’s argument is unpersuasive on its merits.
`Petitioner’s argument presupposes that it is irrelevant that Inazawa only sets
`a reference point in time for tracking durations t2 and t3 when the user first
`presses the back button after playback has started. Inazawa’s system does
`not react to a first back button press as required by claim 5 because before
`Inazawa’s first button press, Inazawa does not measure any duration at all.
`Stated another way, Inazawa’s system always reacts to the initial press of its
`back button by restarting playback at the beginning of the currently playing
`track regardless of when that initial button press occurs. Ex. 1009, 6:17–60.
`Petitioner’s expert, Dr. Walker agrees as he explains in the following
`testimony:
`
`initially
`is
`the program selecting key 11
`When
`manipulated (producing the signal Ts illustrated in Fig. 2A), a
`reverse program selection mode is entered where: 1) a timer 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.
`* * *
`Using the program selecting key 11 once again while the
`program is playing and within the duration t3, would cause a skip
`backward to the beginning of the preceding program identified
`at address N-1, the previous track. But manipulating the program
`selecting key 11 when the duration t3 has expired would cause a
`skip to the beginning of the current audio program identified at
`address N, the current track.
`
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`Ex. 1002 ¶¶ 112–13 (citing Ex. 1009, 6:17–7:56) (internal citations omitted)
`(emphasis added). Essentially, Dr. Walker explains that Inazawa does not
`measure any durations of time until after a skip back button is pressed and
`that the first press of a back button always restarts playback from the
`beginning of the currently selected audio program.
`1. Claim 5
`Claim 5 requires monitoring the duration of playback from the
`beginning of playback and comparing that duration to a predetermined
`amount of time to evaluate how to respond to every issuance of a “skip
`backward program selection command.” Inazawa fails to meet this
`requirement for its first press of a back button, and meeting the requirement
`in connection with the second of two consecutive presses of a back button is
`insufficient to meet the claimed skip back algorithm.
`2. Claim 6
`Inazawa fails to describe the algorithm of claim 6, which depends
`from claim 5, for essentially the same reasons that it fails to describe the
`algorithm of claim 5. Additionally, claim 6 requires that one of two and
`only two responses occur to a skip backward command with the response
`being chosen based on when it occurs in relation to the predetermined
`amount of time. If the command is issued before the predetermined amount
`of time, playback skips to the beginning of the prior audio segment. If the
`command is issued after the predetermined amount of time, playback skips
`to the beginning of the current audio segment. The response to Inazawa’s
`first button press is insensitive to when that press occurs; Inazawa always
`responds to that press by restarting playback of the currently playing
`segment from the beginning. Before a first button press, Inazawa fails to
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`measure any time or compare any time to a predetermined time.
`Accordingly, in response to a first button press, Inazawa never skips to the
`previous audio segment as required of the algorithm of claim 6.
`3. Claim 14
`Claim 14, like claim 6, recites a skip back algorithm that restarts
`playback to either the beginning of the currently playing segment in
`response to a command issued after the predetermined amount of time or to
`the beginning of the prior segment in response to the same command issued
`before the predetermined amount of time. Inazawa fails to describe the skip
`back algorithm of claim 14 for the same reasons that it fails to describe the
`algorithm of claim 6.
`D. DEPENDENT CLAIMS 7, 8, 15–17, 28, AND 29
`Claims 7 and 8 depend ultimately from claim 6. Ex. 1001, 46:60–
`47:33. Claims 15–17, 28, and 29 depend ultimately from claim 14.
`Id. at 49:1–21, 50:41–61. Other than the arguments discussed above
`regarding claims 5, 6, and 14, Petitioner proffers no argument for reversing
`our prior determination that it has failed to establish that claims 7, 8, 15–17,
`28, and 29 are unpatentable. We find those arguments to be unpersuasive for
`the reasons discussed above. Accordingly, we see no reason to disturb our
`prior determination that these claims are not unpatentable.
`III. ORDER
`For the reasons given, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
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`PETITIONER:
`
`Matthew N. Nicholson
`Daniel M. De Vos
`Jeannine Yoo Sano
`Jason Xu
`Leon Miniovich
`NICHOLSON DE VOS WEBSTER & ELLIOTT LLP
`matt@nicholsondevos.com
`dan@nicholsondevos.com
`jsano@whitecase.com
`jxu@whitecase.com
`lminiovich@whitecase.com
`
`PATENT OWNER:
`
`Minghui Yang
`Greg Donahue
`DINOVO PRICE ELLWANGER & HARDY LLP
`myang@dpelaw.com
`gdonahue@dpelaw.com
`
`15
`
`