Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Entered: March 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01749
`Patent 6,757,913 B2
`____________
`
`
`
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571.272.7822
`
`Paper 10
`Entered: March 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01749
`Patent 6,757,913 B2
`____________
`
`
`
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01749
`Patent 6,757,913 B2
`
`
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`
`requesting inter partes review of claims 1–4, 6–13, 20, and 22 of U.S. Patent
`
`No. 6,757,913 B2 (Ex. 1001, “the ’913 patent”). Digital Stream IP, LLC
`
`(“Patent Owner”) did not file a Preliminary Response. We have jurisdiction
`
`under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a),
`
`an inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” For the reasons that follow, we institute
`
`an inter partes review as to all challenged claims of the ’913 patent.
`
`
`
`I. BACKGROUND
`
`A. Related Proceedings
`
`The parties identify the following federal district court cases involving
`
`the ’913 patent: (1) Digital Stream IP LLC v. Nissan North America, Inc.,
`
`No. 2:16-cv-00698 (E.D. Tex.); (2) Digital Stream IP LLC v. General Motors
`
`LLC, No. 2:16-cv-00204 (E.D. Tex.); (3) Digital Stream IP LLC v.
`
`Mercedes-Benz USA, LLC, No. 2:16-cv-00981 (E.D. Tex.); and (4) Digital
`
`Stream IP LLC v. BMW of North America, LLC, No. 2:16-cv-00982 (E.D.
`
`Tex.). Pet. 1; Paper 5, 2.
`
`
`
`B. The ’913 patent
`
`The ’913 patent describes a system for local wireless transmission and
`
`reception of digital audio and program information. Ex. 1001, at [54], 4:67–
`
`5:1. Figure 1, which is reproduced below, illustrates such a system.
`
`
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`2
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`Patent 6,757,913 B2
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`In particular, Figure 1 is a schematic representation of a transmitter and
`
`receiver/tuner system. Id. at 3:48–50. Digital data distribution system 10
`
`outputs to transmitter 100 serial digital data stream 22, which contains a
`
`plurality of digital audio and program information signals. Id. at 4:16–20,
`
`5:1–5. The digital audio signal may represent music, while the program
`
`information signal may represent information about the composer, the track
`
`title, the artist, and the associated album. Id. at 2:60, 8:9–12. Transmitter 100
`
`converts the digital audio and program information signals into digital RF
`
`carrier frequencies and broadcasts them to multiple devices, including
`
`receiver/tuner 200. Id. at 5:5–12.
`
`An example of a receiver/tuner is shown in Figure 3, which is
`
`reproduced below.
`
`
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`3
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`IPR2016-01749
`Patent 6,757,913 B2
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`Figure 3 is a top plan view of a receiver/tuner. Id. at 3:54–56. A user can
`
`press the number keys to select one of the digital audio and program
`
`information channels transmitted by transmitter 100. Id. at 7:29–33. Once the
`
`user makes a selection, the receiver/tuner electronically outputs the selected
`
`audio and displays the corresponding program information for the selected
`
`audio track. Id. at 5:13–15.
`
`
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–4, 6–13, 20, and 22 of the ’913 patent.
`
`Claims 1 and 20 are independent. Claim 1 is illustrative of the claims under
`
`challenge:
`
`1. A wireless digital audio transceiver for receiving a locally
`broadcast digital audio signal wherein the digital audio signal
`comprises a plurality of carrier waves to carry digital audio data
`and audio program information, the transceiver comprising:
`
`a user interface to enable a user to select digital audio data
`from a plurality of digital audio data within the digital
`audio signal;
`
`a tuner operably coupled to the user interface to tune to a
`frequency associated with a carrier wave containing the
`selected digital audio data;
`
`a demodulator coupled to the tuner to extract the selected
`digital audio data and the audio program information from
`the carrier wave; and
`
`a digital to analog converter to convert the selected digital
`audio data into an analog signal and to send the analog
`signal to an output for playback to the user.
`
`
`
`4
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`IPR2016-01749
`Patent 6,757,913 B2
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`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1–4, 6–13, 20, and 22 of the ’913 patent
`
`on the following grounds. Pet. 3, 10–67.
`
`References
`Schotz1 and Rovira2
`Kostreski3 and Streck4
`
`Basis
`§ 103
`§ 103
`
`Claims Challenged
`1–3, 6–13, 20, and 22
`1, 2, 4, 6, 7, 9, and 10
`
`As additional support, Petitioner proffers the Declaration of Daniel J. Stark
`
`(Ex. 1006). See id.
`
`
`
`E. Claim Interpretation
`
`We construe claims in an unexpired patent by applying the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard). Under this standard, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`Petitioner provides a proposed interpretation of the claim term
`
`“transceiver.” Pet. 10. For purposes of this Decision, we conclude that no
`
`term requires express interpretation at this time to resolve any controversy in
`
`this proceeding.
`
`
`1 Schotz, U.S. Patent No. 5,491,839, issued Feb. 13, 1996 (Ex. 1002).
`2 Rovira, U.S. Patent No. 5,406,558, issued Apr. 11, 1995 (Ex. 1003).
`3 Kostreski, U.S. Patent No. 5,651,010, issued July 22, 1997 (Ex. 1004).
`4 Streck, U.S. Patent No. 5,101,499, issued Mar. 31, 1992 (Ex. 1005).
`
`5
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`IPR2016-01749
`Patent 6,757,913 B2
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`II. DISCUSSION
`
`A. Obviousness over Schotz and Rovira
`
`Petitioner asserts that claims 1–3, 6–13, 20, and 22 of the ’913 patent
`
`would have been obvious over Schotz and Rovira. Pet. 10–45. For the
`
`reasons explained below, we are persuaded that Petitioner has demonstrated
`
`a reasonable likelihood of prevailing on its asserted ground.
`
`
`
`1. Schotz
`
`Schotz describes a transmitter/receiver system such as the one shown
`
`in Figure 1, which is reproduced below.
`
`
`
`Figure 1 shows a transmitter/receiver system with transmitter 4 and
`
`receiver 6. After receiving left and right audio signals from audio sources
`
`#1, #2, and #3, transmitter 4 transmits a combined audio signal to receiver 6.
`
`Ex. 1002, 3:50–52, 4:9–10. The combined audio signal is composed of three
`
`distinct channel carrier frequencies. Id. at 4:25–32. Schotz’s system
`
`provides for ten groups of three distinct carrier frequencies. Id. at 4:33–35,
`
`tbl.II. A user may select one of the ten groups by setting transmitter and
`
`6
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`
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`IPR2016-01749
`Patent 6,757,913 B2
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`receiver house code select switches 10, 16 to the same setting, and then
`
`further select one of the three carrier signals in that group by setting channel
`
`select switch 18. Id. at 4:36–41. Once the user completes a selection,
`
`receiver 6 processes the selected signal and converts it into the original
`
`audio source’s left and right audio signals. Id. at 4:43–47. Audio output
`
`connection 22 provides the user with left and right audio output of the
`
`selected channel. Id. at 4:9–11.
`
`
`
`2. Rovira
`
`Rovira describes a system for communicating program data signals
`
`that are combined with digital data signals. Ex. 1003, at [57] (Abstract).
`
`The system receives and compresses a plurality of digital audio signals,
`
`multiplexes them with program data signals such as title, track, artist, record
`
`label, and year, and then transmits the combined signals to a receiving
`
`station. Id. The receiving station demultiplexes the signals and sends them
`
`to a user’s digital music tuner. Id. The tuner further demultiplexes and
`
`decodes the signals so that the digital audio signals can be converted into
`
`analog signals and output for listening, while the corresponding program
`
`data signals are communicated to the user. Id.
`
`
`
`3. Analysis
`
`The preamble of claim 1 recites “[a] wireless digital audio transceiver
`
`for receiving a locally broadcast digital audio signal wherein the digital
`
`audio signal comprises a plurality of carrier waves to carry digital audio data
`
`and audio program information.” With respect to this recitation, Petitioner
`
`directs us to where Schotz describes a receiver 6 with an antenna 20, which
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`7
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`IPR2016-01749
`Patent 6,757,913 B2
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`receives a combined audio signal made up of three distinct channel carrier
`
`frequencies. Pet. 19–20 (citing Ex. 1002, 4:25–33, 4:36–48, Fig. 1); see also
`
`Ex. 1002, 5:5–11 (“the system may be modified for the purpose of replacing
`
`the costly wiring in a computer network system with the ability to transmit
`
`digital data signals over the air”). The signal may be a digital stereophonic
`
`audio signal. Pet. 20 (citing Ex. 1002, 5:1–4). While Petitioner shows that
`
`Schotz’s signal carries “audio data,” Petitioner does not indicate that the
`
`signal also carries “audio program information,” as required by claim 1. See
`
`id.; Ex. 1001, 9:66 (reciting both “audio data” and “audio program
`
`information” in the body of claim 1). For this limitation, Petitioner directs
`
`us instead to Rovira, which teaches providing digital audio signals from CD
`
`players along with program data such as title, track, artist, publisher,
`
`composer, song identification, and play time information blocks for each
`
`song on a CD. Pet. 20–21 (citing Ex. 1003, 4:55–58, 6:5–8).
`
`Claim 1 further recites that the transceiver comprises “a user interface
`
`to enable a user to select digital audio data from a plurality of digital audio
`
`data within the digital audio signal” as well as “a tuner operably coupled to
`
`the user interface to tune to a frequency associated with a carrier wave
`
`containing the selected digital audio data.” For these limitations, Petitioner
`
`identifies Schotz’s channel select switch 18 as a “user interface” and
`
`Schotz’s channel synthesizer as a “tuner.” Pet. 23–24 (citing Ex. 1002,
`
`4:39–42, 7:45–54, Fig. 1). Petitioner additionally identifies Rovira’s tuner
`
`110 as a “tuner.”
`
`Claim 1 further recites that the transceiver comprises “a demodulator
`
`coupled to the tuner to extract the selected digital audio data and the audio
`
`program information from the carrier wave.” For this limitation, Petitioner
`
`8
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`IPR2016-01749
`Patent 6,757,913 B2
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`identifies Schotz’s second user-selectable means as a “demodulator.”
`
`Pet. 26 (citing Ex. 1002, 2:53–57). Petitioner notes that “Schotz, however,
`
`does not explicitly disclose a demodulator coupled to the tuner to extract the
`
`audio program information from the carrier wave.” Id. Thus, Petitioner
`
`directs us to Rovira, which teaches providing demodulator 125 coupled to
`
`tuner 110. Id. (citing Ex. 1003, 8:27–33, Fig. 5).
`
`Lastly, claim 1 recites “a digital to analog converter to convert the
`
`selected digital audio data into an analog signal and to send the analog signal
`
`to an output for playback to the user.” For this limitation, Petitioner relies
`
`on Rovira, identifying digital to audio converter 160 as a “digital to analog
`
`converter.” Pet. 28 (citing Ex. 1003, 8:49–53).
`
`In addition to showing that Schotz and Rovira teach each of the claim
`
`limitations, Petitioner must provide “some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.” See
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us
`
`to Rovira’s teaching that “it is highly desirable to communicate program
`
`content information” because “having such information as music title,
`
`composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex.
`
`1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of
`
`customers, and possible loss of revenue due to subscription cancellation can
`
`occur if a subscriber has no method of knowing the title, composer or artist
`
`of the particular selection of music.”). Accordingly, Petitioner argues, it
`
`would have been obvious to modify Schotz’s system to incorporate a signal
`
`that includes both audio data and program data, as taught by Rovira. Pet. 17;
`
`see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify
`
`9
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`IPR2016-01749
`Patent 6,757,913 B2
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`Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and
`
`(2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23
`
`(“[T]his modification would result in Schotz’s user interface switch 18
`
`selecting the digital audio data . . . within the digital audio signal [of
`
`Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of
`
`Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based
`
`on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this
`
`already, i.e., tuning to a frequency associated with audio data.”); id. at 27
`
`(“[I]t would have been obvious to modify Schotz to utilize Rovira’s
`
`disclosed demodulator 125 to extract the selected digital audio data and the
`
`audio program information from the carrier wave, as taught by Rovira.”); id.
`
`at 28–29 (“It would have been obvious to modify Schotz to include the
`
`digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of
`
`Schotz would necessarily need a digital to analog converter when using the
`
`digital signals disclosed in Rovira so that the user can hear the selected
`
`music.”).
`
`Based on the record before us, at this stage of the proceeding, we are
`
`persuaded by Petitioner’s proffered reasoning for modifying Schotz’s system
`
`to include Rovira’s signal. See Kahn, 441 F.3d at 988. Moreover, “[a]
`
`person of ordinary skill is also a person of ordinary creativity, not an
`
`automaton,” and would, in light of modifying Schotz’s system to include
`
`Rovira’s signal, make any necessary additional modifications such that the
`
`various components of Schotz’s system could process appropriately Rovira’s
`
`signal. See KSR, 550 U.S. at 421.
`
`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
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`10
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`IPR2016-01749
`Patent 6,757,913 B2
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`claim 1 would have been obvious over Schotz and Rovira. Having reviewed
`
`Petitioner’s arguments asserting that independent claim 20 as well as
`
`dependent claims 2, 3, 6–13, and 22 would have been obvious over Schotz
`
`and Rovira, (see Pet. 29–39, 45), we also determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion as to
`
`these claims.
`
`
`
`B. Obviousness over Kostreski and Streck
`
`Petitioner asserts that claims 1, 2, 4, 6, 7, 9, and 10 of the ’913 patent
`
`would have been obvious over Kostreski and Streck. Pet. 46–67. For the
`
`reasons explained below, we are persuaded that Petitioner has demonstrated
`
`a reasonable likelihood of prevailing on its asserted ground.
`
`
`
`1. Kostreski
`
`Kostreski describes a system for distributing RF channels, each
`
`carrying a digital transport stream with data relating to multiple television
`
`programs. Ex. 1004, 1:6–12, 7:46–51. The programs contain audio, video,
`
`and closed captioning information. Id. at 7:52–54.
`
`A diagram of Kostreski’s system is shown in Figure 7, which is
`
`reproduced below.
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`11
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`IPR2016-01749
`Patent 6,757,913 B2
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`Figure 7 shows the functional elements of the system’s receiver portion,
`
`which may be located at a user’s home. Id. at 6:29–31, 12:60–61. Each of
`
`transmitters TX1 through TXN simultaneously broadcasts a combined ultra
`
`high frequency (UHF) signal containing all the RF channels to receiving
`
`antenna 31. Id. at 6:47–48, 13:4–13. Receiving antenna 31 supplies the
`
`combined signal to block downconverter 33, which converts the signal down
`
`to the video channel band. Id. at 13:28–32. Block downconverter 33
`
`supplies the down converted combined signal via a coaxial cable to one or
`
`more terminal devices 100, which are located at various places throughout
`
`the user’s home. Id. at 13:32–36. Each terminal device 100 includes an
`
`infrared receiver that responds to user input signals from a remote control
`
`device. Id. at 16:1–3. The user may input a command to select a broadcast
`
`program. See id. at 16:15–17. Once the user makes a selection, wireless
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`signal processor 35 processes the selected channel to recover the digital
`
`transport stream carried in that channel. Id. at 13:36–39. Digital signal
`
`processer 37 processes data packets for the selected program from the stream
`
`to produce signals to drive TV 100′. Id. at 13:40–42. TV 100′ presents the
`
`program to the user as a standard audio/visual output. Id. at 13:43–45.
`
`
`
`2. Streck
`
`Streck describes a wireless local television transmission system. Ex.
`
`1005, at [57] (Abstract). Streck’s system eliminates the necessity for any
`
`kind of physical interconnections, such as coaxial cables. Id. at 3:17–21; see
`
`id. at 1:39–45 (identifying problems arising from the use of coaxial cables).
`
`
`
`3. Analysis
`
`For claim 1, Petitioner relies primarily on Kostreski. See Pet. 55–64.
`
`For example, Petitioner identifies Kostreski’s terminal 100 as a
`
`“transceiver.” Id. at 57. Terminal 100 receives a signal containing multiple
`
`RF channels, each channel carrying digital data representing four programs.
`
`Id. (citing Ex. 1004, 9:57–58, 5:18–32, 13:31–33). The programs contain
`
`video and audio information, as well as data information for closed
`
`captioning. Id. at 58 (citing Ex. 1004, 7:52–54). Petitioner also identifies
`
`Kostreski’s infrared receiver 145 as a “user interface,” tuner 201 as a
`
`“tuner,” DEMOD as a “demodulator,” and each of digital to analog
`
`converters 135 as a “digital to analog converter.” Id. at 59–64; see also Ex.
`
`1004, Figs. 7–9.
`
`According to Petitioner, Kostreski’s terminal 100 is arguably not
`
`“wireless,” as recited in the preamble of claim 1. Pet. 55. Petitioner notes
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`that terminal 100 includes a wireless signal processor, but Petitioner also
`
`points out that Kostreski’s system uses a coaxial cable to deliver the signal.
`
`Id. at 52 (citing Ex. 1004, 13:32–39), 56 (citing Ex. 1004, Fig. 7). Thus, for
`
`the “wireless” limitation, Petitioner relies additionally on Streck, which
`
`provides a system for the wireless local broadcasting of video signals. Id. at
`
`52–56; Ex. 1005, 3:17–22 (cited at Pet. 53).
`
`As mentioned above, in addition to showing that Streck teaches a
`
`wireless system for broadcasting signals, Petitioner must provide “some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” See Kahn, 441 F.3d at 988; see also KSR, 550
`
`U.S. at 418. In that regard, Petitioner directs us to where Streck teaches that
`
`using a wired system can often result in a tangled web of coaxial cables
`
`connected between signal splitters, A-B switches, cable select boxes, VCRs,
`
`and TV sets. Pet. 52–53 (citing Ex. 1005, 1:38–50). Petitioner further
`
`argues that “one would have been motivated to implement the wireless
`
`teachings of Streck in the system of Kostreski” in order “to avoid needing to
`
`use coaxial cables to distribute the received signal to user devices located
`
`throughout the home.” Id. at 53, 55. Based on the record before us, at this
`
`stage of the proceeding, we are persuaded by Petitioner’s proffered
`
`reasoning for modifying Kostreski’s system to provide a wireless terminal
`
`100 based on Streck’s teachings. See Kahn, 441 F.3d at 988.
`
`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`claim 1 would have been obvious over Kostreski and Streck. Having
`
`reviewed Petitioner’s arguments asserting that dependent claims 2, 4, 6, 7, 9,
`
`and 10 would have been obvious over Kostreski and Streck, (see Pet. 64–
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`67), we also determine that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on its assertion as to these claims.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing that
`
`claims 1–4, 6–13, 20, and 22 of the ’913 patent are unpatentable. We have
`
`not, however, made a final determination with respect to the patentability of
`
`these claims.
`
`
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that inter partes review is instituted as to claims 1–4, 6–
`
`13, 20, and 22 of the ’913 patent based on the following grounds:
`
`A. Obviousness under 35 U.S.C. § 103 of claims 1–3, 6–13, and 22
`
`over Schotz and Rovira;
`
`B. Obviousness under 35 U.S.C. § 103 of claims 1, 2, 4, 6, 7, 9, and
`
`10 over Kostreski and Streck;
`
`FURTHER ORDERED that no other grounds of unpatentability are
`
`authorized for an inter partes review as to any claim of the ’913 patent; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`will commence on the entry date of this decision.
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`IPR2016-01749
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`PETITIONER:
`
`David Cavanaugh
`david.cavanaugh@wilmerhale.com
`
`Dan Williams
`daniel.williams@wilmerhale.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Tarek Fahmi
`tarek.fahmi@ascendalaw.com
`
`Jason LaBerteaux
`jason.laberteaux@ascendalaw.com
`
`
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