Trials@uspto.gov
`571-272-7822
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`
`
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`Paper 29
`Entered: April 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00088
`Patent 9,124,718 B2
`_______________
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
`
`Paper 29
`Entered: April 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00088
`Patent 9,124,718 B2
`_______________
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2017-00088
`Patent 9,124,718 B2
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`INTRODUCTION
`I.
`Facebook, Inc. and Instagram LLC (“Petitioner”) filed a Petition
`(Paper 8, “Pet.”) requesting an inter partes review of claims 1–11 of U.S.
`Patent No. 9,124,718 B2 (Ex. 1001, “the ’718 patent”).1 Skky, LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to
`the Petition. On April 26, 2017, we instituted an inter partes review of
`claims 1–11 (“the challenged claims”) of the ’718 patent on the following
`grounds:
`Claims
`1, 3, 5, 6,
`and 8
`
`Applied References
`Statutory Basis
`35 U.S.C. § 103(a)2 Rolf, U.S. Patent No. 7,065,342 B1
`(filed Nov. 22, 2000, issued June 20,
`2006) (Ex. 1003, “Rolf”); Alan
`Gatherer et al., DSP-Based
`Architectures for Mobile
`Communications: Past, Present and
`Future, 38:1 IEEE COMMUNICATIONS
`MAGAZINE 84–90 (2000) (Ex. 1005,
`“Gatherer”); and Frodigh et al., U.S.
`Patent No. 5,726,978 (filed June 22,
`1996, issued Mar. 10, 1998) (Ex.
`1006, “Frodigh”)
`35 U.S.C. § 103(a) Rolf; Gatherer; Frodigh; and Ben
`Forta et al., WAP DEVELOPMENT WITH
`WML AND WMLSCRIPT: THE
`AUTHORITATIVE SOLUTION (Matt
`
`2, 7, 10,
`and 11
`
`
`1 We authorized Petitioner to add a clarifying statement to the original
`petition (Paper 2) regarding claim 8. Paper 7, 2–4; see Pet. 40.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective on
`March 16, 2013. Id. at § 3(n). Because the challenged claims of the ’718
`patent have an effective filing date before March 16, 2013, any citations
`herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
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`Statutory Basis
`
`Applied References
`Purcell et al. eds., 2000) (Ex. 1004,
`“Forta”)
`35 U.S.C. § 103(a) Rolf; Gatherer; Frodigh; and Scot
`Hacker, MP3: THE DEFINITIVE GUIDE
`(Simon Hayes et al. eds., 2000) (Ex.
`1058, “Hacker”)
`
`Claims
`
`4 and 9
`
`Paper 9 (“Dec. on Inst.”), 18.
`After institution, Patent Owner filed a Response (Paper 19, “PO
`Resp.”) to the Petition, and Petitioner filed a Reply (Paper 20, “Pet. Reply”)
`to the Response. An oral hearing was held on January 11, 2018, and a
`transcript of the hearing is included in the record. Paper 28 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`For the reasons set forth below, Petitioner has shown by a preponderance of
`the evidence that claims 1–11 of the ’718 patent are unpatentable.
`A.
`Related Proceedings
`The parties indicate that the ’718 patent is at issue in the following
`district court case: Skky, LLC v. Facebook, Inc., No. 0:16-cv-00094 (D.
`Minn.). Pet. 1; Paper 4, 2. The parties also indicate that the following
`petitions for inter partes review or covered business method review are
`related to this case:
`Case No.
`IPR2014-012363
`IPR2017-00089
`IPR2017-00092
`IPR2017-00097
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`3 The U.S. Court of Appeals for the Federal Circuit affirmed the Board’s
`decision in IPR2014-01236, finding claims 1–3, 5, and 15–23 of U.S. Patent
`No. 7,548,875 B2 unpatentable. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d
`1014, 1016 (Fed. Cir. 2017).
`
`Involved U.S. Patent No.
`U.S. Patent No. 7,548,875
`U.S. Patent No. 9,118,693
`U.S. Patent No. 9,124,717
`U.S. Patent No. 8,892,465
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`U.S. Patent No. 9,037,502
`IPR2017-00550
`U.S. Patent No. 9,219,810
`IPR2017-00602
`U.S. Patent No. 9,203,870
`IPR2017-00685
`U.S. Patent No. 9,215,310
`IPR2017-00687
`U.S. Patent No. 9,037,502
`CBM2016-00091
`U.S. Patent No. 9,203,870
`CBM2017-00002
`U.S. Patent No. 9,219,810
`CBM2017-00003
`U.S. Patent No. 9,215,310
`CBM2017-00006
`U.S. Patent No. 9,203,956
`CBM2017-00007
`Pet. 1–2; Paper 4, 2. Petitioner filed a second petition challenging claims 1–
`11 of the ’718 patent in IPR2017-00689, and we denied institution of an
`inter partes review in that case. Facebook, Inc. v. Skky, LLC, Case
`IPR2017-00689, slip op. at 8 (PTAB July 26, 2017) (Paper 9).
`B.
`The ’718 Patent
`The ’718 patent relates to delivering an audio or audio-visual file to an
`electronic device. Ex. 1001, Abstract. Specifically, the ’718 patent explains
`that the audio or audio-visual file is delivered wirelessly from one or more
`servers to the electronic device. Id. According to the ’718 patent, the file is
`transmitted in a compressed format, and the electronic device is able to
`receive and playback the file on demand by a user. Id.
`C.
`Illustrative Claim
`Claims 1, 6, and 10 are independent. Claim 1 is reproduced below.
`1. A method of wirelessly delivering compressed digital
`audio or audio-visual data file to a cell phone, the method
`comprising:
`providing a compressed digital audio or audio-visual data
`file for access over the Internet;
`receiving a request from the cell phone, said cell phone
`including a receiver and digital signal processor configured for
`receiving and processing files transmitted by orthogonal
`frequency-division multiplex modulation (OFDM); and
`
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`providing for the transmission of the compressed digital
`audio or audio-visual data file to the cell phone by orthogonal
`frequency-division multiplex modulation based on the received
`request, wherein the transmission of the compressed digital
`audio or audio-visual data file is by a cellular data channel.
`Ex. 1001, 33:2–17.
`
`II. ANALYSIS
`A.
`Level of Ordinary Skill in the Art
`Petitioner’s declarant, Tal Lavian, Ph.D., states that a person of
`ordinary skill in the art would have had “at least a bachelor’s degree in
`computer science, computer engineering, or electrical engineering (or
`equivalent degree or experience) with at least four years of experience with
`wireless communications systems and at least two years of experience with
`the communication of digital media.” Ex. 1002 ¶ 15. Patent Owner does
`not provide its own definition of the level of ordinary skill in the art. Patent
`Owner also does not dispute Dr. Lavian’s definition. Based on the evidence
`of record, including the types of problems and solutions described in the
`’718 patent and the asserted prior art, we agree with and adopt Dr. Lavian’s
`definition of the level of ordinary skill in the art. Id. ¶¶ 15–17.
`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). “Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” TriVascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). An applicant may
`provide a different definition of the term in the specification with reasonable
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`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). In the absence of such a definition, limitations are not to
`be read into the claims from the specification. In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993).
`1.
`“processing”
`Patent Owner proposes construing the term “processing” to mean
`“preparing a digital audio and/or visual file for storage in memory and
`playback.” PO Resp. 12. Further, according to Patent Owner, when
`“properly construed, processing does not include playing [a] file.” Id. at 27.
`Patent Owner argues that its proposed construction is supported by the
`specification of the ’718 patent and certain extrinsic evidence. Id. at 12–13
`(citing Ex. 1001, 18:44–49; Ex. 2001, 16, 46, 50, 68). Petitioner contends
`that Patent Owner’s proposed construction improperly limits the challenged
`claims based on a single passage in the specification of the ’718 patent. Pet.
`Reply 10–12 (citing Ex. 1001, 18:43–49, 14:58–15:3).
`The portion of the ’718 patent cited by Patent Owner states that “[t]he
`sounds . . . are processed by the DSP (digital signal processor-
`‘demodulated’) 300 to the same digital data form initially stored on the
`database 212 (e.g., in MPEG audio format),” and, “[i]n this form, the sound
`clip data are written into the flash memory 302 of the device 204.” Ex.
`1001, 18:43–49. This portion of the ’718 patent indicates that the term
`“processing” includes preparing a digital audio file for storage in memory.
`Id. However, as Petitioner points out, that is not the only description of
`processing in the ’718 patent. For example, the ’718 patent also states:
`The processor 300 executes the device firmware, provides
`control for all other blocks and performs the computational tasks
`for the board 203. The tasks performed by the processor 300
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`include control of the board’s units, monitoring of keys pressed
`by the user and processing of key-press events, reception of
`information from the computer through the computer digital
`interface, reception of caller ID information through the phone
`digital interface, reception of packed sound clips through the
`phone analogue or digital interface, unpacking and then playing
`back sound clips through a built-in speaker connected to the
`analogue interface of the accessory unit 204, support of a voice
`menu-driven user interface, and performance of other auxiliary
`functions.
`Id. at 14:58–15:3; see also id. at 14:26–32 (“a chip performing the same
`functions of the board may instead be embedded in the phone itself”). This
`portion of the ’718 patent indicates that the term “processing” also includes
`other functions, such as functions directed to playback of the file. Id.
`For the foregoing reasons, we construe the term “processing” to
`include preparing a digital audio and/or visual file for storage in memory
`and playback. We note that the term “processing” may include other
`functions. However, as discussed below, the asserted prior art teaches
`preparing a digital audio and/or visual file for storage in memory and
`playback. See infra Section II.C.2. Therefore, we determine that further
`construction of the term “processing” is not necessary to resolve the parties’
`disputes regarding the asserted grounds of unpatentability in this case. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`C. Obviousness of Claims 1, 3, 5, 6, and 8 over Rolf, Gatherer,
`and Frodigh
`Petitioner argues that claims 1, 3, 5, 6, and 8 would have been obvious
`over Rolf, Gatherer, and Frodigh. Pet. 3. A claim is unpatentable as
`obvious under 35 U.S.C. § 103(a) if the differences between the claimed
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`subject matter and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which the subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) any objective indicia of non-obviousness. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`We have considered the parties’ arguments and supporting evidence,
`and we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1, 3, 5, 6, and 8 would have been obvious over Rolf,
`Gatherer, and Frodigh.
`1.
`Overview of Rolf, Gatherer, and Frodigh
`Rolf relates to “[a] mobile cellular telephone [that] is used to select a
`music recording from a remote source, such as [an] online music recording
`storage facility, and wirelessly receive the selected music recording.” Ex.
`1003, Abstract. Rolf teaches that the music recording storage facility is at an
`address on the World Wide Web and includes a database of music
`recordings files that are cataloged by selectable fields. Id. at 5:32–39. Rolf
`also teaches that a user may download or stream the music recording files
`from the database to a wireless device, such as a cellular phone, over the
`Internet. Id. at 3:17–21, 5:30–39, 5:49–53, 6:23–30.
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`Gatherer relates to digital signal processors (“DSPs”). Ex. 1005, 84.4
`Gatherer teaches that “[p]rogrammable DSPs [were] pervasive in the
`wireless handset market for digital cellular telephony.” Id. Gatherer also
`explains that “DSPs will continue to play a dominant, and in fact increasing,
`role in wireless communications devices.” Id.
`Frodigh relates to “[a] method and system of adaptive channel
`allocation in a frequency division multiplexed system.” Ex. 1006, Abstract.
`Frodigh teaches that frequency division multiplexing (“FDM”) is a method
`of transmitting data that is applicable to cellular systems, and that orthogonal
`frequency division multiplexing (“OFDM”) “is a particular method of FDM
`that is particularly suited for cellular systems.” Id. at 1:59–63. Specifically,
`Frodigh explains that using OFDM in a cellular system “results in efficient
`use of the bandwidth available to a system” and “has the effect of reducing
`intersymbol interference.” Id. at 2:38–60.
`2.
`Claim 1
`Claim 1 recites “[a] method of wirelessly delivering compressed
`digital audio or audio-visual data file to a cell phone.” Ex. 1001, 33:2–4.
`Rolf teaches wirelessly delivering music recording files that are encoded by
`a compression algorithm to a cellular phone. Pet. 15–16; Ex. 1003, 1:25–38,
`5:21–24, 5:46–53. Patent Owner does not dispute that the combination of
`Rolf, Gatherer, and Frodigh teaches the preamble of claim 1.
`Claim 1 recites “providing a compressed digital audio or audio-visual
`data file for access over the Internet.” Ex. 1001, 33:5–6. Rolf teaches a
`
`
`4 The parties cite to the original page numbers of Gatherer, rather than the
`page numbers Petitioner added when it filed Gatherer as Exhibit 1005 in this
`case. Thus, we also cite to the original page numbers of Gatherer.
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`remote storage facility with a database of compressed music recording files.
`Pet. 16–18; Ex. 1003, 5:30–39, 9:4–6. Rolf also teaches that a user can
`retrieve a compressed music recording file from the database to a wireless
`device, such as a cellular phone, over the Internet. Pet. 16–18; Ex. 1003,
`3:17–21, 5:30–39, 5:49–53. Patent Owner does not dispute that the
`combination of Rolf, Gatherer, and Frodigh teaches the above limitation of
`claim 1.
`Claim 1 recites “receiving a request from the cell phone, said cell
`phone including a receiver and digital signal processor configured for
`receiving and processing files transmitted by orthogonal frequency-division
`multiplex modulation (OFDM).” Ex. 1001, 33:7–11. Rolf teaches
`requesting a music recording file from a database at a remote storage facility
`using a cellular phone. Pet. 18–19; Ex. 1003, 1:39–41, 5:49–53, 9:10–15.
`Rolf also teaches that the cellular phone includes a receiver and processor
`configured for receiving and playing music recording files. Pet. 19–21, 23–
`24; Ex. 1002 ¶¶ 83, 91; Ex. 1003, 1:17–21, 1:28–35, 5:18–21, 5:46–53,
`6:20–26, 7:53–55, 10:43–47, Figs. 1, 4.
`Further, Gatherer teaches a cellular phone that includes a digital signal
`processor configured for receiving and processing files. Pet. 21, 29–32; Ex.
`1002 ¶¶ 85, 101–107; Ex. 1005, 84 (“Programmable digital signal
`processors (DSPs) are pervasive in the wireless handset market for digital
`cellular telephony.”), Fig. 1 (showing that “DSP functions” include a GSM
`vocoder, a channel codec, interleaving/deinterleaving,
`ciphering/deciphering, burst formatting, a demodulator, and an equalizer).
`Frodigh teaches using OFDM to transmit data to and from a cellular phone.
`Pet. 24–25; Ex. 1002 ¶ 92; Ex. 1006, 1:59–2:18, 7:51–8:9. In Petitioner’s
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`asserted combination, Rolf’s cellular phone includes Gatherer’s digital
`signal processor to receive and process compressed music recording files
`(Pet. 21; Ex. 1002 ¶ 86) transmitted from a remote storage facility using
`Frodigh’s OFDM (Pet. 25; Ex. 1002 ¶ 93).
`Patent Owner argues that Rolf does not teach a cellular phone
`including a digital signal processor. PO Resp. 23–24 (citing Pet. 20–21; Ex.
`1002 ¶ 84). Patent Owner’s argument is not persuasive because it addresses
`Rolf individually, not the combination of Rolf, Gatherer, and Frodigh
`proposed by Petitioner. See In re Keller, 642 F.2d 413, 426 (CCPA 1981)
`(“[O]ne cannot show non-obviousness by attacking references individually
`where, as here, the rejections are based on combinations of references.”). As
`discussed above, Rolf teaches a cellular phone with a processor, and
`Gatherer teaches more specifically a cellular phone with a processor that is a
`digital signal processor configured for receiving and processing files. Pet.
`21, 29–32; Ex. 1002 ¶¶ 85, 101–107; Ex. 1005, 84 (“Programmable digital
`signal processors (DSPs) are pervasive in the wireless handset market for
`digital cellular telephony.”), Fig. 1 (showing that “DSP functions” include
`GSM vocoder, channel codec, interleaving/deinterleaving,
`ciphering/deciphering, burst formatting, demodulator, and equalizer).
`Patent Owner argues that the combination of Rolf, Gatherer, and
`Frodigh also does not teach a cellular phone including a digital signal
`processor. PO Resp. 25–26. Specifically, Patent Owner contends that
`“Gatherer does not explain the relationship between a digital signal
`processor and the remaining parts of the cell phone, or how a digital signal
`processor would be integrated into the device disclosed by Rolf.” Id. at 25.
`Patent Owner’s argument is not persuasive. Figure 1 of Gatherer is a
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`functional block diagram of a cellular phone that shows the relationship
`between the digital signal processor and the other components of the cellular
`phone, and, thus, demonstrates how the digital signal processor would have
`been integrated into Rolf’s cellular phone.5 Pet. Reply 6–7; Ex. 1005, Fig.
`1.
`
`Patent Owner argues that Rolf does not disclose a receiver and digital
`signal processor configured for receiving and processing files. PO Resp.
`27–29. In particular, Patent Owner contends that “Petitioners rely only on
`Rolf’s ability to ‘play’ the music files it receives,” but when “properly
`construed, processing does not include playing the file.” Id. at 27. Patent
`Owner’s argument is not persuasive. Petitioner does not rely solely on Rolf
`as teaching a receiver and digital signal processor configured for receiving
`and processing files. Petitioner relies on the combination of Rolf, Gatherer,
`and Frodigh as teaching this limitation. Pet. 21, 28–32. Specifically,
`Gatherer teaches a digital signal processor configured for receiving and
`processing files (Pet. 21, 29–32; Ex. 1002 ¶¶ 85, 101–107; Ex. 1005, 84,
`Fig. 1), and Frodigh teaches a receiver configured for receiving and
`processing files transmitted by OFDM (Pet. 28–29; Ex. 1002 ¶¶ 92, 98–99;
`Ex. 1006, 7:51–8:9, 8:33–63, Fig. 3C). Patent Owner does not dispute in the
`Response that Gatherer and Frodigh teach a receiver and digital signal
`processor configured for receiving and processing files. See PO Resp. 27–
`29; Tr. 37:11–16, 38:3–16.
`
`
`5 As discussed below, a person of ordinary skill in the art would have been
`motivated to implement Rolf’s cellular phone using Gatherer’s digital signal
`processor. See infra Section II.C.7.
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`Further, the combination of Rolf, Gatherer, and Frodigh teaches a
`receiver and digital signal processor configured for receiving and processing
`files, even under Patent Owner’s proposed construction of the term
`“processing.” Specifically, the portion of the ’718 patent cited by Patent
`Owner in support of its proposed construction for the term “processing”
`indicates that a digital signal processor prepares a digital audio file for
`storage in memory and playback by performing demodulation. Ex. 1001,
`18:43–49 (“[t]he sounds . . . are processed by the DSP (digital signal
`processor-‘demodulated’) 300 to the same digital data form initially stored
`on the database 212”). In that regard, Gatherer teaches a digital signal
`processor that includes a demodulator. Ex. 1005, Fig. 1. Similarly, Frodigh
`teaches a receiver that includes a demodulator. Ex. 1006, 8:33–38. Thus,
`the combination of Rolf, Gatherer, and Frodigh teaches a receiver and digital
`signal processor configured for preparing a digital audio file transmitted by
`OFDM for storage in memory and playback.
`Patent Owner argues that “Frodigh does not teach a system for
`requesting and transmitting audio or audio-visual data files.” PO Resp. 29.
`According to Patent Owner, “[i]nstead, Frodigh teaches a method and
`system for allocating channels in an OFDM system to reduce the amount of
`interference between channels.” Id. (citing Ex. 1006, 4:26–31, 6:30–33).
`Patent Owner’s argument is not persuasive because it addresses Frodigh
`individually, not the combination of Rolf, Gatherer, and Frodigh proposed
`by Petitioner. See Keller, 642 F.2d at 426 (“[O]ne cannot show non-
`obviousness by attacking references individually where, as here, the
`rejections are based on combinations of references.”). As discussed above,
`Rolf teaches requesting a music recording file from a database in a remote
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`storage facility using a cellular phone (Pet. 18–19; Ex. 1003, 1:39–41, 5:49–
`53, 9:10–15), and Frodigh teaches using OFDM to transmit data to and from
`a cellular phone (Pet. 24–25; Ex. 1006, 1:59–2:18, 7:51–8:9).
`
`Claim 1 recites “providing for the transmission of the compressed
`digital audio or audio-visual data file to the cell phone by orthogonal
`frequency-division multiplex modulation based on the received request,
`wherein the transmission of the compressed digital audio or audio-visual
`data file is by a cellular data channel.” Ex. 1001, 33:12–17. Rolf teaches
`transmitting a compressed music recording file from a database to a cellular
`phone using a cellular data channel based on a user’s request. Pet. 32–33;
`Ex. 1003, 1:17–21, 1:25–28, 1:35–38, 3:17–21, 5:37–39, 5:46–53, 8:63–9:3.
`Frodigh teaches using OFDM to transmit data to and from a cellular phone.
`Pet. 33–34; Ex. 1006, 1:59–2:18, 7:51–8:9, 8:30–32. In Petitioner’s asserted
`combination, Rolf’s cellular phone receives a compressed music recording
`file that is transmitted using Frodigh’s OFDM. Pet. 25, 33; Ex. 1002 ¶ 93.
`Other than the arguments discussed previously, Patent Owner does not
`dispute that the combination of Rolf, Gatherer, and Frodigh teaches the
`above limitation of claim 1.
`3.
`Claim 3
`Claim 3 depends from claim 1, and recites “storing at least a portion
`of the compressed digital audio or audio-visual data file on the cell phone.”
`Ex. 1001, 33:20–22. Rolf teaches streaming a compressed music recording
`file through a buffer in a memory of a cellular phone. Pet. 34–36; Ex. 1003,
`6:26–30, Fig. 4. Other than the arguments discussed above for claim 1,
`Patent Owner does not dispute that the combination of Rolf, Gatherer, and
`Frodigh teaches the above limitation of claim 3. PO Resp. 33.
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`4.
`Claim 5
`Claim 5 depends from claim 1, and recites “wherein the compressed
`digital audio or audio-visual data file is attached to a library.” Ex. 1001,
`33:26–27. Rolf teaches cataloging and storing compressed music recording
`files in a database at a remote storage facility. Pet. 37; Ex. 1003, 5:32–37.
`Because the compressed music recording files in Rolf are cataloged and
`stored in the database, those files are attached to the database. Pet. 37; Ex.
`1002 ¶ 136. Rolf also teaches that the compressed music recording files
`include information pertaining to the address of the database at the remote
`storage facility. Pet. 37–38; Ex. 1003, 6:23–26, 10:8–11.
`Patent Owner responds that Petitioner provides no support for its
`contention that a “library is a database or that storing a file in a database
`means the file is attached to the database.” PO Resp. 34. According to
`Patent Owner, “a file need not be attached to a database.” Id. Patent Owner
`also argues that location information “does not mean those files are ‘attached
`to a library.’” Id. Patent Owner’s argument is not persuasive. Neither party
`proposes an express construction of the term “attached” or the term
`“library.” See Pet. 4; PO Resp. 11–13, 33–34. The ’718 patent states that
`“[a] library or collection of uniquely edited clips may be provided to the
`consumer for browsing and selecting files to be stored on the electronic
`device.” Ex. 1001, 5:24–26. This portion of the ’718 patent indicates that a
`library is a collection of cataloged and stored files. Id. Thus, the
`specification of the ’718 patent supports Petitioner’s position that the phrase
`“attached to a library” in claim 5 includes files that are cataloged and stored
`in a database (as in Rolf).
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`5.
`Claim 6
`Claim 6 recites limitations similar to those discussed above for
`claim 1. Ex. 1001, 33:28–42. Claim 6 further recites receiving a request
`from the cell phone “for the digital audio or audio-visual data file,” and
`providing for the “streaming” transmission of the compressed digital audio
`or audio-visual file to the cell phone by OFDM. Id. Rolf teaches requesting
`a compressed music recording file from a database at a remote storage
`facility using a cellular phone (Pet. 16–19, 38–39; Ex. 1003, 1:39–41, 5:30–
`53, 9:4–15), and streaming the requested music recording file to the cellular
`phone (Pet. 39–40; Ex. 1003, 6:20–30).
`Patent Owner responds that Petitioner does not address the limitation
`of claim 6 that recites receiving a request from the cell phone “for the digital
`audio or audio-visual data file.” PO Resp. 35. Patent Owner’s argument is
`not persuasive. For certain limitations of claim 6, Petitioner refers back to
`its analysis of claim 1. Pet. 39 (“the preamble and limitations [a]-[b] of
`claims 1 and 6 are not materially different for purposes of Ground 1”); see
`CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345–46 (Fed. Cir. 2017)
`(agreeing with the petitioner that it “incorporated [an] argument into other
`grounds of unpatentability . . . by direct citation to [the] argument in the
`petition”). In particular, for claim 1, Petitioner argues that “Rolf discloses
`providing access to a plurality of compressed digital audio or audio-visual
`data files.” Id. at 18–19 (emphasis added). Further, as discussed above,
`Rolf teaches requesting a compressed music recording file (i.e., a digital
`audio file) from a database at a remote storage facility using a cellular
`phone. Pet. 16–19, 38–39; Ex. 1003, 1:39–41, 5:30–53, 9:4–15.
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`6.
`Claim 8
`Claim 8 depends from claim 6, and recites “storing at least a portion
`of the compressed digital audio or audio-visual data file on the cell phone.”
`Ex. 1001, 34:1–3. In other words, claim 8 recites the same limitation as
`claim 3. Id. at 33:20–22. As discussed above, Rolf teaches streaming a
`compressed music recording file through a buffer in a memory of a cellular
`phone. Pet. 34–36, 40; Ex. 1003, 6:26–30, Fig. 4.
`Patent Owner responds that Petitioner “presents no argument
`regarding claim 8.” PO Resp. 35. Patent Owner’s argument is not
`persuasive. As discussed above, Petitioner explains specifically how Rolf
`teaches the limitation of claim 3. Pet. 34–36 (citing Ex. 1003, 6:26–30, Fig.
`4). Petitioner argues that claims 3 and 8 would have been obvious based on
`the same ground of unpatentability. Pet. 15 (“Claims 1, 3, 5, 6, 8 Are
`Obvious Over Rolf in View of Gatherer, and Frodigh”) (emphasis omitted);
`see also Ex. 1002 ¶¶ 143, 144 (stating that Dr. Lavian’s analysis for claim 3
`applies to claim 8). Further, the Petition states that Petitioner’s analysis for
`claim 3 applies to claim 8. Pet. 40.
`7.
`Reasons for Combining Rolf, Gatherer, and Frodigh
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the cited teachings of Rolf, Gatherer, and Frodigh.
`Pet. 21–23, 25–27 (citing Ex. 1002 ¶¶ 85–90, 93–95). We agree with and
`adopt Petitioner’s reasoning. Specifically, Rolf, Gatherer, and Frodigh relate
`to the same field of endeavor as the ’718 patent, that is, wireless
`communication. Pet. 21–23, 25–27; Ex. 1001, 1:19–21; Ex. 1002 ¶¶ 86, 93;
`Ex. 1003, 1:17–21; Ex. 1005, 89 (“Audio and visual entertainment could be
`delivered wirelessly to mobile subscribers.”); Ex. 1006, 1:61–63, 7:58–59.
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`It would have been obvious to implement Rolf’s cellular phone using
`Gatherer’s digital signal processor because of the advantages offered by
`Gatherer’s digital signal processor, such as increased flexibility and
`processing power. Pet. 21–23; Ex. 1002 ¶¶ 87–90; Ex. 1005, 84 (“flexibility
`is becoming more of an issue, and therefore the programmability offered by
`DSPs is even more desirable”), 85 (“this has led to an increase in the fraction
`of the DSP MIPS used by something other than physical layer 1”). It would
`have been obvious to transmit compressed music recording files to Rolf’s
`cellular phone using Frodigh’s OFDM because of the advantages offered by
`Frodigh’s OFDM, such as increased efficiency and reduced interference.
`Pet. 25–27; Ex. 1002 ¶¶ 94–95; Ex. 1006, 2:38–60. Further, a person of
`ordinary skill in the art reasonably would have expected the asserted
`combination of Rolf, Gatherer, and Frodigh to work. Pet. 21–23, 25–27; Ex.
`1002 ¶¶ 90, 95.
`Patent Owner responds that a person of ordinary skill in the art would
`not have had reason to combine Rolf and Gatherer or a reasonable
`expectation that the combination would work. PO Resp. 26–27.
`Specifically, Patent Owner argues that Rolf relates to a third generation
`(“3G”) network, whereas Gatherer relates to a Global System for Mobile
`Communications (“GSM”), or second generation (“2G”), network. Id. at 26
`(citing Ex. 1003, 3:25; Ex. 1005, 4). According to Patent Owner, Gatherer
`indicates “that the application of GSM principles to 3G technology [was]
`‘debatable’ and [was] based on the assumption that 3G products will evolve
`similarly to GSM products.” PO Resp. 26 (citing Ex. 1005, 4). Thus, Patent
`Owner concludes that “a person of ordinary skill, armed with the knowledge
`of Gatherer, would not be motivated to apply GSM or 2G principles to 3G
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`knowing that the technologies could evolve in very different ways.” PO
`Resp. 26.
`Patent Owner’s argument is not persuasive. First, although Rolf states
`that encoded music data is “preferably” transmitted by a 3G network, Rolf is
`not limited to a 3G network. Ex. 1003, 3:21–25 (“the encoded music and/or
`informational data is preferably transmitted via a packet switch network, . . .
`such as by a next- or third-generation wireless communications network”
`(emphases added)). Rolf “must be considered for everything that it teaches,
`not simply the . . . preferred embodiment” that operates in a 3G network.
`See In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012).
`Se
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