Trials@uspto.gov
`571-272-7822
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`
`
`Paper 27
`Entered: April 25, 2018
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`
`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 IPR2017-00089
`Patent 9,118,693 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`571-272-7822
`
`
`
`
`Paper 27
`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 IPR2017-00089
`Patent 9,118,693 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`IPR2017-00089
`Patent 9,118,693 B2
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`
`I. BACKGROUND
`Facebook, Inc. and Instagram LLC (collectively, “Petitioner”) filed a
`Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1–6 of
`U.S. Patent No. 9,118,693 B2 (Ex. 1001, “the ’693 patent”) pursuant to
`35 U.S.C. § 311(a). On April 26, 2017, we instituted an inter partes review
`of claims 1–6. Paper 7 (“Dec. on Inst.”). Patent Owner Skky, LLC
`subsequently filed a Patent Owner Response (Paper 17, “PO Resp.”) and
`Petitioner filed a Reply (Paper 18, “Reply”). Petitioner also filed a Motion
`to Exclude (Paper 22, “Mot.”) certain evidence submitted by Patent Owner,
`to which Patent Owner filed an Opposition (Paper 23) and Petitioner filed a
`Reply (Paper 25). A combined oral hearing with Cases IPR2017-00088,
`IPR2017-00092, and IPR2017-00097 was held on January 11, 2018, and a
`transcript of the hearing is included in the record (Paper 26, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–6 are unpatentable.
`
`
`A. The ’693 Patent1
`The ’693 patent discloses a “method of delivering an audio and/or
`visual media file . . . over the air wirelessly, from one or more servers to an
`electronic device,” such as a cell phone. Ex. 1001, Abstract. The electronic
`
`
`1 The petition in Case IPR2017-00690, involving the same parties and same
`patent, was denied. IPR2017-00690, Paper 11. Cases IPR2017-00088,
`IPR2017-00092, IPR2017-00097, IPR2017-00550, IPR2017-00602,
`IPR2017-00685, and IPR2017-00687 involve the same parties and related
`patents. See Pet. 1; Paper 4.
`
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`2
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`device can receive the file, in “compressed format,” and “playback said
`audio and/or visual content on demand by a user.” Id. The ’693 patent
`describes using an orthogonal frequency division multiplexing (OFDM)
`modulation scheme for transmitting the file. Id. at col. 16, l. 35–col. 17,
`l. 59, Fig. 5. The cell phone may include a digital signal processor (DSP),
`which “executes the device firmware, provides control for all other blocks
`and performs . . . computational tasks,” such as “reception of information
`from the computer through the computer digital interface, . . . reception of
`packed sound clips through the phone analogue or digital interface, [and]
`unpacking and then playing back sound clips through a built-in speaker.” Id.
`at col. 14, l. 53–col. 15, l. 3.
`
`
`B. Illustrative Claim
`Claim 1 of the ’693 patent recites:
`1. A method of wirelessly delivering a compressed digital
`audio or audio-visual data file to a cell phone, the method
`comprising:
`providing a website;
`wherein the website provides a plurality of the compressed
`digital audio or audio-visual data files;
`receiving a request from the cell phone for the compressed
`digital audio or audio-visual data file associated with the website,
`said cell phone including a receiver and digital signal processor
`configured for receiving and processing files transmitted by
`orthogonal frequency-division multiplex modulation; and
`providing for the streaming of the requested compressed
`digital audio or audio-visual data file to the cell phone by
`orthogonal frequency-division multiplex modulation based on
`the received request.
`
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`3
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`C. Prior Art
`The pending ground of unpatentability in the instant inter partes
`review is based on the following prior art:
`U.S. Patent No. 5,726,978, issued Mar. 10, 1998
`(Ex. 1006, “Frodigh”);
`U.S. Patent No. 7,065,342 B1, filed Nov. 22, 2000, issued
`June 20, 2006 (Ex. 1003, “Rolf”);
`Ben Forta et al., WAP DEVELOPMENT WITH WML AND
`WMLSCRIPT: THE AUTHORITATIVE SOLUTION (Matt Purcell et al.
`eds., 2000) (Ex. 1004, “Forta”); and
`Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE
`COMMUNICATIONS MAGAZINE 84–90 (Jan. 2000) (Ex. 1005,
`“Gatherer”).2
`
`
`D. Pending Ground of Unpatentability
`In the instant inter partes review, Petitioner challenges claims 1–6 as
`unpatentable over Rolf, Forta, Gatherer, and Frodigh under 35 U.S.C.
`§ 103(a).3
`
`
`
`
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`
`
`2 When citing Forta and Gatherer, we refer to the original page numbers of
`the references.
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’693 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103.
`4
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`II. ANALYSIS
`A. Claim Interpretation
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b). Under this standard, we interpret
`claim terms using “the broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of ordinary skill in the
`art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997); see In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)
`(“[The] broadest reasonable interpretation . . . is an interpretation that
`corresponds with what and how the inventor describes his invention in the
`specification.”). “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). Our interpretation “‘cannot
`be divorced from the specification and the record evidence,’ and ‘must be
`consistent with the one that those skilled in the art would reach.’ A
`construction that is ‘unreasonably broad’ and which does not ‘reasonably
`reflect the plain language and disclosure’ will not pass muster.” Microsoft
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations
`omitted), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872
`F.3d 1290 (Fed. Cir. 2017).
`The parties did not propose interpretations of any claim terms in their
`Petition and Preliminary Response (Paper 6), and we preliminarily
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`determined in the Decision on Institution, based on the record at the time,
`that no claim terms required interpretation. Dec. on Inst. 4–5.
`In their papers during trial, the parties dispute the interpretation of
`“processing” in independent claims 1, 3, and 5. Patent Owner argues that
`the term “processing” means “preparing a digital audio and/or visual file for
`storage in memory and playback.” PO Resp. 12. According to Patent
`Owner, when “properly construed, processing does not include playing [a]
`file.” Id. at 30. Patent Owner argues that its proposed interpretation is
`supported by the Specification of the ’693 patent and certain extrinsic
`evidence. Id. at 12–13 (citing Ex. 1001, col. 18, ll. 44–49; Ex. 2001, 16, 46,
`50, 68). Petitioner contends that Patent Owner’s proposed interpretation
`improperly limits the challenged claims based on a single passage in the
`Specification of the ’693 patent. Reply 13–14 (citing Ex. 1001, col. 18,
`ll. 43–49, col. 14, l. 58–col. 15, l. 3).
`The portion of the ’693 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, col. 18, ll. 43–49. This portion of the ’693 patent indicates that
`the term “processing” includes preparing a digital audio file for storage in
`memory. Id. The ’693 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
`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
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`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 col. 14, l. 58–col. 15, l. 3; see also id. at col. 14, ll. 26–32 (“a chip
`performing the same functions of the board may instead be embedded in the
`phone itself”). This portion of the ’693 patent indicates that the term
`“processing” also includes other functions, such as functions directed to
`playback of the file. See id.
`Accordingly, applying the broadest reasonable interpretation of the
`claims in light of the Specification, and taking into account the parties’
`arguments made during trial, we interpret 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.E.5. Therefore, we determine that further interpretation of
`the term “processing” is not necessary to resolve the parties’ disputes
`regarding the asserted ground of unpatentability in this case. See 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.”).
`
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`B. Constitutionality of Inter Partes Review
`As an initial matter, Patent Owner argues that we should “vacate the
`institution decision” because this inter partes review proceeding is
`unconstitutional. PO Resp. 2–8. The Supreme Court of the United States
`held in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`-- S. Ct. --, 2018 WL 1914662, at *12 (Apr. 24, 2018), that “inter partes
`review does not violate Article III or the Seventh Amendment” of the
`Constitution.
`
`
`C. Principles of Law
`To prevail in challenging claims 1–6 of the ’693 patent, Petitioner
`must demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`unpatentable for obviousness if, to one of ordinary skill in the pertinent art,
`“the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious
`at the time the invention was made.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The question of obviousness
`is resolved on the basis of underlying factual determinations, including “the
`scope and content of the prior art”; “differences between the prior art and the
`claims at issue”; and “the level of ordinary skill in the pertinent art.”4
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`
`
`4 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
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`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”).
`A motivation to combine the teachings of two references can be “found
`explicitly or implicitly in market forces; design incentives; the ‘interrelated
`teachings of multiple patents’; ‘any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent’; and the
`background knowledge, creativity, and common sense of the person of
`ordinary skill.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed.
`Cir. 2013) (citation omitted). Further, an assertion of obviousness “cannot
`be sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)); In re Nuvasive, Inc., 842 F.3d 1376, 1383
`(Fed. Cir. 2016) (a finding of a motivation to combine “must be supported
`by a ‘reasoned explanation’” (citation omitted)).
`
`
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
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`D. Level of Ordinary Skill in the Art
`Citing the testimony of its declarant, Tal Lavian, Ph.D., Petitioner
`argues that a person of ordinary skill in the art at the time of the ’693 patent
`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.” Pet. 10 n.2 (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not
`provide its own definition of the level of ordinary skill in the art or dispute
`Dr. Lavian’s definition. Based on the record developed during trial,
`including our review of the ’693 patent and the types of problems and
`solutions described in the ’693 patent and cited prior art, we agree with
`Dr. Lavian’s assessment of the level of ordinary skill in the art and apply it
`for purposes of this Decision.
`
`E. Obviousness Ground Based on Rolf, Forta, Gatherer, and Frodigh
`(Claims 1–6)
`1. Rolf
`Rolf discloses a “mobile cellular telephone . . . 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. “The received music recording is stored in a memory of the
`cellular telephone where it is available for playback with an audio player in
`the cellular telephone.” Id. Rolf discloses wireless communications device
`12 (e.g., a cell phone), which communicates with remote storage facility 14
`over a communications network. Id. at col. 5, ll. 18–32. Wireless
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`10
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`communications device 12 includes processor 20, memory 26, and
`transceiver 40. Id. at col. 7, ll. 49–67, Fig. 4. Remote storage facility 14
`“may, for example, be at an address on the world wide web, and includes a
`data base having a plurality of music recordings therein” that are categorized
`by user-selectable fields. Id. at col. 5, ll. 32–39. Rolf further discloses that
`“a music recording stored in central facility 14 . . . may be streamed to the
`wireless device 12 via an established communications link.” Id. at col. 6,
`ll. 23–26. “[D]ata packets are streamed through a buffer for play by a player
`each of which are in a memory 26, . . . such that, as one data packet is played
`within the buffer, and then exits the buffer, an additional data packet is
`streamed into the buffer.” Id. at col. 6, ll. 26–30.
`
`
`2. Forta
`Forta discloses the use of Wireless Application Protocol (WAP),
`“a communications protocol (based on HTTP [Hypertext Transfer Protocol])
`designed specifically for wireless communication” that is “the transport used
`to communicate between devices (phones initially, but other devices
`eventually) and servers.” Ex. 1004, 1. “WAP does for wireless devices
`what HTTP does for Web browsers—it allows them to become clients in an
`Internet-based client/server world.” Id. at 10. Forta provides a number of
`examples of WAP being used to provide data to cell phone users, such as
`Amazon.com providing a menu of “Books,” “Music,” and “DVD & Video.”
`Id. at 315–317, Fig. 13.3.
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`3. Gatherer
`Gatherer discloses that, by January 2000, “[p]rogrammable DSPs
`[were] pervasive in the wireless handset market for digital cellular
`telephony.” Ex. 1005, 84. Gatherer describes various advantages of
`programmable DSPs over other technologies of the time, such as
`“hard-wired application-specific integrated circuit (ASIC) techniques.” Id.
`at 84–85.
`
`
`4. Frodigh
`Frodigh describes a “method and system of adaptive channel
`allocation in a frequency division multiplexed system.” Ex. 1006, Abstract.
`Frodigh discloses that OFDM “is a particular method of FDM [frequency
`division multiplexing] that is particularly suited for cellular systems,”
`describes how OFDM works, and discloses various advantages of using
`OFDM in cellular systems. Id. at col. 1, l. 61–col. 2, l. 60.
`
`5. Claim 1
`a. Whether Rolf, Forta, Gatherer, and Frodigh Collectively Teach
`All of the Limitations of Claim 1
`Petitioner explains in detail how Rolf, Forta, Gatherer, and Frodigh5
`collectively teach every limitation of claim 1, relying on the testimony of
`Dr. Lavian as support. See Pet. 14–39; Ex. 1002 ¶¶ 65–113. Petitioner
`relies on Rolf for the majority of the limitations of claim 1, and relies on
`Forta, Gatherer, and Frodigh for certain limitations.
`
`
`5 Patent Owner in its Response does not dispute that Rolf, Forta, Gatherer,
`and Frodigh are prior art under 35 U.S.C. § 102. See Pet. 4–10.
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`Claim 1 recites “[a] method of wirelessly delivering a compressed
`digital audio or audio-visual data file to a cell phone.” Rolf teaches
`wirelessly delivering music recording files that are encoded by a
`compression algorithm to a cell phone. See Pet. 14–15; Ex. 1003, col. 1,
`ll. 25–38, col. 5, ll. 21–24, 46–53. Patent Owner does not dispute that the
`combination of Rolf, Forta, Gatherer, and Frodigh teaches the preamble of
`claim 1.
`Claim 1 further recites “providing a website” that “provides a plurality
`of the compressed digital audio or audio-visual data files.” Rolf teaches a
`remote storage facility with a database of compressed music recording files
`that “has a uniform resource locator (URL) on a global communications
`network (such as the world-wide web).” See Pet. 15–17, 21; Ex. 1003,
`col. 5, ll. 30–39, col. 9, ll. 4–6, col. 12, ll. 51–55. Rolf also teaches that a
`user can retrieve a compressed music recording file from the database to a
`wireless device, such as a cell phone, over the Internet. See Pet. 15–17, 21;
`Ex. 1003, col. 3, ll. 17–21, col. 5, ll. 30–39, 49–53.
`Because “Rolf does not disclose specific details about the website
`provided by [the] facility,” however, Petitioner relies on Forta as teaching
`“providing a website.” Pet. 17–19, 22–23. Forta teaches WAP, which
`allows a cell phone to access information provided by a website. See id.;
`Ex. 1004, 10 (“WAP does for wireless devices what HTTP does for Web
`browsers—it allows them to become clients in an Internet-based
`client/server world.”), 316 (“This is the Amazon.com site that is written
`explicitly for phones with a WAP browser in them.” (emphasis omitted)),
`Fig. 13.3 (“Music”). In Petitioner’s asserted combination, Rolf’s cell phone
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`uses WAP, as taught by Forta, to access a compressed music recording file
`provided by a website. See Pet. 19, 23; Ex. 1002 ¶¶ 75, 82.
`Patent Owner responds that Forta “does not disclose a website as
`contemplated by the [’693] patent” because it only teaches “simplified,
`menu based representations of a website viewable on cellular phones,”
`which “are not the same as a website viewed on a conventional computer.”
`PO Resp. 24–25 (citing Ex. 1004, 99–100). Further, according to Patent
`Owner, Forta’s WAP limits the amount of information that can be delivered
`to, and displayed on, the cell phone at one time. Id. (citing Ex. 1004,
`107–108). We disagree. Claim 1 only recites “providing a website” that
`provides the recited files. Similarly, the Specification of the ’693 patent
`explains that “a website suitable for viewing and selecting . . . sound and/or
`image clips or entire files may be used.” Ex. 1001, col. 3, ll. 36–41. Neither
`the claim language nor the Specification requires that the recited website be
`displayed in the same manner as a website on a conventional computer, or
`that the recited website provide a certain amount of information. We are
`persuaded that the combination of Rolf and Forta teaches the “providing a
`website” step of claim 1.
`Claim 1 further recites “receiving a request from the cell phone for the
`compressed digital audio or audio-visual data file associated with the
`website, said cell phone including a receiver and digital signal processor
`configured for receiving and processing files transmitted by orthogonal
`frequency-division multiplex modulation.” Rolf teaches requesting a music
`recording file from a database at a remote storage facility using a cell phone.
`See Pet. 24; Ex. 1003, col. 1, ll. 39–41, col. 5, ll. 49–53, col. 9, ll. 10–15.
`Rolf also teaches that the cell phone includes a receiver and processor
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`configured for receiving and playing music recording files. See Pet. 24–26;
`Ex. 1002 ¶¶ 84, 86; Ex. 1003, col. 1, ll. 17–21, 28–35, col. 5, ll. 18–21,
`46–53, col. 6, ll. 20–26, col. 7, ll. 53–55, col. 10, ll. 43–47, Figs. 1, 4.
`Further, Gatherer teaches a cell phone that includes a digital signal
`processor configured for receiving and processing files. See Pet. 26–27;
`Ex. 1002 ¶ 89; 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 Global System
`for Mobile Communications (“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 cell phone. See Pet. 29–30; Ex. 1002 ¶ 96; Ex. 1006,
`col. 1, l. 59–col. 2, l. 18, col. 7, l. 51–col. 8, l. 9. In Petitioner’s asserted
`combination, Rolf’s cell phone includes Gatherer’s digital signal processor
`to receive and process compressed music recording files, see Pet. 27;
`Ex. 1002 ¶ 90, transmitted from a remote storage facility using Frodigh’s
`OFDM, see Pet. 30; Ex. 1002 ¶ 97.
`Patent Owner argues that Rolf does not teach a cell phone including a
`digital signal processor. PO Resp. 27–28 (citing Pet. 20, 26; Ex. 1002 ¶ 88).
`We disagree with Patent Owner’s argument 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 cell phone with a processor and Gatherer
`teaches, more specifically, a cell phone with a processor that is a digital
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`signal processor configured for receiving and processing files. See Pet.
`26–27; Ex. 1002 ¶¶ 89–94; Ex. 1005, 84, Fig. 1.
`Patent Owner argues that the combination of Rolf, Gatherer, and
`Frodigh also does not teach a cell phone including a digital signal processor.
`PO Resp. 28–29. 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 28. We disagree.
`Figure 1 of Gatherer is a functional block diagram of a cell phone that shows
`the relationship between the digital signal processor and the other
`components of the cell phone, and, thus, demonstrates how the digital signal
`processor would have been integrated into Rolf’s cell phone. See Reply
`9–10; Ex. 1005, Fig. 1. Petitioner also provides sufficient reasoning as to
`why a person of ordinary skill in the art would have been motivated to do so.
`See infra Section II.E.5.b.
`Patent Owner argues that Rolf does not teach a receiver and digital
`signal processor configured for receiving and processing files. PO Resp.
`30–32. In particular, Patent Owner contends that “Petitioner[] rel[ies] 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 30. The
`combination of Rolf, Gatherer, and Frodigh asserted by Petitioner, however,
`teaches a receiver and digital signal processor configured for receiving and
`processing files. Specifically, Gatherer teaches a digital signal processor
`configured for receiving and processing files, see Pet. 24–27; Ex. 1002
`¶¶ 86, 88–94; Ex. 1005, 84, Fig. 1, and Frodigh teaches a receiver
`configured for receiving and processing files transmitted by OFDM, see
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`Pet. 29–30; Ex. 1002 ¶¶ 96–97; Ex. 1006, col. 7, l. 51–col. 8, l. 9, col. 8,
`ll. 33–63, Fig. 3C). Patent Owner does not dispute in its Response that
`Gatherer and Frodigh teach a receiver and digital signal processor
`configured for receiving and processing files. See PO Resp. 30–32;
`Tr. 37:11–16, 38:3–16.
`Further, the portion of the ’693 patent cited by Patent Owner in
`support of its proposed interpretation of 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, col. 18, ll. 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, col. 8, ll. 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. See Pet. 24–36.
`Patent Owner argues that “Frodigh does not teach a system for
`requesting and transmitting audio or audio-visual data files.” PO Resp.
`32–33. 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, col. 4,
`ll. 26–31, col. 6, ll. 30–33). We disagree with Patent Owner’s argument
`because it addresses Frodigh individually, not the combination of Rolf,
`Gatherer, and Frodigh proposed by Petitioner. See Keller, 642 F.2d at 426.
`As discussed above, Rolf teaches requesting a music recording file from a
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`database in a remote storage facility using a cell phone, see Pet. 21, 24;
`Ex. 1003, col. 1, ll. 39–41, col. 5, ll. 49–53, col. 9, ll. 10–15, and Frodigh
`teaches using OFDM to transmit data to and from a cell phone, see Pet.
`29–30; Ex. 1006, col 1, l. 59–col. 2, l. 18, col. 7, l. 51–col. 8, l. 9. We are
`persuaded that the combination of Rolf, Gatherer, and Frodigh teaches the
`“receiving a request” step of claim 1.
`Claim 1 further recites “providing for the streaming of the requested
`compressed digital audio or audio-visual data file to the cell phone by
`orthogonal frequency-division multiplex modulation based on the received
`request.” Rolf teaches streaming a compressed music recording file from a
`database to a cell phone using a cellular data channel based on a user’s
`request. See Pet. 38–39; Ex. 1003, col. 1, ll. 17–21, 25–28, 35–38, col. 3,
`ll. 17–21, col. 5, ll. 37–39, 46–53, col. 6, ll. 20–30, col. 8, l. 63–col. 9, l. 3.
`Frodigh teaches using OFDM to transmit data to and from a cell phone. See
`Pet. 29–30; Ex. 1006, col. 1, l. 59–col. 2, l. 18, col. 7, l. 51–col. 8, l. 9,
`col. 8, ll. 30–32. In Petitioner’s asserted combination, Rolf’s cell phone
`receives a compressed music recording file that is transmitted using
`Frodigh’s OFDM. See Pet. 29–30, 38–39; Ex. 1002 ¶¶ 97, 112–113. Patent
`Owner again argues that the references collectively do not teach
`transmission by OFDM. PO Resp. 35. We disagree for the reasons
`explained above, and are persuaded that the combination of Rolf and
`Frodigh teaches the “providing for the streaming” step of claim 1.
`We are persuaded, and we find, that Rolf, Forta, Gatherer, and
`Frodigh collectively teach every limitation of claim 1.
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`b. Whether a Person of Ordinary Skill in the Art Would Have Been
`Motivated to Combine Rolf, Forta, Gatherer, and Frodigh, and
`Would Have Had a Reasonable Expectation of Success in Doing So
`Petitioner explains in its Petition why a person of ordinary skill in the
`art would have been motivated to modify Rolf’s system, based on the
`disclosures of Forta, Gatherer, and Frodigh, in each of the three respects
`explained above, with supporting testimony from Dr. Lavian. See supra
`Section II.E.5.a; Pet. 19–21, 23, 27–32, 39; Ex. 1002 ¶¶ 75–78, 82–83,
`90–94, 97–111, 113. As explained herein, we agree with and adopt
`Petitioner’s reasoning.
`First, with respect to the step of “providing a website” that “provides a
`plurality of . . . compressed digital audio or audio-visual data files,”
`Petitioner argues that a person of ordinary skill in the art would have had
`reason to combine Forta’s teachings regarding the use of WAP to access
`websites from a cell phone with the teachings of Rolf, such that the remote
`storage facility in Rolf would provide a website using WAP. Pet. 19–21, 23.
`Petitioner contends that Rolf and Forta both relate to “wireless
`communication and computing” and “recognize that cell phones can be used
`as instruments of e-commerce.” Id. at 20–21 (citing Ex. 1002 ¶ 78;
`Ex. 1003, col. 6, l. 53–col. 7, l. 23, col. 14, ll. 35–53; Ex. 1004, 462).
`According to Petitioner and Dr. Lavian, “the advantages of using a widely
`adopted and standard technology such as WAP, including its interoperability
`with devices by multiple vendors and its suitability for mobile devices,”
`would have motivated a person of ordinary skill in the art to use the protocol
`in the system of Rolf. Id. at 19–20 (citing Ex. 1002 ¶¶ 75–77). These
`motivations are supported by specific statements in Forta itself. See i
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