Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 28
`Entered: April 30, 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 IPR2017-00092
`Patent 9,124,717 B2
`____________
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 28
`Entered: April 30, 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 IPR2017-00092
`Patent 9,124,717 B2
`____________
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2017-00092
`Patent 9,124,717 B2
`
`
`I. INTRODUCTION
`
`
`
`Skky, LLC is the owner of U.S. Patent No. 9,124,717 B2 (“the ’717
`
`patent”). Facebook, Inc. and Instagram LLC (collectively “Facebook”) filed
`
`a Petition under 35 U.S.C. § 311(a), requesting inter partes review of claims
`
`1–6 of the ’717 patent. Paper 1 (“Pet.”). In a preliminary proceeding, we
`
`instituted inter partes review of claims 1–6 pursuant to 35 U.S.C. § 314(a).
`
`Paper 7 (“Inst. Dec.”).
`
`After institution, Skky filed a Patent Owner Response (Paper 17, “PO
`
`Resp.”), and Facebook followed with a Reply (Paper 18, “Pet. Reply”).
`
`Facebook also filed a Motion to Exclude certain of Skky’s exhibits (Paper
`
`22, “Mot.”), to which Skky filed an Opposition (Paper 23) and Facebook
`
`filed a Reply (Paper 25). A combined oral hearing with Cases
`
`IPR2017-00088, IPR2017-00089, and IPR2017-00097 was held on January
`
`11, 2018, and a transcript of the hearing is in the record (Paper 27, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`
`Written Decision pursuant to 35 U.S.C. § 318(a). For the reasons that
`
`follow, we determine that Facebook has shown by a preponderance of the
`
`evidence that claims 1–6 of the ’717 patent are unpatentable.
`
`A. Related Cases
`
`II. BACKGROUND
`
`The ’717 patent is the subject of an infringement action in Skky, LLC
`
`v. Facebook, Inc., No. 16-cv-00094 (D. Minn.), filed January 15, 2016.
`
`Also related to this proceeding are three other inter partes review (“IPR”)
`
`proceedings involving the same parties and several related patents:
`
`Case
`IPR2017-00088
`
`Related U.S. Patent
`U.S. Patent No. 9,124,718 B2
`
`2
`
`
`
`IPR2017-00092
`Patent 9,124,717 B2
`
`
`Case
`IPR2017-00089
`IPR2017-00097
`
`Related U.S. Patent
`U.S. Patent No. 9,118,693 B2
`U.S. Patent No. 8,892,465 B2
`
`Pet. 1–2; Paper 4, 2.
`
`Also noteworthy is an earlier proceeding, IPR2014-01236 (“the 1236
`
`IPR”), which involved U.S. Patent No. 7,548,875 B2, a parent of the ’717
`
`patent, and resulted in a final written decision holding certain claims
`
`unpatentable.1 There are also IPR proceedings pending before the Board,
`
`but with a different panel, involving other related patents on which trial was
`
`instituted:
`
`Case
`IPR2017-00550
`IPR2017-00602
`IPR2017-00685
`IPR2017-00687
`
`Related U.S. Patent
`U.S. Patent No. 9,037,502 B2
`U.S. Patent No. 9,219,810 B2
`U.S. Patent No. 9,203,870 B2
`U.S. Patent No. 9,215,310 B2
`
`
`
`Finally, the following covered business method (“CBM”) proceedings
`
`involving some of these patents, and yet another related patent, resulted in
`
`denials of review:
`
`Case
`CBM2016-00091
`CBM2017-00002
`CBM2017-00003
`CBM2017-00006
`CBM2017-00007
`
`Related U.S. Patent
`U.S. Patent No. 9,037,502 B2
`U.S. Patent No. 9,203,870 B2
`U.S. Patent No. 9,219,810 B2
`U.S. Patent No. 9,215,310 B2
`U.S. Patent No. 9,203,956 B2
`
`
`1 The Board’s final decision in the 1236 IPR was subsequently affirmed by
`the U.S. Court of Appeals for the Federal Circuit. Skky, Inc. v. MindGeek,
`s.a.r.l., 859 F.3d 1014 (Fed. Cir. 2017).
`
`3
`
`
`
`IPR2017-00092
`Patent 9,124,717 B2
`
`B. The ’717 Patent
`
`The ’717 patent discloses a “method of delivering an audio and/or
`
`visual media file,” such as a song or movie, “over the air wirelessly, from
`
`one or more servers to an electronic device,” such as a cell phone. Ex. 1001,
`
`Abstract, 1:63–2:25. The audio and/or visual files are delivered to the cell
`
`phone in “compressed format” for “playback . . . on demand by a user.” Id.,
`
`Abstract. The compressed files are transmitted using orthogonal frequency
`
`division multiplexing (OFDM) modulation. Id. at 16:63–17:6. 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 14:53–15:3,
`
`Fig. 3.
`
`C. The Challenged Claims
`
`Of the six challenged claims, two are independent—claims 1 and 4.
`
`Claim 1 recites:
`
`A method of wirelessly delivering at least one
`1.
`compressed digital audio and/or visual file to a cell phone over
`a cellular network, the method comprising:
`
`
`
`providing a website to the cell phone;
`
`
`
`wherein the website is associated with the at least one
`compressed digital audio and/or visual file, said compressed
`digital audio and/or visual files are stored on one or more
`servers;
`
`
`
`wherein the website includes a plurality of visual images
`associated with at least one compressed digital audio and/or
`
`4
`
`
`
`IPR2017-00092
`Patent 9,124,717 B2
`
`
`visual file for selection of at least one compressed digital audio
`and/or visual file;
`
`
`
`providing for the transmission of a representation of at
`least a portion of the compressed digital audio and/or visual
`files to the cell phone upon request, said cell phone having a
`digital signal processor and a receiver for receiving and
`processing compressed digital audio and/or visual files
`transmitted using orthogonal frequency division multiplex
`(OFDM) modulation;
`
`
`
`receiving a request from the cell phone selecting the at
`least one compressed digital audio and/or visual file based on
`the visual image; and
`
`
`
`providing for the streaming transmission of an encrypted
`copy of at least one compressed digital audio and/or visual file
`to the cell phone based on the received request using orthogonal
`frequency-division multiplex (OFDM) modulation over a
`cellular data connection.
`
`
`
`Ex. 1001, 33:2–28.
`
`D. The Instituted Grounds
`
`
`
`We instituted inter partes review of all the challenged claims on two
`
`grounds: first, that claims 1, 2, 4, and 5 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over the combination of Rolf,2 Forta,3 Gatherer,4
`
`Frodigh,5 and Gould,6 and, second, that claims 3 and 6 are unpatentable
`
`
`2 U.S. Patent No. 7,065,342 B1, iss. June 20, 2006 (Ex. 1003, “Rolf”).
`3 Ben Forta et al., WAP DEVELOPMENT WITH WML AND WMLSCRIPT: THE
`AUTHORITATIVE SOLUTION (Matt Purcell et al. eds., 2000) (Ex. 1004,
`“Forta”).
`4 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”).
`5 U.S. Patent No. 5,726,978, iss. Mar. 10, 1998 (Ex. 1006, “Frodigh”).
`6 U.S. Patent No. 6,693,236 B1, iss. Feb. 17, 2004 (Ex. 1062, “Gould”).
`
`5
`
`
`
`IPR2017-00092
`Patent 9,124,717 B2
`
`under 35 U.S.C. § 103(a) as obvious over the combination asserted in the
`
`first ground, plus Hacker.7 Inst. Dec. 17–18.
`
`A. Constitutionality of Inter Partes Review
`
`III. ANALYSIS
`
`As an initial matter, Skky argues that we should “vacate the institution
`
`decision” because inter partes review “unconstitutionally remove[s]
`
`adjudication of private patent rights from Article III courts” and eviscerates
`
`its Seventh Amendment right to a jury trial. PO Resp. 1–8. The United
`
`States Supreme Court recently held otherwise in Oil States Energy Services,
`
`LLC v. Greene’s Energy Group, LLC, -- S. Ct. --, 2018 WL 1914662, at *12
`
`(Apr. 24, 2018). Thus, we reject Skky’s arguments challenging the
`
`constitutionality of this proceeding.
`
`B. Claim Construction
`
`We afford claim terms in an unexpired patent their broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs., LLC v.
`
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the
`
`broadest reasonable interpretation standard). “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). Toward
`
`that end, our interpretation “‘cannot be divorced from the specification and
`
`the record evidence,’ and ‘must be consistent with the one that those skilled
`
`
`7 Scot Hacker, MP3: THE DEFINITIVE GUIDE (Simon Hayes ed., 2000)
`(Ex. 1058, “Hacker”).
`
`6
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`
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`IPR2017-00092
`Patent 9,124,717 B2
`
`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).
`
`Neither Facebook nor Skky proposed a construction of any claim
`
`terms in the preliminary proceeding, and we determined then that no claim
`
`terms required an express construction for purposes of institution. Inst.
`
`Dec. 5. Skky now requests, though, that we construe the term “processing”
`
`in claims 1 and 4 to mean “preparing a digital audio and/or visual file for
`
`storage in memory and playback.” PO Resp. 12. According to Skky, when
`
`properly construed, “processing” does not include “play back of the file”
`
`“because, according to the specification, it occurs after the file is processed.”
`
`Id. at 12–13 (citing Ex. 1001, 18:44–49). Facebook disputes Skky’s
`
`proposed construction as improperly limiting the challenged claims to a
`
`“single passage from the specification,” when “[o]ther portions of the
`
`specification make clear that the processing performed by the DSP (digital
`
`signal processor) 300 is not limited” to that sole passage. Reply 15–17
`
`(citing Ex. 1001, 18:43–49, 14:58–15:3) (emphasis omitted).
`
`The particular passage of the specification cited by Skky 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 (emphases added). We agree with Skky that this
`
`passage supports a construction of “processing” that includes preparing, i.e.,
`
`7
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`
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`IPR2017-00092
`Patent 9,124,717 B2
`
`demodulating, a digital audio file for storage in memory. Id. But, as
`
`Facebook points out, that is not the only description of “processing” in the
`
`specification. Reply 15–17. Elsewhere the specification describes
`
`“processing” as performing other functions:
`
`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 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 ’717 patent indicates that the term “processing” includes other
`
`functions, such as those directed to playback of the file. See id.
`
`Accordingly, consistent with the specification, the broadest reasonable
`
`interpretation of “processing” includes “preparing a digital audio and/or
`
`visual file for storage in memory and playback,” as Skky argues. We note
`
`that “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.1.a.
`
`Therefore, no further construction is necessary in order to resolve the
`
`parties’ disputes regarding the asserted grounds of unpatentability in this
`
`case. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`8
`
`
`
`IPR2017-00092
`Patent 9,124,717 B2
`
`(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, 2, 4, and 5 Over Rolf, Forta, Gatherer,
`Frodigh, and Gould
`
`
`
`Facebook asserts that the combination of Rolf, Forta, Gatherer,
`
`Frodigh, and Gould renders obvious claims 1, 2, 4, and 5 of the ’717 patent.
`
`Pet. 16–60. After considering the parties’ arguments and supporting
`
`evidence, we determine that Facebook has shown by a preponderance of the
`
`evidence that these claims are unpatentable as obvious over the asserted
`
`combination of references.
`
`1. Claim 1
`
`a. The Asserted References Collectively Teach All the Limitations of
`Claim 1
`
`Facebook provides a detailed explanation of how Rolf, Forta, Gould,
`
`Gatherer, and Frodigh collectively teach each limitation of claim 1, relying
`
`on the testimony of Dr. Lavin for additional support. Pet. 16–51; Ex. 1002
`
`¶¶ 71–144. Facebook relies on Rolf for the majority of the limitations of
`
`claim 1, and on Forta, Gould, Gatherer, and Frodigh for certain other
`
`limitations.
`
`Claim 18 begins with the preamble “[a] method of wirelessly
`
`delivering at least one compressed digital audio and/or visual file to a cell
`
`phone over a cellular network.” Rolf teaches “wirelessly transmitting
`
`encoded music, via a wireless communications link, to a portable or mobile
`
`communications device . . . such as a cellular telephone.” Ex. 1003, 1:17–
`
`
`8 Claim 1 was corrected in a certificate of correction dated March 15, 2016,
`to delete “said cell phone” in the preamble. Ex. 1001.
`
`9
`
`
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`IPR2017-00092
`Patent 9,124,717 B2
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`35; see also 5:18–25, 5:46–53. As described, the music is “transmitted in
`
`packets, and may particularly be encoded by a compression algorithm.” Id.
`
`at 1:35–38. Skky does not dispute Rolf’s disclosure of the preamble of
`
`claim 1.
`
`The first step of claim 1 recites “providing a website to the cell
`
`phone; wherein the website is associated with the at least one compressed
`
`digital audio and/or visual file, said compressed digital audio and/or visual
`
`files are stored on one or more servers.” Rolf teaches a “remote storage
`
`facility” with a database of music recording files that “has a uniform
`
`resource locator (URL) on a global communications network (such as the
`
`world-wide web).” Ex. 1003, 12:52–55; see also 5:30–39 (facility is located
`
`“at an address on the world wide web [that] includes a data base having a
`
`plurality of music recordings therein”). According to Rolf, the music
`
`recording files are “stored within data base memory . . . in an
`
`encoded/compressed manner.” Id. at 9:4–6; see also 10:40–42 (“the data is
`
`preferably compressed and encrypted”). Rolf further provides that a user
`
`can retrieve a compressed music recording file from the database via an
`
`“Internet link” for playback on a cell phone. Id. at 3:10–21. Skky does not
`
`dispute that Rolf teaches a website having a database of compressed music
`
`recording files, and instead focuses its arguments on Forta. See PO Resp.
`
`25–27.
`
`With respect to the limitation that the music recording files be “stored
`
`on one or more servers,” Rolf discloses that a cell phone user requests the
`
`music recording files “via a server.” Ex. 1003, 12:49–55. Rolf further
`
`explains that “a server address [is] associated with the remote central
`
`facility” and that the music recording file is “downloaded from a remote
`
`10
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`IPR2017-00092
`Patent 9,124,717 B2
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`server.” Id. at 3:11–12, 17:63–65, respectively; see also id. at 6:65–66
`
`(“informational data may be retained at the server which is sourcing the
`
`recording”). Skky does not address those express disclosures by Rolf (see
`
`PO Resp. 25–27), and we find that they demonstrate Rolf’s teaching of
`
`“providing a website” where “compressed digital audio and/or video file[s]”
`
`are “stored on one or more servers,” as required by claim 1.
`
`Alternatively, in the event that Skky contends “Rolf does not disclose
`
`specific details about the website,” Facebook relies on Forta for teaching the
`
`use of Wireless Application Protocol (“WAP”) to facilitate wireless
`
`communication between a cell phone and website server. Pet. 19–21. Forta
`
`explains that “WAP is the transport used to communicate between devices
`
`(phones initially, but other devices eventually) and servers.” Ex. 1004, 1;
`
`see also id. at 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.”).) In fact, Forta gives a specific example of how a cell
`
`phone may access a “Music” feature offered on “the Amazon.com site that is
`
`written explicitly for phones with a WAP browser in them.” Id. at 316, Fig.
`
`13.3. In Facebook’s asserted combination, Rolf’s cell phone uses the WAP
`
`feature taught by Forta for accessing the music database on Rolf’s website.
`
`Pet. 21–22; Ex. 1002 ¶¶ 79–83.
`
`Skky responds that Forta “does not disclose a website as contemplated
`
`by the [’717] 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. 25–26
`
`(citing Ex. 1004, 99–100). Further, according to Skky, Forta’s disclosure of
`
`WAP limits the amount of information that can be delivered to, and
`
`11
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`IPR2017-00092
`Patent 9,124,717 B2
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`displayed on, the cell phone “at one time.” Id. at 26 (quoting Ex. 1004, 107–
`
`108). Skky’s argument is not persuasive because claim 1 recites only
`
`“providing a website” of digital audio and/or visual files “for selection” on
`
`the cell phone. Similarly, the specification of the ’717 patent explains that
`
`“a website suitable for viewing and selecting . . . sound and/or image clips or
`
`entire files may be used.” Ex. 1001, 3:36–41. 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. As such, we find that the
`
`combination of Rolf and Forta teaches the step of “providing a website”
`
`where “compressed digital audio and/or visual files are stored on one or
`
`more servers,” as required by claim 1.
`
`Claim 1 further includes the limitation that “the website includes a
`
`plurality of visual images associated with at least one compressed digital
`
`audio and/or visual file for selection of at least one compressed digital audio
`
`and/or visual file.” In conjunction with this limitation, a later-recited step
`
`recites “receiving a request from the cell phone selecting the at least one
`
`compressed digital audio and/or visual file based on the visual image.”
`
`Facebook relies on Rolf for teaching the association of a visual image
`
`with a music recording file on a website and the selection of that file by a
`
`cell phone using the visual image (Pet. 26, 48–49), and turns to Forta and
`
`Gould for teaching the use of a plurality of visual images for selection of a
`
`music recording file on a cell phone (id. at 27–29, 48–49). We agree that
`
`those references teach the claim limitations directed to the use of “visual
`
`images” to select a music recording file for playback on a cell phone.
`
`12
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`IPR2017-00092
`Patent 9,124,717 B2
`
`
`To begin, Rolf discloses that the cell phone user selects a music
`
`recording for download via a “menu or listing of recordings” (Ex. 1003,
`
`9:11–15) and that “data indicative of that recording may be displayed on the
`
`display, and, additionally, a selected key on the wireless communications
`
`device may be pressed . . . to purchase the music recording” (id. at 3:64–
`
`4:3). As for the menu displayed on the phone, Roth explains that “the music
`
`recordings are categorized by a plurality of selectable fields, such as ‘title,’
`
`‘artist,’ ‘album or CD type,’ ‘recording label,’ etc.” Id. at 5:35–53
`
`(emphasis added). Indeed, those disclosures are similar to the ’717 patent’s
`
`disclosure of “allowing a user to select files” from “a screen display for
`
`providing a text listing of the names of songs or categories, according to
`
`hierarchical submenus.” Ex. 1001, 10:60–11:11.
`
`Nonetheless, with respect to “a plurality of visual images” being
`
`associated with the music recording files, Facebook acknowledges that “Rolf
`
`does not appear to disclose this limitation.” Pet. 27. As such, Facebook
`
`relies on Forta (Ex. 1004) and Gould (Ex. 1062) for teaching that limitation
`
`of claim 1. Pet. 26–33. In particular, as discussed above, Forta teaches a
`
`cell phone that includes a user interface, or display, for selecting and
`
`downloading “Music” from a website such as “Amazon.com.” Ex. 1004,
`
`316, Fig. 13.3. Forta further teaches associating each of a set of options with
`
`a visual “image,” or “icon,” that serves as a “selection mechanism” for
`
`conveying data from the website to the phone. Id. at 53, 128, 135–136, 316,
`
`Figs. 6.5, 13.3. Albeit somewhat redundant of Forta, Gould also teaches a
`
`user interface that includes a menu of icons, such as title, artist, album cover,
`
`and lyrics, for selecting and downloading a music recording. Ex. 1062, 5:4–
`
`60, Fig. 4. Those disclosures persuade us that the asserted combination of
`
`13
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`IPR2017-00092
`Patent 9,124,717 B2
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`Rolf, Forta, and Gould teaches associating “a plurality of visual images”
`
`with music recording files on a website and using those images to select one
`
`of the files from a cell phone, as required by claim 1. Skky does not dispute
`
`the teachings of Roth, Forta, and Gould, and instead faults Facebook for
`
`failing to provide a reason to combine their respective teachings (see PO
`
`Resp. 27–29), an argument that we address below. See infra Section
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`III.C.1.b.
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`The next step of claim 1 recites “providing for the transmission of a
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`representation of at least a portion of the compressed digital audio and/or
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`visual files to the cell phone upon request, said cell phone having a digital
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`signal processor and a receiver for receiving and processing . . . [the] files
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`transmitted using orthogonal frequency-division multiplex (OFDM)
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`modulation.” Facebook relies on the combination of Rolf, Gatherer, and
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`Frodigh for teaching this step. Pet. 33–48.
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`We begin with the limitation that the cell phone have “a digital signal
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`processor and a receiver.” Rolf teaches requesting a music recording file
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`from a remote database using a cell phone equipped with a “processor” and a
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`“transceiver.” Ex. 1003, 7:49–54, Fig. 4. Rolf further teaches that the cell
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`phone’s receiver and processor are configured for downloading and playing
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`music recording files. Id. at 1:28–35, 5:46–55. Although Rolf does not
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`disclose the specific type of processor, Facebook relies on Gatherer for
`
`teaching it was well-known to use DSPs in cell phones for receiving and
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`processing files. Pet. 35–36, 45–48.
`
`Gatherer recognizes that “[p]rogrammable digital signal processors
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`(DSPs) [were] pervasive in the wireless handset market for digital cellular
`
`telephony.” Ex. 1005, 84 (emphasis added); see also id., Fig. 1 (depicting
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`14
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`IPR2017-00092
`Patent 9,124,717 B2
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`“DSP functions” that include “Demodulator”). Indeed, Gatherer identifies
`
`specific DSPs already in use for wireless applications, such as the Lucent
`
`16000 series and the ADI21xx series. Id. at 86. Those DSPs, according to
`
`Gatherer, offer various advantages for use in cellular phones, including
`
`programmable flexibility and processing performance. Id. at 84–85. Based
`
`on those teachings by Gatherer, we are persuaded that Gatherer teaches the
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`DSP limitation and that a skilled artisan would have recognized the benefit
`
`of using a DSP as the specific type of processor in Rolf’s cell phone. Ex.
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`1002 ¶¶ 30–32, 114–118.
`
`For teaching that transmission from the website to the cell phone is
`
`done using OFDM modulation, as further required by claim 1, Facebook
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`relies on Frodigh, with supporting testimony from Dr. Lavian. Pet. 10–14,
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`39–40; Ex. 1002 ¶¶ 38–43, 121. As background, Dr. Lavian testifies that
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`“OFDM dates back as far as 1966,” and, by 2001, “was well-known [to]
`
`those skilled in the art.” Ex. 1002 ¶ 38. Not only was it well-known,
`
`according to Dr. Lavian, OFDM was the standard modulation technique for
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`“Wi-Fi” and other wireless applications, and its use in commercial cellular
`
`systems “was already underway.” Id. ¶¶ 40–43. We find Dr. Lavian’s
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`testimony credible, as it is supported by numerous citations to
`
`contemporaneous documents. See id.
`
`While Rolf may not describe the particular modulation technique
`
`underlying transmission of a music recording file to the cell phone, Frodigh
`
`recognizes that OFDM modulation “is particularly suited for cellular
`
`systems.” Ex. 1006, 1:59–2:18. Frodigh goes on to describe an OFDM
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`cellular system that transmits voice and data between a “base station” and a
`
`“mobile station,” both downlink and uplink. Id. at 7:51–63, Fig. 2. The
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`15
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`IPR2017-00092
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`mobile station, Frodigh explains, includes a “receiver” and “demodulator”
`
`for receiving data transmitted by OFDM modulation. Id. at 7:64–8:63.
`
`Those disclosures in Frodigh, as well as the testimony of Dr. Lavian,
`
`persuades us that the use of OFDM modulation in the transmission of digital
`
`information to cell phones was well-known at the relevant time. See Ex.
`
`1002 ¶¶ 38–43, 121. Thus, in Facebook’s asserted combination, Rolf’s cell
`
`phone incorporates Gatherer’s digital signal processor for receiving and
`
`processing digital music recording files transmitted by the well-known
`
`method of OFDM modulation taught by Frodigh.
`
`Skky responds that the cell phone in Rolf does not include a digital
`
`signal processor. PO Resp. 29–30 (citing Pet. 20, 26; Ex. 1002 ¶ 88).
`
`Skky’s argument is not persuasive because it focuses on Rolf individually,
`
`rather than the asserted combination of Rolf, Gatherer, and Frodigh
`
`proposed by Facebook. 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, Facebook relies on Rolf for teaching a cell phone equipped
`
`with a processor (Pet. 34–35), and Gatherer for teaching that a cell phone’s
`
`processor can be a digital signal processor (id. at 35–36, 45–48).
`
`Skky further argues that Rolf’s receiver and digital signal processor
`
`are not configured for “receiving and processing” files, as required by
`
`claim 1. PO Resp. 32–34. In particular, Skky contends that Facebook
`
`“rel[ies] only on Rolf’s ability to ‘play’ the music files it receives,” but “the
`
`processing referenced by the claims takes place prior to storing and
`
`subsequent playback of the file.” Id. at 32. We disagree. Under Skky’s
`
`own construction of the term “processing,” the asserted combination of Rolf,
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`16
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`IPR2017-00092
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`Gatherer, and Frodigh teaches that the digital signal processor is configured
`
`for receiving and processing files. Specifically, in support of its construction
`
`of the term “processing,” Skky points to the ’717 patent’s description that
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`the digital signal processor performs demodulation—“[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.” Ex. 1001,
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`18:43–49 (emphasis added); see also PO Resp. 12 (citing same). In that
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`regard, Gatherer teaches a digital signal processor that includes a
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`demodulator. Ex. 1005, 84, Fig. 1. Similarly, Frodigh teaches a receiver
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`that includes a demodulator. Ex. 1006, 8:33–38. Skky does not dispute that
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`Gatherer and Frodigh teach a cell phone having a receiver and digital signal
`
`processor for receiving compressed digital files over a wireless network and
`
`processing them by demodulation. See Tr. 37:11–19, 38:3–16. Thus, the
`
`record supports that the asserted combination of Rolf, Gatherer, and Frodigh
`
`teaches a receiver and digital signal processor configured to receive and
`
`process digital audio files transmitted by OFDM modulation, thereby
`
`meeting the “transmission” and “receiving and processing” limitations of
`
`claim 1. See Pet. 34–48.
`
`Skky also faults Facebook’s asserted combination because “Frodigh
`
`does not teach a system for requesting and transmitting audio and audio-
`
`visual data files.” PO Resp. 34. According to Skky, “[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). Skky’s argument, however, focuses on Frodigh alone,
`
`not Rolf, Gatherer, and Frodigh collectively. See Keller, 642 F.2d at 426.
`
`As discussed above, Rolf teaches requesting a music recording file from a
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`17
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`IPR2017-00092
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`remote database using a cell phone (Ex. 1003, 1:39–41, 5:49–53, 9:10–15),
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`and Frodigh teaches transmitting data to a cell phone using OFDM
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`modulation (Ex. 1006, 1:59–2:18, 7:51–8:63). Thus, Skky’s argument
`
`focusing on Frodigh alone is unavailing. The evidence shows that the
`
`asserted combination of Rolf, Gatherer, and Frodigh teaches the step of
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`“providing for the transmission” of a music recording file to a cell phone
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`using OFDM modulation and “receiving a request from the cell phone”
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`selecting the music recording file, as recited by claim 1.
`
`As a final step, claim 1 requires “providing for the streaming
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`transmission of an encrypted copy of at least one compressed digital audio
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`and/or visual files to the cell phone” using “OFDM” for the cellular
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`connection. Facebook relies on Rolf and Frodigh for this step. Pet. 49–51.
`
`Rolf teaches that, rather than being downloaded to the cell phone, “a music
`
`recording stored in [the] central facility [] . . . may be streamed” to the cell
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`phone. Ex. 1003, 6:20–30; see also id. at 3:26–38 (“encoded music may be
`
`streamed directly from its source”). And, as discussed above, Frodigh
`
`teaches using OFDM for transmission of data files to a cell phone. As for
`
`the transmission being “encrypted,” Rolf teaches that the music recording
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`file is “preferably compressed and encrypted such that subsequent decoding
`
`involves both decompression and de-encryption.” Ex. 1003, 10:40–42; see
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`also id. at 8:63–9:6 (“encode the music, according to any preferred
`
`encryption and/or compression algorithm . . . for transmission of the
`
`encoded recording(s) to the wireless communications device”). Skky
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`responds again that the references do not teach transmission by OFDM
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`because Facebook “do[es] not allege that Frodigh teaches streaming, and
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`appears to rely on Frodigh only for support for the use of OFDM.” PO
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`18
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`IPR2017-00092
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`Resp. 37. Skky’s argument is unpersuasive, for it again fails to address the
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`references collectively. Though Frodigh alone may not teach streaming by
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`OFDM modulation, Facebook relies on Rolf for teaching streaming a music
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`recording file to a cell phone, and Frodigh for teaching transmitting a music
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`recording file to a cell phone by OFDM modulation. Thus, we are
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`persuaded that Rolf and Frodigh together teach the “streaming” step.
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`In sum, we find that
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