Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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 IPR2017-00097
`Patent 8,892,465 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
`
`Paper 27
`
`Entered: April 30, 2018
`
`
`
`
`

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`IPR2017-00097
`Patent 8,892,465 B2
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`
`I. INTRODUCTION
`Skky, LLC is the owner of U.S. Patent No. 8,892,465 B2 (“the ’465
`
`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, 4–6, 8, and 9 of the ’465 patent. Paper 2 (“Pet.”). In a preliminary
`proceeding, we instituted inter partes review of all the challenged claims
`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 (Paper 22, “Mot.”) certain exhibits
`submitted by Skky, 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 IPR2017-00092 was held on January
`11, 2018, and a transcript of the hearing is in the record (Paper 26, “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, 4–6, 8, and 9 of the ’465 patent are unpatentable.
`II. BACKGROUND
`
`A. Related Cases
`The ’465 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 the following inter partes review (“IPR”)
`proceedings involving the same parties and several related patents:
`Case
`Related U.S. Patent
`IPR2017-00088
`U.S. Patent No. 9,124,718 B2
`IPR2017-00089
`U.S. Patent No. 9,118,693 B2
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`2
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`
`U.S. Patent No. 9,124,717 B2
`
`IPR2017-00092
`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:
`
`
`
`Related U.S. Patent
`Case
`U.S. Patent No. 9,037,502 B2
`IPR2017-00550
`U.S. Patent No. 9,219,810 B2
`IPR2017-00602
`U.S. Patent No. 9,203,870 B2
`IPR2017-00685
`U.S. Patent No. 9,215,310 B2
`IPR2017-00687
`Finally, the following covered business method (“CBM”) proceedings
`involving some of these same 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
`U.S. Patent No. 9,203,870
`U.S. Patent No. 9,219,810
`U.S. Patent No. 9,215,310
`U.S. Patent No. 9,203,956
`
`B. The ’465 Patent
`The ’465 patent discloses a system of “delivering an audio and/or
`visual media file,” such as a song or film, “over the air wirelessly, from one
`or more servers to an electronic device.” Ex. 1001, Abstract. The server is
`
`1 The Board’s final decision in the 1236 IPR was subsequently affirmed by
`the U.S. Court of Appeals for the Federal Circuit in Skky, Inc. v. MindGeek,
`s.a.r.l., 859 F.3d 1014 (Fed. Cir. 2017).
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`“accessible by way of a specialized website for viewing, selecting, sampling
`and downloading selected files or portions thereof or directly accessible
`without going through a website.” Id. at 5:3–8. The electronic device is
`described in terms of a “cell phone or other hand held device,” which
`through “a communication network can access the server either directly or
`through the website.” Id. at 5:8–11. 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 16:65–17:8. 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,” including “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 14:55–
`15:5, Fig. 3. The DSP also “demodulate[s]” sound clips to be “written into
`the flash memory [] of the device.” Id. at 18:47–53.
`C. The Challenged Claims
`Of the six challenged claims, two are independent—claims 1 and 9.
`Both claims are directed to a system for communicating digital media to a
`“wireless electronic device” (claim 1) or “wireless telephone” (claim 9).
`Claim 1 is illustrative:
`
`A digital media communication system, the system
`
`1.
`comprising:
`a server operably coupled to a database, the database
`including a plurality of digital media files, said server including
`a server digital signal processor and memory,
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`
`wherein the server digital signal processor is configured
`
`to,
`
`receive a non-optimized digital media file,
`optionally store the non-optimized digital media file
`in the database,
`optimize the non-optimized digital media file
`according to an optimization scheme,
`store the optimized digital media file in the
`database,
`receive a request for the digital media file, and
`cause a transmission of the requested optimized
`digital media file by synchronized orthogonal frequency-
`division multiplex modulation to a wireless electronic
`device, said device including a device digital signal
`processor configured to receive and process the optimized
`digital media file sent by synchronized orthogonal
`frequency-division multiplex modulation.
`Ex. 1001, 33:5–24
`D. The Instituted Grounds
`
`We instituted inter partes review of all the challenged claims on three
`grounds of obviousness under 35 U.S.C. § 103(a): first, that claims 1 and 8
`would have been obvious over the combination of Rolf,2 Frantz,3 Gilbert,4
`Frodigh,5 and Schmidl6; second, that claims 4–6 would have been obvious
`
`
`2 U.S. Patent No. 7,065,342 B1, iss. June 20, 2006 (Ex. 1003, “Rolf”).
`3 Gene Frantz, Digital Signal Processor Trends, 20:6 IEEEMICRO: CHIPS,
`SYSTEMS, SOFTWARE, AND APPLICATIONS 52–59 (Nov/Dec. 2000) (Ex. 1014,
`“Frantz”).
`4 U.S. Patent No. 6,560,577 B1, iss. May 6, 2003 (Ex. 1059, “Gilbert”).
`5 U.S. Patent No. 5,726,978, iss. Mar. 10, 1998 (Ex. 1006, “Frodigh”).
`6 U.S. Patent No. 5,732,113, iss. Mar. 24, 1998 (Ex. 1016, “Schmidl”).
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`over the same combination of references as the first ground, plus Forta7 and
`Gould8; and third, that claim 9 would have been obvious over the same
`combination of references as the first ground, less Schmidl. Inst. Dec. 4, 21.
`In further support of its grounds for unpatentability, Facebook relies on the
`Declaration of Tal Lavian, Ph.D. (Ex. 1002).9
`III. ANALYSIS
`A. Constitutionality of Inter Partes Review
`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
`
`
`7 Ben Forta et al., WAP DEVELOPMENT WITH WML AND WMLSCRIPT: THE
`AUTHORITATIVE SOLUTION (Matt Purcell et al. eds., 2000) (Ex. 1004,
`“Forta”) (citations are to original page numbers).
`8 U.S. Patent No. 6,693,236 B1, iss. Feb. 17, 2004 (Ex. 1062, “Gould”).
`9 Skky chose not to cross-examine Dr. Lavian, nor did it submit an expert
`declaration of its own in rebuttal of Dr. Lavian’s testimony.
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`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
`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).
`1. “non-optimized digital media file” and “content-rich digital
`media file”
`The parties begin by asking that we construe two claim terms—“non-
`optimized digital media file” from independent claims 1 and 9, and “content-
`rich digital media file” from claim 9 alone. Pet. 4–5; PO Resp. 12–14. In
`the preliminary proceeding, we determined that neither of those terms
`required an express construction for our application of the prior art. Inst.
`Dec. 5. We maintain that view, with one exception.
`As to the terms “optimized” and “non-optimized,” we note that the
`parties do not dispute that an “optimized” digital media file includes a file
`that has been compressed. For instance, Skky acknowledges that
`“optimization refers to compression.” PO Resp. 13. Indeed, dependent
`claim 3 of the ’465 patent recites that “the optimization scheme comprises
`. . . compressing the digital media file according to a compression scheme.”
`Ex. 1001, 33:32–34:2 (emphases added). Facebook likewise agrees that “an
`optimized digital media file is a file that has been compressed.” Pet. 5.
`Facebook’s expert, Dr. Lavian, adds that that “an optimized digital media
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`file is a file that has been compressed in order to reduce its size,” and
`“because the specification describes ‘optimization’ as compression, the
`negative term ‘non-optimized digital media file’ would be understood by a
`person of ordinary skill in the art as a ‘digital media file that has not
`undergone compression’.” Ex. 1002 ¶¶ 49–50; see also Pet. 5; Pet. Reply 6
`n.2. Thus, apart from noting that an “optimized” file may be a compressed
`file, and, conversely, that a “non-optimized” file may be a non-compressed
`file, we need not further construe those terms in order to resolve the parties’
`disputes over the asserted grounds 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.”).
`2. “process”
`Skky also requests that we construe a third term, “process,” as recited
`
`in independent claims 1 and 9. PO Resp. 14–16. According to Skky, the
`term “process” means “preparing a digital audio and/or visual file for storage
`in memory and playback.” Id. at 14. Skky contends that, when properly
`construed, “process” does not include “playback of the file” because
`“according to the specification, it occurs after the file is processed.” Id. at
`14–15 (citing Ex. 1001, 18:44–49). Facebook does not dispute Skky’s
`proposed construction of the term “process.” See Pet. 4–5; Pet. Reply. 1–20.
`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.”
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`Ex. 1001, 18:47–53 (emphasis added). We agree with Skky that this passage
`supports a construction of “process” that includes preparing, i.e.,
`demodulating, a digital audio file for storage in memory. That passage,
`however, is not the only description of the processor’s function in the
`specification. Elsewhere the specification describes the processor 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 14:60–15:5 (emphases added); see also id. at 14:30–32 (“a chip
`performing the same functions of the board may instead be embedded in the
`phone itself”).
`That portion of the ’465 patent specification indicates that the term
`“process” includes other functions, such as those directed to playback of the
`file. Accordingly, consistent with the specification, the broadest reasonable
`interpretation of the term “process” includes “preparing a digital audio
`and/or visual file for storage in memory and playback,” as Skky argues. We
`note that the term “process” may include other functions. However, as
`discussed below, the asserted prior art teaches a wireless device with a
`digital signal processor that prepares a compressed digital media file for
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`storage in memory and playback. See infra Section III.B.1.g. Therefore, no
`further construction is necessary in order to resolve the parties’ disputes
`regarding the asserted grounds in this case. See Vivid Techs., 200 F.3d at
`803.
`
`C. Obviousness of Claims 1 and 8 Over Rolf, Frantz, Gilbert, Frodigh, and
`Schmidl
`Facebook asserts that the combination of Rolf, Frantz, Gilbert,
`
`Frodigh, and Schmidl renders obvious claims 1 and 8 of the ’465 patent.
`Pet. 16–44. 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
`Facebook provides a detailed explanation of how Rolf, Frantz,
`Gilbert, Frodigh, and Schmidl collectively teach each limitation of claim 1.
`Pet. 16–20, 22–28, 32–33, 35–36, 38–41. In particular, Facebook relies on
`Rolf for the majority of the limitations of claim 1, and relies on Frantz,
`Gilbert, Frodigh, and Schmidl for certain other limitations. Id. Facebook
`also explains, with supporting testimony from its expert, Dr. Lavian, why a
`skilled artisan would have been led to modify Rolf’s system to incorporate
`the respective teachings of Frantz, Frodigh, Gilbert, and Schmidl to achieve
`the claimed invention, with a reasonable expectation of success in doing so.
`Pet. 20–22, 28–31, 33–35, 37–40, 42–43; Ex. 1002 ¶¶ 82–88, 99–106, 109–
`112, 114–116, 121–124, 127–129. We address each element of claim 1 as
`follows.
`
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`
`a. preamble
`Claim 1 begins with the preamble of “[a] digital media
`communication system.” Rolf teaches expressly “a system for transmitting
`encoded music from a remote, central facility to a wireless communications
`device, such as a cellular telephone or personal digital assistant.” Ex. 1003,
`1:25–38, Figs. 1, 4, 5 (depicting functional block diagram of Rolf’s system
`including a wireless communications device and central facility). Rolf
`further explains that the system’s “wireless communications device” is
`“[p]referably, . . . a digital, cellular communications device, and is portable
`and handheld.” Id. at 5:18–24. Rolf describes the “remote storage facility”
`as “having a plurality of music recordings therein.” Id. at 5:30–35.
`According to Rolf, the music recordings may be “digital music recording[s]”
`for playback on the wireless device. Id. at 17:39–40 (emphasis added).
`Those disclosures show that Rolf’s system is a “digital media
`communication system,” as required by the preamble of claim 1. Skky does
`not dispute that Rolf teaches the preamble of claim 1.
`b. “a server operably coupled to a database, the database including
`a plurality of digital media files”
`The first element of claim 1 is “a server operably coupled to a
`database” that includes “digital media files.” Facebook relies on Rolf as
`teaching this limitation. Pet. 17–19. Referring to the system diagram in
`Figure 1, Rolf explains that “the [central] facility 14 has a uniform resource
`locator (URL) on a global communications network (such as the world-wide
`web), and [wireless] device 12 accesses the facility 14 via a server.” Ex.
`1003, 12:49–55 (emphasis added). Rolf further explains that “a server
`address [is] associated with the remote central facility” and that the music
`recording is “downloaded from a remote server.” Id. at 3:10–16, 17:63–65;
`
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`see also id. at 6:65–66 (“informational data may be retained at the server
`which is sourcing the recording”). As for the “database” element of claim 1,
`Rolf discloses that the central server facility is “at an address on the world
`wide web, and includes a data base having a plurality of music recordings
`therein.” Id. at 5:30–35, Fig. 1. The music recordings, Rolf explains, are
`“stored within data base memory” and are “digitally encoded.” Id. at 8:54–
`9:6, 18:49–52, Fig. 5. Given those disclosures, we find that Rolf teaches a
`server that is operably coupled to a database of digital media files, as
`required by claim 1.
`Skky does not dispute that Rolf discloses a server, and instead argues
`that Rolf’s server is “in the communications network” and “not coupled to a
`database.” PO Resp. 28–30. The evidence indicates otherwise. Rolf states
`expressly that the “music recording [is] downloaded from a remote server.”
`Ex. 1003, 17:63–65 (emphasis added). Rolf further explains that
`“informational data may be retained at the server which is sourcing the
`recording.” Id. at 6:65–66 (emphasis added). And Dr. Lavian confirms that
`the server “sits within the ‘facility 14’” of Rolf’s system. Ex. 1002 ¶¶ 76–77
`(referencing Figs. 1, 5). Those disclosures, along with the testimony of Dr.
`Lavian, persuade us that Rolf’s server is part of the central storage facility,
`not part of the external communications network.
`c. “said server including a server digital signal processor and
`memory”
`Claim 1 requires that the server have “a server digital signal processor
`and memory.” For those elements, Facebook relies on the combined
`teachings of Rolf and Frantz. Pet. 19–20. Rolf discloses that “central
`facility 14 has a processor” that executes “processing instructions stored in a
`memory for encoding music recordings stored within data base memory 52.”
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`Ex. 1003, 8:56–63, Fig. 5. Because Rolf does not further define its
`processor, Facebook turns to Frantz for teaching specifically the use of DSPs
`in cellular phone systems. Pet. 20. Frantz, published approximately six
`months before the earliest possible priority date for the ’465 patent, states
`that “the entire digital wireless industry operates with DSP enabled handsets
`and base stations” and that “DSPs could provide intelligence for every
`system that transforms one kind of input to another kind of output.” Ex.
`1014, 52, 59 (emphasis added). And Frantz identifies a “[c]ellular phone
`baseband system,” in particular, as one such system. Id. at 58. Those
`disclosures persuade us that Rolf and Frantz together teach the “server
`digital signal processor and memory” elements of claim 1.
`As for a reason to combine Rolf and Frantz, Dr. Lavian testifies that a
`skilled artisan “would have immediately recognized that the server in Rolf
`performs processes that could have significantly benefitted from use of a
`DSP” and “would therefore have appreciated that including a specialized
`DSP in the central facility 14 of Rolf could expedite computationally-
`intensive encryption and compression operations, resulting in increased
`system performance by relieving the general purpose processor from having
`to perform these tasks,” while doing so at a relatively “low cost.” Ex. 1002
`¶¶ 83–86. Indeed, Frantz confirms that “[a]dvancements in digital signal
`processing technology are enabling its use for increasingly widespread
`applications.” Ex. 1014, 52. Thus, Dr. Lavian concludes that a skilled
`artisan “would have found the server in Rolf to be naturally combinable with
`the DSP disclosed in Frantz.” Ex. 1003 ¶ 88. We agree with that
`conclusion, as it is consistent with the teachings of Rolf and Frantz.
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`Frantz’s disclosure, along with Dr. Lavian’s credible testimony,
`persuades us that a skilled artisan would have recognized the benefit of
`utilizing DSPs in Rolf’s cellular phone system due to their advantages of
`increased system performance at low cost, as taught by Frantz. See Ex. 1002
`¶¶ 83–86. Also, given Dr. Lavian’s testimony that the incorporation of
`Frantz’s server DSP into Rolf’s system would have involved “no change in
`their respective functions, predictably resulting in a server that includes a
`server DSP,” we find that a skilled artisan would have had a reasonable
`expectation of success in combining Frantz with Rolf. Id. ¶ 82.
`Skky responds that Facebook fails to show how “Rolf . . . contains a
`digital signal processor.” PO Resp. 29–30. Skky’s argument is not
`persuasive for the simple reason that it fails to account for Facebook’s
`reliance on Frantz for teaching the use of DSPs in cellular phone systems, in
`combination with Rolf’s teaching of a processor in a cellular phone system.
`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 equipping a central storage facility in a “digital, cellular
`communications” system with a “processor,” and Frantz teaches equipping a
`base station in a “[c]ellular phone” system with a “digital signal processor.”
`Ex. 1003, 5:18–24, 8:56–63; Ex. 1014, 52, 58–59.
`Skky does not further dispute that a skilled artisan would have
`recognized the advantages of incorporating a DSP, as taught by Frantz, into
`the combination of a server, database, and processor taught by Rolf. See PO
`Resp. 19–20. Thus, as discussed above, the record evidence supports that
`Rolf and Frantz together teach “a server operably coupled to a database” of
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`“digital media files” that includes “a server digital signal processor and
`memory,” as required by claim 1, and a skilled artisan would have had a
`reason to combine those teachings in the manner asserted, with a reasonable
`expectation of success in doing so.
`d. “wherein the server digital signal processor is configured to,
`receive a non-optimized digital media file, . . . optimize the non-
`optimized digital media file according to an optimization scheme,
`[and] store the optimized digital media file in the database”
`
`Claim 1 recites that the server DSP is configured to “receive a non-
`optimized digital media file,” then “optimize [it] according to an
`optimization scheme,” and “store the optimized digital media file in the
`database.”10 As discussed above, both Facebook and Skky agree (and the
`’465 patent specification confirms) that optimization of a digital media file
`includes “compression” of the file. See supra Section III.B.1. And, as also
`discussed above, it follows, then, that a non-optimized digital media file
`encompasses, at least, a file that has not been compressed. Id.
`We have already found that Rolf and Frantz together teach a “server
`digital signal processor.” See supra Section III.C.1.c. As for receiving a
`non-optimized digital media file, Facebook points to Rolf’s disclosure that
`the server includes an “encoder” that “can receive digital audio files for
`
`
`10 Claim 1 also recites that, prior to optimizing the file, the server DSP may
`“optionally store” the non-optimized file in the database. An optional
`element is not mandatory to the claim and “can always be omitted.” In re
`Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006). Thus, we do not include it
`in our analysis. In any event, Facebook shows that this limitation is taught
`by the asserted combination of Rolf and Gilbert. Pet. 24, 28–31. Skky does
`not dispute Facebook’s showing on this point, arguing only that Rolf and
`Gilbert cannot be combined with respect to optimizing the files. PO Resp.
`30–31.
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`processing.” Pet. 23. More specifically, Rolf explains that the encoder “is a
`set of processing instructions stored in a memory for encoding music
`recordings stored within data base memory.” Ex. 1003, 8:61–9:3. That
`Rolf’s digital media files have not yet been encoded when received by the
`server indicates they are non-optimized, especially given Rolf’s express
`disclosure that “the music recordings are encoded and transmitted in packets,
`and may particularly be encoded by a compression algorithm.” Id. at 1:35–
`38 (emphasis added).
`Nonetheless, acknowledging that Rolf may not disclose expressly that
`the digital audio files received for encoding are “non-optimized,” Facebook
`turns to Gilbert for teaching the optimization scheme of claim 1. Pet. 23–28.
`Initially, Gilbert notes a known “compression technique that compresses
`digital audio files by as much as 12:1, with little perceptible loss in quality.”
`Ex. 1059, 1:45–56. Gilbert’s system improves on known compression
`techniques by taking a “digital audio file,” which has not been optimized,
`and “operat[ing] on the digital audio file, . . . to correct any defects, separate
`the digital audio file into discrete track-oriented files or tracks, and compress
`the discrete tracks.” Id. at 3:62– 4:10 (emphasis added). In that regard,
`Gilbert explains that its system “further includes a compression application
`[], which compresses each of the discrete digital audio tracks into smaller-
`sized files. [The] [c]ompression application [] may comprise an MP3
`encoder application, to ensure the fidelity of the discrete digital files.” Id. at
`5:38–48. As for storing the files, Gilbert explains that “the compressed
`discrete tracks are stored in the memory” of the computer system. Id. Thus,
`in Facebook’s asserted combination, Rolf’s server incorporates Frantz’s
`digital signal processor to process digital media files utilizing an
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`optimization, i.e., compression, application taught by Gilbert. See Ex. 1002
`¶¶ 90–96.
`Facebook also proffers evidence, including the testimony of Dr.
`Lavian, that a skilled artisan would have had a reason to combine the
`teachings of Rolf and Gilbert. Pet. 28–31 (citing Ex. 1002 ¶¶ 99–100, 102–
`107). As Dr. Lavian testifies, Gilbert’s teaching of using compression, i.e.,
`optimization, to remedy “equipment obsolescence or media degradation” in
`the playback of music recordings would have motivated a skilled artisan to
`apply that same technique to Rolf’s digital audio system to avoid “the
`problems of degradation and shortage of playback devices” with its music
`recordings, “while making a growing number of musical works (e.g., older
`classics) available to users for download.” Ex. 1002 ¶ 100 (citing Ex. 1059,
`1:17–45). Furthermore, according to Dr. Lavian, a skilled artisan would
`have understood that storing non-optimized and optimized copies of the
`same musical recording, as taught by Gilbert, “provides flexibility and
`performance because the optimized copy in storage can be more instantly
`delivered to users upon request, while the non-optimized copy enables ‘on
`demand’ optimization using parameters that can be varied depending on the
`circumstances of a particular request.” Id. ¶ 102. Dr. Lavian’s testimony is
`consistent with Rolf, which recognizes both optimization scenarios, namely,
`that the music recordings “may be stored in an encoded/compressed
`manner,” or alternatively, stored in an uncompressed manner and encoded
`later when requested by user. Ex. 1003, 8:63–9:6. That a skilled artisan
`would have combined Rolf and Gilbert is further bolstered by the fact that
`both references teach the use of an MP3 encoder for compression. Compare
`Ex. 1003, 1:36–38, 8:66–9:3 with Ex. 1059, 1:46–56, 5:41–46. Also, we
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`find that a skilled artisan would have reasonably expected that the
`incorporation of Gilbert’s optimization technique with Rolf’s server, which
`includes Frantz’s server DSP, to be successful because it would involve “no
`change in their respective functions.” Ex. 1002 ¶ 99.
`Skky argues that a skilled artisan “would not look to the optimization
`scheme of Gilbert” because it is “directed to analog files.” PO Resp. 30.
`That argument is not persuasive for the simple reason that, although Gilbert
`discusses optimization of analog files, it additionally contemplates the
`optimization, i.e., compression, of digital files. For instance, Gilbert teaches
`the ability “to convert a digital recording from one digital format to another
`to facilitate storage or transmission of the recorded information.” Ex. 1059,
`1:46–48 (emphasis added). That Gilbert may also disclose an optional step
`of converting analog files to digital files as part of an optimization
`application does not detract from its teaching as a whole of optimizing
`digital audio files. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166
`(Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior art
`must be considered as a whole for what it teaches”).
`Thus, the record evidence supports that Rolf’s and Gilbert’s mutual
`understanding of the advantages and benefits of optimizing, i.e.,
`compressing, digital audio recordings provides sufficient reason that a
`skilled artisan would have been led to modify Rolf’s system, which includes
`a processor (as modified by Frantz’s DSP) and MP3 encoder, with the MP3
`compression application taught by Gilbert, with a reasonable expectation of
`success of achieving the optimization scheme recited by claim 1.
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`e. “receive a request for the digital media file” and “cause a
`transmission of the requested optimized digital media file . . . to a
`wireless electronic device”
`Claim 1 further recites that the server is configured to “receive a
`request” for the digital media file, and, in turn, “cause a transmission” of the
`requested file “to a wireless electronic device.” For this limitation,
`Facebook again relies on Rolf alone. Pet. 26–28; Ex. 1002 ¶¶ 97–98.
`Specifically, Rolf teaches a “keypad and input on [a] wireless
`communications device” by which “one or more