Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 22
`Entered: July 11, 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 IPR2017-00550
`Patent 9,037,502 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`

`

`IPR2017-00550
`Patent 9,037,502 B2
`
`
`I. INTRODUCTION
`
`Facebook, Inc. and Instagram LLC (“Petitioner”) filed a Petition
`
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–3, 5, and 7 of
`
`U.S. Patent No. 9,037,502 B2 (Ex. 1001, “the ’502 patent”). Skky, LLC
`
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to
`
`the Petition.
`
`In our Institution Decision (Paper 9, “Inst. Dec.”), we instituted an
`
`inter partes review of claims 1–3 and 7 of the ’502 patent (“the challenged
`
`claims”) on alternative grounds of obviousness over 1) Rolf, Gatherer,
`
`Fritsch, and Frodigh, and 2) Rolf, Gatherer, Fritsch, O’Hara, and Tagg. We
`
`further instituted inter partes review of claim 5 based on each of the
`
`foregoing alternative prior art combinations in further combination with
`
`Yukie. A table of references and evidence relied upon in the Petition
`
`follows:
`
`Reference or Declaration
`Declaration of Tal Lavian, Ph.D. (“Lavian Declaration”)
`Rolf, U.S. Patent No. 7,065,342 B1 (filed Nov. 22, 2000,
`issued June 20, 2006) (“Rolf”)
`Yukie et al., U.S. Patent No. 6,956,833 B1 (filed April 4,
`2000, issued Oct. 18, 2005) (“Yukie”)
`Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE
`COMMUNICATIONS MAGAZINE 84–90 (2000) (“Gatherer”)
`Frodigh et al., U.S. Patent No. 5,726,978 (issued Mar. 10,
`1998) (“Frodigh”)
`Tagg, U.S. Patent No. 8,996,698 B1 (filed Nov. 3, 2000,
`issued Mar. 31, 2015) (“Tagg”)
`Bob O’Hara and Al Petrick, IEEE 802.11 HANDBOOK, A
`DESIGNER’S COMPANION (1999) (“O’Hara”)
`Fritsch, U.S. Patent 6,233,682 B1 (filed Jan. 18, 2000,
`issued May 15, 2001) (“Fritsch”)
`
`Exhibit No.
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1060
`
`Ex. 1061
`
`Ex. 1062
`
`2
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`

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`IPR2017-00550
`Patent 9,037,502 B2
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`See Inst. Dec. 4; Pet. 3, 7–18.
`
`After institution, Patent Owner filed a Response (Paper 14, “PO
`
`Resp.”), and Petitioner filed a Reply (Paper 18, “Pet. Reply”). The parties
`
`waived their right to an oral hearing.
`
`This Final Written Decision issues pursuant to 35 U.S.C. § 318(a).
`
`For the reasons set forth below, Petitioner has shown by a preponderance of
`
`the evidence that claims 1–3, 5, and 7 of the ’502 patent are unpatentable.
`
`A. Related Proceedings
`
`The parties indicate that the following district court case involves the
`
`’502 patent: Skky, LLC v. Facebook, Inc., No. 0:16-cv-00094 (D. Minn.).
`
`Pet. 1; Paper 4, 2. The following petitions for inter partes review or covered
`
`business method review relate to the instant proceeding:
`
`Case No.
`IPR2014-01236
`IPR2017-00088
`IPR2017-00089
`IPR2017-00092
`IPR2017-00097
`IPR2017-00602
`IPR2017-00641
`IPR2017-00685
`IPR2017-00687
`CBM2016-00091
`CBM2017-00002
`CBM2017-00003
`CBM2017-00006
`CBM2017-00007
`
`Involved U.S. Patent No.
`U.S. Patent No. 7,548,875
`U.S. Patent No. 9,124,718
`U.S. Patent No. 9,118,693
`U.S. Patent No. 9,124,717
`U.S. Patent No. 8,892,465
`U.S. Patent No. 9,219,801
`U.S. Patent No. 9,203,956
`U.S. Patent No. 9,203,870
`U.S. Patent No. 9,215,310
`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
`
`Pet. 1–2; Paper 4, 2. The Board denied institution in each of the covered
`
`business method reviews after Patent Owner disclaimed claims having a
`
`financial component or disclaimed all claims. The Board also denied
`
`institution in IPR2017-00641 in view of Patent Owner’s disclaimer of the
`
`3
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`

`

`IPR2017-00550
`Patent 9,037,502 B2
`
`challenged claims. The Board issued final written decisions in IPR2014-
`
`01236, IPR2017-00088, IPR2017-00089, IPR2017-00092, and IPR2017-
`
`00097.1
`
`B. The ’502 Patent
`
`The ’502 patent describes delivering audio and/or visual files to an
`
`electronic device. Ex. 1001, Abstract, 1:19–21. Specifically, the ’502 patent
`
`discloses delivering audio/visual files, such as songs or films, from one or
`
`more servers to the electronic device. Id. at Abstract. The system transmits
`
`the files in a compressed format, and the electronic device receives and plays
`
`the files on demand by a user. Id. The system employs an orthogonal
`
`frequency-division multiplex (“OFDM”) modulation technique. Id. at
`
`16:63–17:22.
`
`C. Illustrative Claim
`
`
`
`Independent claim 1, from which claims 2, 3, 5, and 7 depend, recites
`
`as follows (with bracketed letters added for reference):
`
`1. A method for wirelessly delivering one or more digital
`audio and/or visual files from one or more servers to one or
`more cell phones comprising:
`[a] storing a library of compressed digital audio and/or
`visual files on one or more servers;
`[b] providing to a cell phone a representation of at least a
`portion of the library of compressed digital audio and/or visual
`files;
`
`[c] receiving a request from the cell phone for at least one
`of the compressed digital audio and/or visual files stored on the
`one or more servers,
`
`
`1 The U.S. Court of Appeals for the Federal Circuit affirmed the Board’s
`decision in IPR2014-01236, finding claims 1–3, 5, and 15–23 of U.S. Patent
`No. 7,548,875 B2 unpatentable. Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d
`1014, 1016 (Fed. Cir. 2017).
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`4
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`
`[d] providing the one or more requested compressed
`digital audio and/or visual files to the cell phone and wherein
`the cell phone comprises a receiver and one or more processors
`including a digital signal processor and is configured for
`receiving and processing files transmitted by orthogonal
`frequency-division multiplex modulation;
`[e] tracking the selection of the requested compressed
`digital audio and/or visual files.
`
`
`
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`Petitioner’s declarant, Tal Lavian, Ph.D., states that a person of
`
`ordinary skill in the art would have had “at least a bachelor’s degree in
`
`computer science, computer engineering, or electrical engineering (or
`
`equivalent degree or experience) with at least four years of experience with
`
`wireless communications systems and at least two years of experience with
`
`the communication of digital media.” Ex. 1002 ¶ 15. Patent Owner does
`
`not provide a definition of the level of ordinary skill in the art. Patent
`
`Owner also does not dispute Dr. Lavian’s definition. Based on the evidence
`
`of record, including the types of problems and solutions described in the
`
`’502 patent and the asserted prior art, we agree with and adopt Dr. Lavian’s
`
`definition of the level of ordinary skill in the art. Id. ¶¶ 15–17.
`
`B. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2144–45 (2016). In its Petition, Petitioner did not contend that
`
`any term from the ’502 patent requires an explicit construction in order to
`
`understand how the claims apply to the prior art cited in the Petition. Pet. 6.
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`5
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`Patent Owner, in its preliminary response, agreed that no explicit
`
`construction of any claim terms was required at the time. Prelim. Resp. 5.
`
`Accordingly, we did not expressly construe any claim terms in our
`
`Institution Decision. Inst. Dec. 5.
`
`In its post-institution Response, Patent Owner contends that the term
`
`“processing” should be construed as “preparing a digital audio and/or visual
`
`file for storage in memory and playback.” PO Resp. 12–14. As support for
`
`this construction, Patent Owner cites a disclosed sound clip example to
`
`support its construction of “processing.” Id. at 12–13 (citing Ex. 1001,
`
`18:44–47). Patent Owner also cites extrinsic evidence as supporting it and
`
`showing “[a]t the time of invention, it was common to transfer digital data
`
`on the Internet using TCP/IP,” and that “[a]ll layers of the TCP/IP stack
`
`require processing at the receiver device when data, such as a digital audio
`
`and/or visual file, is sent to it.” Id. at 13 (citing Ex. 2002).
`
`In its Reply, Petitioner disagrees, contending that nothing in the claim
`
`language or specification supports limiting “processing” in the manner
`
`proposed by Patent Owner. Pet. Reply 15. Petitioner contends that other
`
`portions of the patent specification make clear that the processing performed
`
`by the DSP (digital signal processor) 300 includes a number of other
`
`“computational tasks,” such as playing back the sound clips, which would be
`
`excluded by Patent Owner’s construction. Id. at 16–17 (citing Ex. 1001,
`
`14:58–15:3).
`
`Having considered the parties’ respective arguments, we determine
`
`that the record does not indicate that “processing” should be limited as
`
`argued by Patent Owner, even if a certain embodiment discloses certain
`
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`features and processing covers those features.2 “[A]lthough the
`
`specifications may well indicate that certain embodiments are preferred,
`
`particular embodiments appearing in a specification will not be read into the
`
`claims when the claim language is broader than such embodiments.”
`
`Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054
`
`(Fed. Cir. 1994). Also, Patent Owner does not explain how or why the use
`
`of TCP/IP, and other extrinsic evidence cited, relates to the ordinary
`
`meaning of processing in the context of the specification, the claims, and
`
`Patent Owner’s proposed construction. See PO Resp. 12–14. As Petitioner
`
`persuasively argues, Patent Owner’s proposed construction would exclude
`
`other examples of processing in the ’502 patent specification. Accordingly,
`
`the ’502 specification verifies that the ordinary meaning of the term
`
`“processing” includes many cell phone functions.3
`
`We determine that no other terms require express construction in this
`
`proceeding. 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 Construing “processing” as recited in similar claims of related patents
`having a common disclosure with the ’502 patent, other PTAB panels
`consistently have indicated what the claim may include without construing
`the term explicitly. See, e.g., Facebook, Inc. v. Skky, LLC, Case IPR2017-
`00602, slip op. at 7 (PTAB April 25, 2018) (“‘processing’ include[s]
`preparing a digital audio and/or visual file for storage in memory and
`playback,” “may include other functions,” and “further construction of the
`term ‘processing’ is not necessary”) (Paper 29).
`3 As discussed further below, Petitioner also persuasively contends that the
`prior art teaches “processing” even under Patent Owner’s narrow
`construction. See Pet. Reply 16.
`
`7
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`
`C. Obviousness of Claims 1–3 and 7 over Rolf, Gatherer, Fritsch, and
`Frodigh
`
`Petitioner argues that claims 1–3 and 7 would have been obvious over
`
`the combination of Rolf, Gatherer, Fritsch, and Frodigh. Pet. 19–38. For the
`
`reasons discussed below, Petitioner shows by a preponderance of evidence
`
`that claims 1–3, and 7 would have been obvious over this combination.
`
`Petitioner relies primarily upon the teachings of Rolf as disclosing the
`
`majority of the limitations of the challenged claims. At a general level, Rolf
`
`describes a technique for allowing a cellular phone to download selected
`
`songs from a remote server wirelessly. Ex. 1003; Pet. 7–9. Petitioner
`
`acknowledges, however, that Rolf does not expressly disclose that the cell
`
`phone includes a “digital signal processor” (DSP). Pet. 26. Petitioner also
`
`acknowledges that Rolf does not disclose the use of OFDM to transmit the
`
`data file. Id. at 29.
`
`With regard to the preamble of independent claim 1 (“[a] method for
`
`wirelessly delivering one or more digital audio and/or visual files from one
`
`or more servers to one or more cell phones”), Petitioner relies upon Rolf’s
`
`description, inter alia, of a “method for wirelessly transmitting encoded
`
`music, via a wireless communications link, to a portable or mobile
`
`communications device which includes a player for playing the music or
`
`audio.” Pet. 19 (citing Ex. 1003, 1:18–21). As explained by Petitioner, Rolf
`
`discloses that the music can be “encoded by a compression algorithm into an
`
`encoded (such as MP3 or other) format,” and one of ordinary skill in the art
`
`would have understood that “MP3” refers to a compression technique for
`
`digital audio files. Id. at 19–20 (citing Ex. 1002 ¶¶ 26, 75; Ex. 1001, 18:46–
`
`47, 24:7–9, 25:40–51). As further explained by Petitioner, Rolf discloses
`
`that the digital audio and/or visual files, such as MP3 files, are stored on and
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`Patent 9,037,502 B2
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`can be downloaded from remote storage facility 14 (also referred to as
`
`“central storage facility”). Id. at 20–21 (citing Ex. 1003, 5:30–35, 5:47–56).
`
`With regard to claim step 1[a] (“storing a library of compressed
`
`digital audio and/or visual files on one or more servers”), Petitioner relies
`
`upon Rolf’s teaching that remote storage facility 14 includes a data base
`
`having a plurality of music recordings therein. Id. at 21–22 (citing Ex. 1002,
`
`3:32–39).
`
`With regard to claim step 1[b] (“providing to a cell phone a
`
`representation of at least a portion of the library of compressed digital audio
`
`and/or visual files”), Petitioner relies upon Rolf’s teaching that facility 14
`
`includes software to “provid[e] a menu driven system” to allow a user to
`
`select a recording “via a menu or listing of recordings,” which is provided to
`
`wireless communications device 12. Id. at 22–23 (citing Ex. 1003, 9:10–
`
`15).
`
`With regard to claim step 1[c] (“receiving a request from the cell
`
`phone for at least one of the compressed digital audio and/or visual files
`
`stored on the one or more servers”), Petitioner relies upon Rolf’s teaching
`
`that the wireless communications device 12 can be utilized to select [a]
`
`recording via a menu or listing of recordings,” and that “one or more
`
`selected music recordings may be retrieved from the storage facility 14, for
`
`transmission, via wireless communications link, to the device 12.” Id. at 23–
`
`24 (citing Ex. 1003, 5:49–53, 5:64–66, 9:12–15) (emphasis omitted).
`
`With regard to claim step 1[d], Petitioner asserts that the requirement
`
`of “providing the one or more requested compressed digital audio and/or
`
`visual files to the cell phone” is taught by Rolf’s disclosure that a user can
`
`request the download of music stored in the data base memory 52 (of the
`
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`IPR2017-00550
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`facility 14) using a cell phone, and that the requested music recordings are
`
`provided to the cell phone. Id. at 24–25 (citing Ex. 1003, 5:35–37, 49–53,
`
`5:63–66, 9:10–15). As to the requirement that “the cell phone comprises a
`
`receiver,” Petitioner relies upon Rolf’s teaching that the cell phone includes
`
`a “transceiver 40,” which is a device that serves as both a transmitter and a
`
`receiver. Id. at 25–26 (citing Ex. 1003, Fig. 4, 7:54; Ex. 1002 ¶ 85; Ex.
`
`1025, 647). As to the requirement that the cell phone includes a digital
`
`signal processor (DSP), Petitioner relies upon Dr. Lavian’s statement that
`
`DSPs were well-known to persons of ordinary skill in the art, and it was also
`
`known that cell phones of the sort disclosed in Rolf could include a DSP. Id.
`
`at 26 (citing Ex. 1002 ¶ 87). Petitioner further relies upon the teachings of
`
`Gatherer, which explains that “[p]rogrammable digital signal processors
`
`(DSPs) are pervasive in the wireless handset market for digital cellular
`
`telephony.” Id. (citing Ex. 1005, 84, left column). Petitioner asserts that the
`
`skilled artisan would have had many reasons to combine the teachings of
`
`Rolf and Gatherer, including the programmability and flexibility of DSPs,
`
`their ability to perform tasks going beyond traditional voice communications
`
`functionality, and their widespread commercial availability. Id. at 27–29.
`
`With respect to the claim requirement of OFDM (““wherein the cell
`
`phone . . . is configured for receiving and processing files transmitted by
`
`orthogonal frequency-division multiplex modulation”), Petitioner relies upon
`
`Frodigh’s teaching that OFDM is “particularly suited for cellular systems,”
`
`and its description of the use of OFDM modulation to transmit voice and
`
`data to a “mobile station” in a cellular system, and the use of a receiver
`
`implemented in the mobile station to receive and process data transmitted by
`
`OFDM modulation. Id. at 29–30 (citing Ex. 1006, 1:59–2:18, 7:51–63, 8:10–
`
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`14, 8:33–63, Figs. 2 and 3C). Petitioner asserts that the skilled artisan would
`
`have found it obvious to combine the teachings of Rolf and Frodigh, “with
`
`no change in their respective functions, predictably resulting in the cell
`
`phone of Rolf configured to receive and process music files, with the music
`
`files having been transmitted to the cell phone by OFDM modulation.” Id.
`
`at 30–31 (citing Ex. 1002 ¶ 97). Petitioner contends that Frodigh provides
`
`express motivations to combine the teachings in the foregoing manner based
`
`on several described advantages of OFDM in a cellular system, including the
`
`efficient use of bandwidth and reduction in interference. Id. at 31–32 (citing
`
`Ex. 1006, 2:38–60; Ex. 1002 ¶ 98). Petitioner further contends that “OFDM
`
`was one of a finite number of known techniques for allowing a cellular base
`
`station to communicate with multiple mobile stations at a given time
`
`(‘multiple access’), which is an essential feature of cellular networks,” and
`
`there were already industry efforts to commercialize cellular systems
`
`employing OFDM. Id. at 32 (citing Ex. 1002 ¶¶ 37, 39, 99).
`
`With respect to claim step 1[e] (“tracking the selection of the
`
`requested compressed digital audio and or visual files”), Petitioner contends
`
`Rolf satisfies this limitation based on its disclosure that the system can
`
`determine whether additional fees should be incurred based on the number
`
`of recordings retrieved. Id. at 33 (citing Rolf, 8:38–46). Petitioner
`
`acknowledges, however, that Rolf does not describe the tracking mechanism
`
`in detail and, to the extent that Rolf alone does not sufficiently disclose this
`
`limitation, Petitioner contends it would have been obvious in view of
`
`Fritsch’s disclosure of a system that keeps track of music files previously
`
`purchased by the user. Id. at 34 (citing Fritsch, 2:58–3:3, 6:32–48, 7:8–22,
`
`Fig. 2A–2B). Petitioner contends that the skilled artisan would have been
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`motivated to combine the teachings of Rolf and Fritsch because a historical
`
`list of the user’s prior musical selections could improve the user experience
`
`as well as be used to ensure that royalties are paid to copyright holders. Id.
`
`at 35–36 (citing Ex. 1002 ¶¶ 107–108).
`
`Dependent claim 2 further requires “storing the one or more
`
`compressed digital audio and/or visual files on the cell phone.” Petitioner
`
`relies upon Rolf’s disclosure that the retrieved music recordings are stored in
`
`memory in the communications device 12. Id. at 36–37 (citing Ex. 1003,
`
`5:46–56, 13:20–23).
`
`Dependent claim 3 further requires “playing back the one or more of
`
`said compressed digital audio and/or visual files selected by the user on the
`
`cell phone.” Petitioner relies upon Rolf’s disclosure that the wireless
`
`communications device/cellular telephone may be used to play the music
`
`recordings. Id. at 37–38 (citing Ex. 1003, 1:46–48, 1:64–67, 13:20–29).
`
`Dependent claim 7 further requires that the compression algorithm is
`
`MP3. Petitioner relies upon Rolf’s disclosure that the music recordings may
`
`be encoded using the MP3 format. Id. at 38 (citing Ex. 1003, 1:35–38, 5:37–
`
`39).
`
`In its post-institution Response, Patent Owner did not present any new
`
`evidence, and largely repeats the arguments set forth in its preliminary
`
`response. Patent Owner argues that the Petition does not adequately provide
`
`“evidence or technical explanation” regarding the changes a person of
`
`ordinary skill would need to make in order to combine the disparate
`
`teachings of Gatherer and Frodigh with Rolf. PO Resp. 25–26. In
`
`particular, with respect to the DSP requirement, Patent Owner argues that
`
`Petitioner’s suggestion that Rolf’s processor could be a DSP is conclusory,
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`and “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 29–
`
`30. Patent Owner also argues that a person of ordinary skill in the art would
`
`not combine Rolf and Gatherer because they relate to two different systems,
`
`where Rolf’s invention is directed to third-generation wireless
`
`communication network while Gatherer relates to GSM or second-
`
`generation systems. Id. at 30. Patent Owner contends that Gatherer itself
`
`admits that the application of GSM principles to 3G technology is
`
`“debatable” and is based on the assumption that 3G products will evolve
`
`similarly to GSM products. Id. (citing Ex. 1005, 84). We are not persuaded
`
`by Patent Owner’s arguments.
`
`With regard to Patent Owner’s arguments concerning Rolf and
`
`Gatherer, Petitioner proposes Gatherer’s explicit DSP as a substitute for
`
`Rolf’s generic “processor,” each of which control similar functions of a cell
`
`phone. See Pet. 26–29. Gatherer explains that programmable DPSs were
`
`“pervasive” in the wireless handset market for digital cellular telephony.
`
`See Ex. 1002 ¶ 88; Ex. 1005, 84, left column. Gatherer discloses a
`
`functional block diagram of a cellular phone (Fig. 1), with a DSP at least
`
`controlling baseband functions, and states “[a]s DSPs became more
`
`powerful, they started to take on other physical layer 1 tasks,” and “mission
`
`creep” occurred as designers began using DSPs for a variety of functions.
`
`Ex, 1005, 84, Figs. 1 and 2. Furthermore, while Gatherer states that an
`
`assumption that 3G products will evolve in a manner similar to GSM is
`
`“debatable,” the reference goes on to state that “history does have some
`
`good points to make with respect to 3G,” and further expects the trend of
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`using DSPs in 3G cellular technology to accelerate. Id. at 84–85. Gatherer
`
`explains “DSPs will continue to play a dominant, and in fact increasing, role
`
`in wireless communications devices.” Id. at 84. Petitioner identifies several
`
`programmable “basic phone functions,” including voice coding, as pervasive
`
`for being performed by a DSP. See Pet. 26 (citing Ex. 1005, 84–85, Figs. 1
`
`& 2). In other words, the evidence shows that artisans of ordinary skill at
`
`the time of the invention used processors and/or DSPs in cellular phones for
`
`performing a wide variety of basic tasks well-known in the industry, with
`
`DSPs providing flexibility.
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`Patent Owner also argues that Frodigh does not teach a system for
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`requesting and transmitting audio or audio-visual data files, and instead
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`teaches a method and system for allocating channels in an OFDM system to
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`reduce the amount of interference between channels with a goal of providing
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`fewer dropped calls and better call quality. PO Resp. 31. Patent Owner
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`further argues that Rolf relies on a 3G mobile network, which uses Code
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`Division Multiple Access (CDMA), whereas Frodigh teaches an allocation
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`method specifically directed to OFDM that is not applicable to 3G. Id. at 32.
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`Patent Owner contends that the industry leaders in the European
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`Telecommunications Standards Institute’s (ETSI’s) Special Mobile Group
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`(SMG) decided that CDMA would serve as the basis for the 3G cellular
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`standard because the use of OFDM raised concerns about increased power
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`consumption in mobile devices, degraded performance, and interference
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`between adjacent channels. Id. at 32–33 (citing Ex. 2003; Ex. 2004). As a
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`result, Patent Owner asserts that the skilled artisan would have been
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`discouraged from applying OFDM to cellular systems. Id. at 34.
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`We are also unpersuaded by these arguments based on the record.
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`Contrary to Patent Owner’s arguments, we find no basis to suggest that the
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`skilled artisan would understand that Rolf’s system could only be
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`implemented on a 3G/CDMA cellular network. Further, the evidence cited
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`by Patent Owner regarding the SMG’s decision to use CDMA in the 3G
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`standard indicates that there were advantages and drawbacks to both OFDM
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`(Ex. 2004, 1–2) and CDMA (id. at 3–4). As such, the record evidence does
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`not show that a person of ordinary skill in the art reading the cited SMG
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`documents would have been discouraged from using OFDM with a cellular
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`system like that of Rolf, where Frodigh lists several advantages of using
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`OFDM as noted above. We find Petitioner has shown sufficiently that a
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`person of ordinary skill in the art would have had persuasive reasons to
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`combine the cited teachings of Rolf and Frodigh. Moreover, we note that in
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`MindGeek, the Board and the Federal Circuit similarly concluded that it
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`would have been obvious to utilize OFDM for Rolf’s system of delivering
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`music files to a cellular telephone. See MindGeek, Case IPR2014-01236,
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`slip op. at 18–22 (PTAB Jan. 29, 2016) (Paper 45) (final written decision),
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`aff’d 859 F.3d at 1022.
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`Additionally, Patent Owner argues that Rolf, alone or in combination
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`with the other prior art relied upon, does not disclose that the receiver and
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`processor are configured to receive and process files transmitted by OFDM.
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`PO Resp. 34. Patent Owner contends that, in support of this claim
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`requirement, Petitioner relies only on Rolf’s ability to “play” the music files
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`it receives, but does not cite any support that playing a file is processing it.
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`Id. Patent Owner further contends that “[b]y relying only on playback as
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`processing, Petitioners fail to meet their burden.” Id. at 35. We also find
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`this argument unpersuasive. As discussed above, we do not construe
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`“processing” in the manner proposed by Patent Owner, i.e., “preparing a
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`digital audio and/or visual file for storage in memory and playback.”
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`Furthermore, contrary to Patent Owner’s arguments, we do not find that Rolf
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`must provide a detailed disclosure of the processing steps in order to render
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`this claim requirement obvious. Rather, we understand Petitioner’s position
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`to be that Rolf’s disclosure of “playing” the music files implicitly requires
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`that the cell phone is configured for receiving and processing files. Pet. 29.
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`Patent Owner does not explain how music files could be played using Rolf’s
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`system without the cellular telephone device first having received and
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`processed those files.
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`For the foregoing reasons, Petitioner has demonstrated by a
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`preponderance of the evidence that claims 1–3 and 7 would have been
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`obvious over Rolf, Gatherer, Fritsch, and Frodigh.
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`D. Obviousness of Claim 5 over Rolf, Gatherer, Fritsch, Frodigh, and Yukie
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`Petitioner argues that dependent claim 5 would have been obvious
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`over the combination of Rolf, Gatherer, Fritsch, Frodigh, and Yukie. Pet.
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`19–38. For the reasons discussed below, Petitioner shows by a
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`preponderance of evidence that claim 5 would have been obvious over this
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`combination.
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`Claim 5 depends from claim 1 and recites “wherein said compressed
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`digital audio and/or visual file is a personal recording or video recorded by a
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`user of the cell phone.” Petitioner relies upon the teachings of Rolf,
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`Gatherer, Fritsch, and Frodigh as discussed above. Petitioner acknowledges
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`that “Rolf does not appear to expressly disclose that the music recordings
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`and other files that can be downloaded from the remote storage facility []
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`include a personal recording or video recorded by a user of the cell phone.”
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`Pet. 39 (emphasis omitted). Accordingly, for this dependent claim,
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`Petitioner relies upon the teaching in Yukie of a system similar to Rolf, in
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`which a server stores data that can be retrieved using a consumer device
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`such as a cell phone, wherein the data stored on the server can be audio
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`recorded by the user. Id. at 39–41 (citing Ex. 1004, 6:44–53). As a rationale
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`and motivation to combine the references, Petitioner contends that allowing
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`a user to make personal audio recordings was a long-standing practice, and
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`storing such personal recordings on a server for retrieval and playback
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`would have saved storage space on the mobile device. Id. at 41–43.
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`With regard to this challenge, Patent Owner argues that Yukie’s
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`system “is not sophisticated enough to articulate transmitting compressed
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`audio or audio-visual data files, let alone a plurality of such files, as claim 1
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`contemplates.” PO Resp. 27. We are unpersuaded by this argument, as
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`Patent Owner focuses on what Yukie teaches individually rather than
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`whether the skilled artisan would have found it obvious to combine the
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`feature of Yukie’s system in which personal recordings may be stored on a
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`server with Rolf’s system that transmits compressed audio files to a mobile
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`device. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
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`show non-obviousness by attacking references individually where, as here,
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`the rejections are based on combinations of references.”). In this regard,
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`Rolf teaches that the wireless communication device already includes a
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`microphone for voice communications. Ex. 1003, 7:49–52, 15:35–37.
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`Accordingly, we find that the skilled artisan would have found it obvious to
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`store personal recordings as the compressed digital files in Rolf’s system.
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`Petitioner has, therefore, demonstrated by a preponderance of the
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`evidence the obviousness of dependent claim 5.
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`E. Obviousness of Claims 1–3 and 7 over Rolf, Gatherer, Fritsch, O’Hara,
`and Tagg; and Obviousness of Claim 5 over Rolf, Gatherer, Fritsch,
`O’Hara, Tagg, and Yukie
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`For its second set of challenges, Petitioner argues that claims 1–3 and
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`7 would have been obvious over the combination of Rolf, Gatherer, Fritsch,
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`O’Hara, and Tagg, and that claim 5 would have been obvious based on the
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`further combination with Yukie. Pet. 46–53. Petitioner relies upon the
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`teachings of Rolf, Gatherer, Fritsch, and Yukie in the same manner it relies
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`upon those references for the unpatentability grounds discussed above.
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`With respect to the OFDM requirement, Petitioner relies upon the
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`teachings of O’Hara and Tagg for two propositions: “that (1) prior art IEEE
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`802.11a wireless networking transmits digital information to mobile devices
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`using OFDM (O’Hara), and that (2) IEEE 802.11 wireless networking
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`functionality can be incorporated into a cell phone (Tagg).” Id. at 46. In
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`particular, Petitioner cites O’Hara’s teachings that “[i]n July of 1998, the
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`IEEE 802.11 Working Group adopted OFDM modulation as the basis for
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`IEEE 802.11a,” and that the OFDM physical layer provides the capability to
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`transmit data “at multiple data rates up to 54 Mbps for WLAN networks
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`where transmission of multimedia content is a consideration.” Id. at 46–47
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`(citing Ex. 1061, 139, 143). Petitioner cites Tagg for its teaching that a
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`mobile device can switch between any of a number of available wireless
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`technologies, including an IEEE 802.11 wireless networ