Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Facebook, Inc., Instagram LLC,
`Petitioners
`
`v.
`
`Skky, LLC,
`Patent Owner
`
`U.S. Patent No. 9,037,502
`
`TITLE: MEDIA DELIVERY PLATFORM
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,037,502
`
`

`
`Table of Contents
`
`
`Page
`
`
` I.  Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ........................................ 1 
`A. 
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1 
`B. 
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1 
`C. 
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 2 
`D. 
`Service Information .............................................................................. 2 
`E. 
`Power of Attorney ................................................................................ 2 
`Fee Payment - 37 C.F.R. § 42.103 ................................................................. 2 
`II. 
`III.  Requirements for Inter Partes Review under 37 C.F.R. §§ 42.104 and
`42.108 ............................................................................................................. 3 
`A.  Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3 
`B. 
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 3 
`Considerations under 35 U.S.C. § 325(d) ............................................ 4 
`C. 
`IV.  Claim Construction Under 37 C.F.R. § 42.104(B)(3) .................................... 6 
`V. 
`Claims 1-3, 5 and 7 Are Unpatentable ........................................................... 6 
`A. 
`Brief Summary and Date Qualification of the Prior Art ...................... 7 
`1. 
`Overview of Rolf (Ex. 1003) ..................................................... 7 
`2. 
`Overview of Fritsch (Ex. 1062) ................................................. 9 
`3. 
`Overview of Yukie (Ex. 1004) ................................................. 11 
`4. 
`Overview of Gatherer (Ex. 1005) ............................................ 12 
`5. 
`Overview of Frodigh (Ex. 1006) and OFDM .......................... 13 
`6. 
`Overview of O’Hara (Ex. 1061) and Tagg (Ex. 1060) ............ 17 
`Ground 1: Claims 1-3 and 7 Are Obvious Over Rolf in View of
`Gatherer and Frodigh ......................................................................... 19 
`1.
`Independent Claim 1 ................................................................ 19 
` 
`a. 
`“storing a library of compressed digital audio
`and/or visual files on one or more servers” (Claim
`1[a]) ................................................................................ 21 
`
`B. 
`
` 
`
`
`
`‐i‐
`
`

`
`Table of Contents
`(continued)
`
`Page
`
`
`
` 
`
`
`
`2.
` 
`
`3.
` 
`
`4.
` 
`
`C. 
`
`b. 
`
`c. 
`
`d. 
`
`e. 
`
`“providing to a cell phone a representation of at
`least a portion of the library of compressed digital
`audio and/or visual files” (Claim 1[b]) .......................... 22 
`“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” (Claim
`1[c]) ................................................................................ 23 
`“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” (Claim
`1[d]) ............................................................................... 24 
`“tracking the selection of the requested
`compressed digital audio and/or visual files”
`(Claim 1[e]) ................................................................... 33 
`Dependent Claim 2: “The method of claim 1, further
`comprising storing the one or more compressed digital
`audio and/or visual files on the cell phone.” ............................ 36 
`Dependent Claim 3: “The method of claim 1, further
`comprising playing back the one or more of said
`compressed digital audio and/or visual files selected by
`the user on the cell phone.” ...................................................... 37 
`Dependent Claim 7: “The method of claim 1, wherein
`said compression algorithm is MP3.” ...................................... 38 
`Ground 2: Claim 5 is Obvious Over Rolf in View of Fritsch,
`Gatherer, Frodigh, and Yukie ............................................................. 38 
`D.  Grounds 3 and 4: Alternative Ground Based On O’Hara and
`Tagg for Transmission Using OFDM ................................................ 44 
`1.
`Grounds 3 and 4 Are Not Redundant ....................................... 44 
` 
`2.
`Grounds 3 and 4 Render Claims 1-3, 5, and 7 Obvious .......... 46 
` 
`‐ii‐
`
`

`
`Table of Contents
`(continued)
`
`Page
`
`
`VI.  Conclusion .................................................................................................... 53 
`
`‐iii‐
`
`
`
` 
`
`
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`List of Exhibits
`
`
`
`Ex. No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`Description of Document
`
`U.S. Patent No. 9,037,502 to John Mikkelsen et al., entitled “Media
`Delivery Platform”
`
`Declaration of Tal Lavian, Ph.D.
`
`U.S. Patent No. 7,065,342 to Devon A. Rolf, entitled “System and
`Mobile Cellular Telephone Devices for Playing Recorded Music”
`
`U.S. Patent No. 6,956,833 to Satoru Yukie et al., entitled “Method,
`System and Devices for Wireless Data Storage and Retrieval on a
`Server and Data Retrieval”
`
`Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, IEEE Communications
`Magazine (January 2000)
`
`U.S. Patent No. 5,726,978 to Carl Magnus Frodigh et al., entitled
`“Adaptive Channel Allocation in a Frequency Division Multiplexed
`System”
`
`EP 1039683 A2 to Laroia et al., entitled “Frequency hopping multiple
`access with multicarrier signals”
`
`U.S. Patent 5,815,488 to Williams et al., entitled “Multiple User
`Access Method Using OFDM”
`
`Cheong Yui Won et al., A Real-time Sub-carrier Allocation Scheme for
`Multiple Access Downlink OFDM Transmission, IEEE (1999)
`
`1010 Wonjong Rhee et al., Increase in Capacity of Multiuser OFDM System
`Using Dynamic Subchannel Allocation, IEEE (2000)
`
`1011
`
`1012
`
`EP 1033894 A2 to Masatoshi Saito, entitled “Portable telephone
`terminal apparatus for receiving data and data receiving method”
`
`U.S. Patent No. 6,423,892 to Muralidharan Ramaswamy, entitled
`“Method, Wireless MP3 Files from the Internet”
`
` 
`
`
`
`‐iv‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`List of Exhibits
`
`
`
`Ex. No.
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Description of Document
`
`Excerpts from John Hedtke, MP3 and the Digital Music Revolution
`(1999)
`
`Gene Frantz, Digital Signal Processor Trends, IEEE Micro (2000)
`
`E. Lawrey, Multiuser OFDM, Fifth International Symposium on Signal
`Processing and its Applications (Aug. 1999)
`
`U.S. Patent No. 5,732,113 to Timothy Schmidl, entitled “Timing and
`Frequency Synchronization of OFDM Signals”
`
`U.S. Patent No. 6,711,221 to Maxim Belotserkovsky, entitled
`“Sampling Offset Correction in an Orthogonal Frequency System
`Multiplexing System”
`
`Richard Van Nee et al., OFDM
`Communications (2000)
`
`for Wireless Multimedia
`
`U.S. Patent No. 3,488,445 to Robert W. Chang entitled “Orthogonal
`Frequency Multiplex Transmission System”
`
`Chang, R.W., Synthesis of band-limited orthogonal signals for multi-
`channel data transmission, Bell Labs Technical Journal, no. 45, pp.
`175-1796 (Dec. 1966)
`
`5th International OFDM Workshop 2000
`
`6th International OFDM Workshop 2001
`
`17th International OFDM Workshop 2012
`
`Rainer Grünheid et al., Adaptive Modulation and Multiple Access for
`the OFDM
`Transmission
`Technique, Wireless
`Personal
`Communications (May 2000)
`
`1025
`
`Excerpts from Comprehensive Dictionary of Electrical Engineering
`
` 
`
`
`
`‐v‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`List of Exhibits
`
`
`
`Ex. No.
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`Description of Document
`
`IEEE Std 802-11a-1999, Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) specifications: High-speed
`Physical Layer in the 5 GHz Band
`
`U.S. Patent No. 6,125,124 to Jari Junell, entitled “Synchronization
`and Sampling Frequency
`in an Apparatus Receiving OFDM
`Modulated Transmissions”
`
`U.S. Patent No. 7,133,352 to Zion Hadad, entitled “Bi-Directional
`Communication Channel”
`
`U.S. Patent No. 6,108,810 to Brian Kroeger, entitled “Digital Audio
`Broadcasting Method Using Puncturable Convolutional Code”
`
`Ahmad R.S. Bahai, Multi-Carrier Digital Communications (1999)
`
`Leonard J. Cimini, Jr., Analysis and Simulation of a Digital Mobile
`Channel Using Orthogonal Frequency Division Multiplexing, IEEE
`Trans. Commun., Vol. 33, No. 7, pp. 665-675 (July, 1985)
`
`Giovanni Santella, Performance Evaluation of Broadband
`Microcellular Mobile Radio in M-QAM OFDM Systems, IEEE (1996)
`
`H. Rohling et al., Performance of an OFDM-TDMA Mobile
`Communication System, IEEE (1996)
`
`Antti Toskala et al., Cellular OFDM/CDMA Downlink Performance
`in the Link and System Levels, IEEE (1997)
`
`Fredrik Tufvesson et al., Pilot Assisted Channel Estimation for
`OFDM in Mobile Cellular Systems, IEEE (1997)
`
`Branimir Stantchev et al., An Integrated FSK-signaling Scheme for
`OFDM-based Advanced Cellular Radio, IEEE (1997)
`
`1037
`
`J. C-I Chuang, An OFDM-based System with Dynamic Packet
`Assignment and Interference Suppression for Advanced Cellular
`Internet Service, IEEE (1998)
`
` 
`
`
`
`‐vi‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`List of Exhibits
`
`
`
`Ex. No.
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`Description of Document
`
`Branimir Stantchev et al., Burst Synchronization for OFDM-based
`Cellular Systems with Separate Signaling Channel, IEEE (1998)
`
`Kevin L. Baum, A Synchronous Coherent OFDM Air Interface
`Concept for High Data Rate Cellular Systems, IEEE (1998)
`
`Li Ping, A Combined OFDM-CsDMA Approach to Cellular Mobile
`Communications, IEEE Transactions on Communications, Vol. 47,
`No. 7, pp. 979-982 (July 1999)
`
`Justin Chuang et al., High-Speed Wireless Data Access Based on
`Combining EDGE with Wideband OFDM, IEEE Communications,
`Vol. 37, No. 11, pp. 92-98 (Nov. 1999)
`
`Justin Chuang et al., Beyond 3G: Wideband Wireless Data Access
`Based on OFDM and Dynamic Packet Assignment,
`IEEE
`Communications Magazine (July 2000)
`
`Chi-Hsiao Yih et al., Adaptive Modulation, Power Allocation and
`Control for OFDM Wireless Networks, IEEE (2000)
`
`Fumilhide Kojima et al., Adaptive Sub-carriers Control Scheme for
`OFDM Cellular Systems, IEEE (2000)
`
`Chi-Hsiao Yih et al., Power Allocation and Control for Coded OFDM
`Wireless Networks, IEEE (2000)
`
`U.S. Patent No. 5,828,650 to Esa Malikamaki, entitled “Combined
`Modulation—and Multiple Access Method for Radio Signals”
`
`EP 0786890 A2 to Mitsuhiro Suzuki, entitled “Resource Allocation in
`a Multi-User, Multicarrier Mobile Radio System”
`
`1048 WO 1997030531 A1 to Roger Larsson, entitled “Improvements in or
`Relating to OFDM Systems”
`
` 
`
`
`
`‐vii‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`List of Exhibits
`
`
`
`Ex. No.
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`Description of Document
`
`U.S. Patent No. 6,188,717 to Stefan Kaiser, entitled “Method of
`Simultaneous Radio Transmission of Digital Data Between a Plurality
`of Subscriber Stations and a Base Station”
`
`U.S. Patent No. 6,711,120 to Rajiv Laroia, entitled “Orthogonal
`Frequency Division Multiplexing Based Spread Spectrum Multiple
`Access”
`
`U.S. Patent No. 6,553,019 to Rajiv Laroia, entitled “Communications
`System Employing Orthogonal Frequency Division Multiplexing
`Based Spread Spectrum Multiple Access”
`
`to Rajiv Laroia, entitled “Signal
`U.S. Patent No 6,922,388
`Construction, Detection and Estimation For Uplink Timing
`Synchronization and Access Control in a Multi-Access Wireless
`Communication System”
`
`U.S. Patent Appl. Pub. No. 2001/0021182 to Takashi Wakutsu,
`entitled “Transmitter Apparatus and Receiver Apparatus and Base
`Station Making Use of Orthogonal Frequency Division Multiplexing
`and Spectrum Spreading”
`
`Laurie Ann Toupin, Flash-OFDM
`Communications into the Main Stream
`
`‘Hops’ Wireless Data
`
`U.S. Provisional Patent Application No. 60/167,179 to Devon Rolf,
`filed November 23, 1999, entitled “System, Method, and Device for
`Playing Recorded Music on a Wireless Communications Device”
`
`Redline Comparison of U.S. Patent No. 7,065,342 and U.S.
`Provisional Patent Application No. 60/167,179
`
`Excerpts from Andy Rathbone, MP3 for Dummies (1999)
`
`Excerpts from Random House Webster’s College Dictionary (1999)
`
`U.S. Patent No. 341,214 to Chichester A. Bell et al., entitled
`“Recording and Reproducing Speech and Other Sounds”
`
` 
`
`
`
`‐viii‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`List of Exhibits
`
`
`
`Ex. No.
`
`1060
`
`1061
`
`1062
`
`1063
`
`1064
`
`Description of Document
`
`U.S. Patent No. 8,996,698 to James P. Tagg, entitled “Cooperative
`Network for Mobile Internet Access”
`
`Bob O’Hara et al., 802.11 Handbook: A Designer’s Companion, IEEE
`Press (1999)
`
`U.S. Patent No. 6,233,682 to Bernard Fritsch, entitled “Distribution of
`Musical Products by a Web Site Vendor Over the Internet”
`
`Declaration of Al Petrick
`
`Bryan E. Braswell, Modeling Data Rate Agility in the IEEE 802.11a
`Wireless Local Area Networking Protocol (Mar. 2001)
`
` 
`
`
`
`‐ix‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`Facebook, Inc. and Instagram LLC (“Petitioners”) respectfully submit this
`
`Petition for Inter Partes Review of claims 1-3, 5 and 7 of U.S. Patent No.
`
`9,037,502 (Ex. 1001) (“’502 patent”).
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Facebook, Inc. and Instagram, LLC, are the real parties-in-interest to this
`
`Petition. Instagram, LLC is a wholly owned subsidiary of Facebook, Inc.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The ’502 patent is the subject of the following litigation: Skky, LLC v.
`
`Facebook, Inc. et al., No. 16:CV-00094 (D. Minn.), filed on January 15, 2016. As
`
`of the date of this Petition, no claim construction proceedings have occurred.
`
`On June 15, 2016, Petitioners filed a petition for covered business method
`
`(CBM) patent review of the ’502 patent. See Facebook, Inc. et al. v. Skky, LLC,
`
`CBM2016-00091. Following the patent owner’s disclaimer of claims 6 and 8-11,
`
`the CBM petition was denied based on a determination that the patent is not CBM
`
`eligible. (See CBM2016-00091, Exhibit 2001 and Paper 7.)
`
`Additionally, an inter partes review (IPR) was instituted for U.S. Patent No.
`
`7,548,875, the parent to the ’502 patent. See Playboy Enters., Inc. et al. v. Skky,
`
`Inc., IPR2014-01236. On January 29, 2016, the PTAB issued a Final Decision
`
`finding all challenged claims unpatentable.
`
` 
`
`
`
`‐1‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`D.
`This Petition is being served by Federal Express to the attorney of record for
`
`BACK-UP COUNSEL
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5808
`Fax: (650) 849-7400
`
`Service Information
`
`the ’502 patent, PATTERSON THUENTE PEDERSEN, P.A., 4800 IDS Center, 80 South
`
`8th St., Minneapolis, MN 55402-2100. The Petitioners may be served at the
`
`address provided immediately above for lead counsel, and consent to electronic
`
`service by e-mail at the addresses above.
`
`Power of Attorney
`
`E.
`Filed concurrently in accordance with 37 C.F.R. § 42.10(b).
`
`II.
`
`FEE PAYMENT - 37 C.F.R. § 42.103
`
`This Petition requests review of five (5) claims. A payment of $23,000 is
`
`submitted herewith, based on a $9,000 request fee (for up to 20 claims), and a post-
`
`institution fee of $14,000 (for up to 15 claims). This Petition meets the fee
`
`requirements of 35 U.S.C. § 312(a)(1).
`
` 
`
`
`
`‐2‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104
`AND 42.108
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`The Petitioners certify that the ’502 patent is available for inter partes
`
`review and that the Petitioners are not barred or otherwise estopped from
`
`requesting inter partes review on the grounds identified herein.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`The Petitioners respectfully request that the Board initiate inter partes
`
`review of claims 1-3, 5 and 7 on the following grounds:
`
`Basis for Challenge
`Ground Claims
`1
`1-3, 7 Unpatentable over Rolf in view of Gatherer, Fritsch, and
`Frodigh, under § 103(a)
`Unpatentable over Rolf in view of Gatherer, Fritsch,
`Frodigh, and Yukie, under § 103(a)
`1-3, 7 Unpatentable over Rolf in view of Gatherer Fritsch, O’Hara
`and Tagg, under § 103(a)
`Unpatentable over Rolf in view of Gatherer, Fritsch, O’Hara
`and Tagg, in further view of Yukie, under § 103(a)
`
`5
`
`5
`
`2
`
`3
`
`4
`
`As noted in Part I.B above, the patent owner statutorily disclaimed
`
`dependent claims 6 and 8-11 in CBM2016-00091, and as such, those claims are not
`
`addressed in this Petition. Part V below explains why the challenged claims are
`
`unpatentable based on these grounds. Part V also explains why Grounds 1 and 2
`
`are not redundant of Grounds 3 and 4. Submitted with this Petition is the
`
` 
`
`
`
`‐3‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`Declaration of Tal Lavian, Ph.D. (Exhibit 1002) (“Lavian”), a technical expert with
`
`decades of relevant technical experience. (Lavian, Ex. 1002, ¶¶ 1-10, Ex. A.)
`
`C. Considerations under 35 U.S.C. § 325(d)
`The present Petition does not present a situation in which “the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.” 35 U.S.C § 325(d). As noted in Part I.B above, the Petitioners
`
`previously filed CBM2016-00091, seeking a finding that all claims were
`
`unpatentable under 35 U.S.C. §§ 101 and 112. That Petition did not present any
`
`grounds based on prior art, and was denied based on a finding that the ’502 patent
`
`did not claim a covered business method following the patent owner’s disclaimer
`
`of claims 6 and 8-11. (See CBM2016-00091, Exhibit 2001 and Paper 7.) As such,
`
`none of the grounds presented in this Petition were addressed in that proceeding.
`
`None of the four grounds presented here could have been presented in
`
`CBM2016-00091 because they rely on U.S. Patent No. 7,065,342 to Devon A.
`
`Rolf (Ex. 1003), which qualifies as prior art only under 35 U.S.C. § 102(e) (pre-
`
`AIA). See, e.g., Meridianlink, Inc. v. DH Holdings, LLC, CBM2013-00008, Paper
`
`24, at 2 (Sept. 12, 2013) (holding that prior art under § 102(e) cannot form the
`
`basis for a CBM challenge under AIA § 18(a)(1)(C)). Yukie (Ex. 1004) and Tagg
`
`(Ex. 1060), on which Grounds 2-4 also rely, similarly qualify as prior art only
`
`under § 102(e) (pre-AIA).
`
` 
`
`
`
`‐4‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`The Petitioners also note that the Rolf reference (Ex. 1003) was cited during
`
`the original prosecution in a July 19, 2011 Non-Final Rejection. The patent owner
`
`overcame the rejection by arguing that Rolf failed to disclose or render obvious the
`
`claimed transmission of data using orthogonal frequency-division multiplex
`
`modulation (OFDM). (See 07/11/2012 Applicant Response, at pp.7-8.)
`
`The Petitioners here present Rolf in combination with other references
`
`including Frodigh (Grounds 1 and 2), and Tagg and O’Hara (Grounds 3 and 4),
`
`which were not considered during the original prosecution. These references
`
`disclose and render obvious the use of OFDM that was missing from Rolf. The
`
`combination of Rolf with new prior art thus presents grounds of patentability that
`
`are markedly different from those considered during the original prosecution.
`
`Moreover, the Board relied on Rolf as the primary reference to institute IPR
`
`against U.S. Patent No. 7,548,875, the parent to the ’502 patent. See Playboy
`
`Enters., Inc. et al. v. Skky, Inc., IPR2014-01236. On January 29, 2016, the PTAB
`
`issued a Final Decision finding all challenged claims unpatentable. Like the
`
`present case, Rolf was considered during the original prosecution of the ’875
`
`patent, but the Board nevertheless relied on Rolf as the primary reference to
`
`invalidate the challenged claims in combination with new art. The Petitioners
`
`respectfully submit that the Board should do the same here.
`
`
`
` 
`
`
`
`‐5‐
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`The Petitioners do 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 below. The Petitioners respectfully request that the Board adopt the broadest
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`reasonable construction consistent with the ordinary and customary meaning of
`
`claims 1-3, 5 and 7. See, e.g. Facebook, Inc. v. EveryMD LLC, IPR2014-00242,
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`Paper 15 (May 21, 2014) (“[W]e cannot discern how the constructions proffered by
`
`Petitioner add any clarity to the claim terms, which, though broad, are relatively
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`simple. Therefore, for purposes of this Decision, we conclude that no explicit
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`construction is necessary….”).
`V. CLAIMS 1-3, 5 AND 7 ARE UNPATENTABLE
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`Claims 1-3, 5 and 7 are unpatentable based on the following grounds:
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`Basis for Challenge
`Ground Claims
`1
`1-3, 7 Unpatentable over Rolf in view of Gatherer, Fritsch, and
`Frodigh, under § 103(a)
`Unpatentable over Rolf in view of Gatherer, Fritsch, Frodigh,
`and Yukie, under § 103(a)
`1-3, 7 Unpatentable over Rolf in view of Gatherer Fritsch, O’Hara
`and Tagg, under § 103(a)
`Unpatentable over Rolf in view of Gatherer, Fritsch, O’Hara
`and Tagg, in further view of Yukie, under § 103(a)
`
`5
`
`5
`
`2
`
`3
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`4
`
`This Petition will first provide an overview of each reference and brief
`
`description of its relevance to the claims of the ’502 patent. Grounds 1-2 and
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` 
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`
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`‐6‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`Grounds 3-4 overlap in their reliance on the Rolf, Gatherer, and Yukie references,
`
`but differ with respect to the prior art applied to the limitation requiring
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`transmission of data using orthogonal frequency-division multiplex modulation
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`(OFDM). Grounds 1-2 rely on Frodigh for this limitation, while Grounds 3-4 rely
`
`on O’Hara and Tagg. An explanation as to why Grounds 3-4 are not redundant of
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`Grounds 1-2 is provided in the discussion of Grounds 3-4 in Part V.D below.
`
`A. Brief Summary and Date Qualification of the Prior Art
`1. Overview of Rolf (Ex. 1003)
`Rolf, entitled “System and Mobile Cellular Telephone Device for Playing
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`Recorded Music,” describes a “system and method for wirelessly transmitting
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`encoded music, via a wireless communications link, to a portable or mobile
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`communications device which includes a player for playing the music or audio.”
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`(Rolf, 1:17-21.) Rolf generally describes a technique for allowing a cellular phone
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`to wirelessly download selected songs from a remote server. Rolf qualifies as prior
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`art under at least 35 U.S.C. § 102(e) (pre-AIA) because it issued from an
`
`application filed on November 22, 2000, claiming priority to a provisional
`
`application (60/167,179) filed on November 23, 1999. (Ex. 1055.)1
`
`
`
` 1
`
` Because Rolf issued from a non-provisional application filed on November 22,
`
`2000, it qualifies as prior art under § 102(e) without reliance on the earlier
`
` 
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`
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`‐7‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`This Petition relies on Rolf as the primary reference that discloses the
`
`majority of the limitations of the challenged claims. Rolf was also the primary
`
`reference relied upon in the Final Decision in Playboy Enters., Inc. et al. v. Skky,
`
`Inc., IPR2014-01236, in which the Board found all claims of the parent to the ’502
`
`patent unpatentable. Figure 1 of Rolf shows one embodiment of the system 10:
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`
`
`
`
`provisional. Indeed, Rolf served as the primary prior art reference in IPR2014-
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`01236 and the Patent Owner did not attempt to “swear behind” it. Nevertheless, in
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`the event the Patent Owner attempts to do so here, Rolf would still qualify as prior
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`art. This is because the invalidating disclosures in Rolf are supported by the Rolf
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`provisional. (Lavian, ¶¶ 52-56, Exs. B-C.) The Petitioners therefore reserve their
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`right to assert that Rolf is entitled as prior art to the November 23, 1999 filing date
`
`of its provisional application, should it become necessary to do so.
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` 
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`‐8‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`(Id., Fig. 1.) The system 10 of Figure 1 shows communications device 12, which
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`is preferably a cellular telephone. (Id., 5:21-24.) The communications device 12
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`can communicate over a communications network with a central facility 14, which
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`is also referred to as “remote storage facility” 14. (Id., 5:30-32.) “The remote
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`storage facility may, for example, be at an address on the world wide web, and
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`include a data base having a plurality of music recordings therein.” (Id., 5:32-35.)
`
`Rolf further explains that the communications device 12 can be used to
`
`select and download music recordings from remote storage facility 14:
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`[T]he wireless communications device 12 may be utilized to establish
`a communications link with the remote storage facility 14. Then,
`using a keypad and input on the wireless communications device, or
`by voice commands, one or more selected music recordings may be
`retrieved from the storage facility 14, for transmission, via wireless
`communications link, to the device 12.
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`(Id., 5:46-53.) The retrieved recordings can then be stored in the memory of the
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`device 12. (Id., 5:53-59.)
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`Rolf also teaches that the music recordings can be “encoded by a
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`compression algorithm into an encoded (such as MP3 or other) format.” (Id., 1:35-
`
`38; see also id., 5:37-39; 8:63-9:6.) Further details about Rolf are discussed below.
`
`2. Overview of Fritsch (Ex. 1062)
`Fritsch, entitled “Distribution of Musical Products by a Web Site Vendor
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` 
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`‐9‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`Over the Internet,” discloses a website for enabling the purchase of digital music
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`files over the Internet through a cellular phone or personal computer. (Fritsch,
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`2:58-3:3.) This Petition cites Fritsch for the last limitation in claim 1, “tracking
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`the selection of the requested compressed digital audio and/or visual files.”
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`Fritsch qualifies as prior art under at least 35 U.S.C. § 102(e) (pre-AIA).
`
`Fritsch discloses a number of techniques for tracking the selection of digital
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`music downloads by users. For example, the system maintains a “history” that
`
`keeps track of the music files previously purchased by the user, which may be
`
`viewed by the user. (Id., 6:32-48, Fig. 2A-2B.) The system also tracks purchases
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`made by each user in order to determine the royalties due to those who hold rights
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`over the purchased music. (Id., 7:8-13 (“The sales sub-system of the present
`
`invention maintains a record on a computer database (or the like) of all the
`
`purchases ever made by the user. Certain products and services will generate
`
`revenue for third party rights holders. For example, songwriters and royalty
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`societies will obtain revenue based on the sales of records and songs.”).) This
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`allows the rights-holder to track sales and royalty payments that are due. (Id.,
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`7:13-22.) As explained in detail below, it would have been obvious to add the
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` 
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`‐10‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`tracking features of Fritsch to Rolf. (Lavian, ¶¶ 105-108.)2
`
`3. Overview of Yukie (Ex. 1004)
`Yukie, U.S. Patent No. 6,956,833, entitled “Method, System and Devices for
`
`Wireless Data Storage on a Server and Data Retrieval,” describes a method by
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`which a “user device 10 establishes a wireless connection to data server 16 and
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`sends data to data server 16 for storage and later access by user device 10.”
`
`(Yukie, Ex. 1004, 4:23-26.) Yukie qualifies as prior art under at least 35 U.S.C. §
`
`102(e) (pre-AIA) because it issued from an application filed on April 4, 2000.
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`This Petition cites Yukie in connection with Grounds 2 and 4 pertaining to
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`claim 5, which recites a compressed digital audio and/or visual file that “is a
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`personal recording or video recorded by a user of the cell phone.” (’502, 34:8-10
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`(claim 5).) Yukie teaches a user device that may include “audio input”
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`components, such that it is capable of recording and storing audio electronic files.
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`
`
` 2
`
` As explained by Dr. Lavian, one of ordinary skill in the art as of June 2001 (the
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`earliest application filing date for the ’502 patent) would have possessed at least a
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`bachelor’s degree in computer science, computer engineering, or electrical
`
`engineering (or equivalent degree or experience) with at least four years of
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`experience with wireless communications systems and at least two years of
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`experience with the communication of digital media. (Lavian, ¶¶ 15, 16.)
`
` 
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`
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`‐11‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`(Yukie, 10:41-43, 11:13-19; see also id. at 6:16-17, 6:44-53.) After personally
`
`recording an audio electronic file, the user may either store this file locally, or send
`
`this file to a data server 16 via a wireless interface for later retrieval and playback.
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`(Id., 6:44-53, 11:3-22.) As explained below, Claim 5 is obvious based on the art
`
`cited in Grounds 1 and 3 in further view of Yukie. (Lavian, ¶¶ 59, 60, 117-127.)
`
`4. Overview of Gatherer (Ex. 1005)
`Gatherer, entitled “DSP-Based Architectures for Mobile Communications:
`
`Past, Present and Future,” is an article appearing in the January 2000 issue of the
`
`IEEE Communications Magazine. Gatherer qualifies as prior art under at least 35
`
`U.S.C. § 102(b) (pre-AIA).
`
`Claim 1 recites a cell phone that includes a “digital signal processor.” Rolf
`
`discloses that communications device 12 can be a cellular phone (Rolf, 5:21-24),
`
`but Rolf does not describe the details of its processor. This Petition cites Gatherer
`
`to show that use of digital signal processors (DSPs) in cell phones was well-
`
`known. In fact, Gatherer explains that by 2000, “[p]rogrammable digital signal
`
`processors (DSPs) are pervasive in the wireless handset market for digital cellular
`
`telephony.” (Gatherer, at p.84, left column.) Gatherer explains that, by 2000,
`
`there were “several DSPs on the market that have been designed with wireless
`
`applications in mind, for instance, the Lucent 16000 series and the ADI21xx series.
`
`This level of effort by several companies [was] a sign that the collective wisdom of
`
` 
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`‐12‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,037,502
`
`the marketplace has chosen to bet on a programmable DSP future for wireless
`
`technology.” (Id., at p.86.) Gatherer also explains that DSPs offered various
`
`advantages for use in cellular phones, including programmable flexibility and
`
`processing performance. (Id. at pp.84-85.) As explained below, the use of an off-
`
`the-shelf DSP in a cellular phone was not only known, but would have plainly
`