Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 22
`Entered: July 11, 2017
`
`
`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 IPR2017-00685
`Patent 9,203,870 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`
`Finding All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 22
`Entered: July 11, 2017
`
`
`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 IPR2017-00685
`Patent 9,203,870 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`
`Finding All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
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`IPR2017-00685
`Patent 9,203,870 B2
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`I. INTRODUCTION
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). This Final Written Decision (hereinafter, “Decision”) is issued
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Upon review of Petitioner’s Petition (Paper 2, “Pet.”) and Patent
`Owner’s Preliminary Response (Paper 7), we instituted an inter partes
`review of claims 8 and 10–14 of U.S. Patent No. 9,203,870 B2 (Ex. 1001,
`“the ’870 patent”). Paper 10 (“Dec. on Inst.”). Patent Owner subsequently
`filed a Response to the Petition (Paper 13, “PO Resp.”), to which Petitioner
`filed a Reply (Paper 18, “Pet. Reply”). The parties waived their right to an
`oral hearing. Upon consideration of the arguments and evidence before us,
`we determine that Petitioner has established by a preponderance of the
`evidence that claims 8 and 10–14 of the ’870 patent are unpatentable.
`In this Decision, we also dismiss Petitioner’s Motion to Exclude
`(Paper 19).
`
`A. Related Matters
`The parties indicate that the ’870 patent is at issue in the following
`district court case: Skky, LLC v. Facebook, Inc., No. 16-cv-00094 (D.
`Minn., filed Jan. 15, 2016). Pet. 1; Paper 4, 2. The parties also indicate that
`the several PTAB proceedings, including inter partes reviews and covered
`business method reviews, relate to this case. See Pet. 1; Paper 4, 2–3.
`Additionally, in Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir.
`2017), the Federal Circuit affirmed the Board’s final written decision in
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`IPR2014-01236 determining that certain claims of U.S. Patent 7,548,875, to
`which the ’870 patent claims priority, were unpatentable as obvious.
`
`B. The ’870 Patent
`The ’870 patent describes delivering audio and/or visual files to an
`
`electronic device. Ex. 1001, Abstract, 1:19–21. Specifically, the ’870 patent
`discloses delivering the audio or visual files, such as songs or films, from
`one or more servers to the electronic device. Id. at 1:63–2:2. The system
`employs an orthogonal frequency-division multiplex (“OFDM”) modulation
`technique for data transmission. Id. at 16:57–17:39.
`
`C. Challenged Claims
`Petitioner challenges claims 8 and 10–14, of which claim 8 is
`independent. Claim 8 is reproduced below, with [a]–[e] designations added
`for ease of reference.
`8. A method for distributing electronic content over a cellular
`network to a user operating a cellular phone, the method being
`executable by a computer system that includes server
`hardware and a database, the method comprising:
`[a.] providing for the transmission to the cellular phone by
`orthogonal
`frequency-division multiplex
`(OFDM)
`modulation of a database of electronically accessible data
`files, each data file being subject to a copyright owner;
`[b.] receiving, by the computer system, a selection from the
`cellular phone corresponding to at least one of the data files;
`[c.] providing for the transmission of, by the computer system
`and in response to the received selection, a portion of the
`selected data file to the cellular phone electronic device;
`[d.] receiving, by the computer system, a request for the data file
`for which the portion was provided to the cellular phone
`electronic device; and
`[e.] providing for the transmitting, by the computer system, of
`the requested data file to the cellular phone, said cellular
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`phone including a digital signal processor configured to
`receive the data file over a cellular network by orthogonal
`frequency-division multiplex (OFDM) modulation.
`
`
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 8 and 10–14 of the ’870 patent are
`unpatentable under 35 U.S.C. § 103 on the following grounds:
`References
`Claims Challenged
`Rolf,1 Fritsch,2 and Gatherer,3
`8 and 12–14
`Frodigh,4 and Hacker5
`Rolf, Fritsch, Gatherer, Frodigh,
`Hacker, and Bell6
`Rolf, Fritsch, Gatherer, Hacker,
`O’Hara,7 Tagg,8 and Pinard9
`Rolf, Fritsch, Gatherer, Hacker,
`Bell, O’Hara, Tagg, and Pinard
`
`10 and 11
`
`8 and 12–14
`
`10 and 11
`
`
`1 U.S. Patent No. 7,065,342, issued June 20, 2006 (Ex. 1003).
`2 U.S. Patent No. 6,233,682, issued May 15, 2001 (Ex. 1004).
`3 Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE Communications
`Magazine 84–90 (2000) (Ex. 1005).
`4 U.S. Patent No. 5,726,978, issued Mar. 10, 1998 (Ex. 1006).
`5 Scot Hacker, MP3 The Definitive Guide (O’Reilly & Assoc., pub., 2000)
`(Ex. 1062).
`6 U.S. Pat. App. Pub. No. 2002/0065826, published May 30, 2002 (Ex.
`1068).
`7 Bob O’Hara and Al Petrick, IEEE 802.11 Handbook, A Designer’s
`Companion (1999) (Ex. 1061).
`8 U.S. Patent No. 8,996,698 B1, filed Nov. 3, 2000, issued Mar. 31, 2015
`(Ex. 1060).
`9 U.S. Patent No. 5,815,811, issued Sept. 29, 1998 (Ex. 1025).
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`Petitioner also relies on the declaration of Tal Lavian, who holds a
`Ph.D. in computer science, specializing in networking and communications
`(Ex. 1002 ¶ 1).
`
`II. ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b). Under that standard, a claim term generally is given its
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although our claim
`interpretation cannot be divorced from the specification, see Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), we must be careful not to
`import limitations from the specification that are not part of the claim
`language, see SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004). Any special definition for a claim term must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In its Petition, Petitioner proposed a construction for the term “cellular
`network” in claim 8: a “network in which wireless communications are
`provided through a series of ‘cells,’ each cell providing network access for a
`particular geographic area.” Pet. 6–7.10 In its Preliminary Response, Patent
`
`
`10 According to Petitioner, the construction of this term is only relevant to
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`Owner stated Petitioner’s interpretation was “unreasonably broad” and
`suggested that the term should be limited to networks “provided by ‘large
`scale commercial cellular telephone companies.’” Paper 7, 5. We adopted
`Petitioner’s proposed construction based in part on the strength of the
`extrinsic evidence supporting that construction. Dec. on Inst. 6–7 (citing Ex.
`1002 ¶¶ 22, 75–76; Ex. 1074, claims 9–11). We noted, however, that
`Petitioner’s argument focused on extrinsic evidence but provided little
`discussion of the intrinsic evidence (e.g., the specification). Id. at 7. Given
`this, we specifically “invite[d] the parties to further develop their arguments
`and evidence regarding the proper claim construction of ‘cellular network.’”
`Id. Notwithstanding that request, Patent Owner’s position in its Response is
`nearly word-for-word its position in the Preliminary Response. Compare
`PO Resp. 12–13, with Paper 7, 5; see also Ex. 1084, 15–16 (Petitioner’s
`redline comparison of the Preliminary Response and the Response).
`Petitioner’s Reply responds to Patent Owner’s arguments in the Preliminary
`Response and the Response, and bolsters its position regarding extrinsic
`evidence. Pet. Reply 4–6. With respect to intrinsic evidence, Petitioner
`asserts that “[n]othing in the ’870 patent narrowly limits the meaning of a
`‘cellular’ network to require the Patent Owner’s proposed limitations [to
`limit the network to ‘large scale commercial cellular telephone
`companies’].” Id. at 5.
`Reviewing the arguments and evidence before us, we are persuaded
`that Petitioner’s proposed construction is commensurate in scope with the
`broadest reasonable interpretation, and that Patent Owner’s proposed
`
`
`the third and fourth grounds (involving O’Hara, Tagg, and Pinard). Pet. 6.
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`construction is not. Specifically, Petitioner asserts that a “cellular network”
`is a “network in which wireless communications are provided through a
`series of ‘cells,’ each cell providing network access for a particular
`geographic area.” Pet. 7. Effectively, Petitioner seeks to construe “cellular
`network” so as to encompass both the term’s “colloquial[]” meaning (the
`networks provided by “large scale commercial cellular telephone providers”)
`as well as its “technical definition” (which would include other radio
`wavelengths, such as IEEE 802.11, more commonly known as “WiFi”). Id.
`Petitioner bases its construction on extrinsic evidence, including the
`testimony of its expert, Dr. Lavian (Ex. 1002 ¶¶ 22, 75–76), and one of
`Patent Owner’s related patents (Ex. 1074, U.S. Patent No. 8,892,465, claims
`9–11). Dr. Lavian, in turn, cites to Pinard (Ex. 1025), which explicitly calls
`a WiFi network a “cellular network.” Ex. 1002 ¶ 75. Dr. Lavian also cites
`to a host of dictionaries supporting his position. Id.
`Patent Owner argues that Petitioner’s construction is too broad. PO
`Resp. 12–13. Patent Owner appears to assert that we should adopt the
`“colloquial[] underst[anding] by the lay public” of “cellular network” to
`reference the large scale commercial cellular telephone providers. Id.
`Patent Owner, however, does not offer any cogent analysis or evidence in
`support of its construction.
`On this record, Petitioner offers persuasive extrinsic evidence of how
`a person of ordinary skill in the art would construe the term “cellular
`network.” We also consider the use of the term in the specification to be
`consistent with the understanding of a person of ordinary skill in the art. In
`general, the specification focuses on “an improved method for delivery and
`play back of sound and image files.” Ex. 1001, 1:63–65. The improvement
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`is that the files are distributed to a cell phone, largely for use to be played in
`lieu of the traditional ringing sound. Id. at 1:25–59 (discussing ring tones),
`2:22–39 (the embodiment described in the invention disclosure section being
`directed to ring tones); see also, e.g., id. at 4:65–67 (describing the present
`invention as a “method . . . using sound and or image clips as alerts”), 5:21–
`24 (“music[] . . . to be used for sound . . . alerts in electronic devices”). The
`section on the transmission system (id. at 12:32–14:10) generically describes
`a “cellular network infrastructure” (id. at 13:35). The example of cellular
`phone transmission (id. at 14:11–16:28) is concerned with the ability of the
`phone to play sounds in conjunction with caller ID (id. at 14:27–16:28),
`consistent with the ’870 patent’s focus on ring tones. The specification
`addresses details for OFDM transmission when the data is going to be sent
`over the audio channel of a wireless landline phone. Id. at 16:29–36, 57–67
`(describing use of OFDM for data transmission when sending data over an
`audio channel of landline). However, when discussing transmission for a
`cellular phone, the “server . . . uses a modulation protocol compatible with
`the protocol supported by the cellular network provider.” Id. at 18:63–19:1;
`see also id. at 18:63–66 (“Since in this case [(using a digital cellular
`network)] a digital channel is used for sound clip data transmission, no
`[OFDM] modulation is required on the mobile phone side.”), 19:34–35
`(suggesting to use standard modulation), 19:55–60 (same), 20:25–26 (same).
`Accordingly, the ’870 patent is not directed to unique technical
`implementations for cell phones specifically, and rather refers to the
`expected knowledge of the person ordinary skill with respect to cell phones.
`Similarly, the cell phone itself is described in usual terms. See id. at 14:27–
`28 (“The cellular telephone 202 may be any commercially available cellular
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`phone having capabilities for supporting [various common command sets]”);
`26:13–15 (describing accessory unit attached to a common cell phone, the
`Ericsson R520). Taking into account the specification as a whole, we are
`not apprised of any particular import or meaning imbued to the term
`“cellular network”; the term is used as if it were a term with which a person
`of ordinary skill in the art was already familiar (i.e., it relies on the meaning
`understood by a person of ordinary skill in the art). Accordingly, we
`determine that Petitioner’s construction is consistent with how “cellular
`network” would have been understood by a person of ordinary skill in the art
`in light of the specification: a “network in which wireless communications
`are provided through a series of ‘cells,’ each cell providing network access
`for a particular geographic area.”
`We determine that Patent Owner’s proposed construction is not the
`broadest reasonable interpretation consistent with the specification because
`the record does not support the finding that a person of ordinary skill in the
`art would understand a “cellular network” to be limited only to those
`provided by large scale commercial providers. Patent Owner’s proposed
`construction would cut out small cell phone providers, with no argument or
`evidence in support of why. Patent Owner does not direct us to, nor do we
`see, how the ’870 patent specification would direct a person of ordinary skill
`in the art to understand the term in such a manner. We do not adopt Patent
`Owner’s proposed construction.
`We do not need to construe any other terms to resolve the issues
`raised by the parties. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the
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`extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`B. Person of ordinary skill in the art
`The Petition states that a person of ordinary skill in the art “would
`have possessed at least a bachelor’s degree in computer science, computer
`engineering, or electrical engineering . . . with at least four years of
`experience with wireless communications systems and at least two years of
`experience with the communication of digital media.” Pet. 7 n.2 (citing Ex.
`1002 ¶¶ 15, 16). Patent Owner does not explicitly argue for a particular
`level of ordinary skill. On this record, Petitioner’s proffered level of skill is
`adequately supported by the disclosures of the prior art references. See
`Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art
`itself can reflect the appropriate level of skill in the art). Accordingly, we
`adopt Petitioner’s definition.
`
`C. Asserted Grounds of Unpatentability
`1. Obviousness Over Rolf, Gatherer, Fritsch, Hacker, and Frodigh
`(Claims 8 and 12–14)
`Petitioner asserts that claims 8 and 12–14 would have been obvious
`over the combination of Rolf, Gatherer, Fritsch, Hacker, and Frodigh. Pet.
`19–46.
`
`a. Independent Claim 8
`Independent claim 8 recites a method for distributing copyrighted
`electronic content over a cellular network using orthogonal frequency-
`division multiplex (“OFDM”) modulation, wherein a computer system
`receives a selection of a data file, transmits a portion of that data file,
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`receives a request for the complete data file, and then transmits the complete
`data file to a cell phone that uses a digital signal processor (“DSP”). In
`general, and as explained in further detail below, Petitioner relies on Rolf for
`the majority of the limitations dealing with distributing copyrighted content
`over a cellular network, with Fritsch teaching the portion-of-a-file aspect,
`Gatherer explaining that cell phones use DSPs, Frodigh explaining that cell
`phones use OFDM, and Hacker explaining that audio recording holders have
`a copyright over their work. See generally Pet. 19–46.
`As to claim 8, step (a), Petitioner asserts that Rolf discloses a facility
`that includes a database that stores electronically accessible music files and
`transmits them to a device such as a cellular telephone. Pet. 22 (citing, e.g.,
`Ex. 1003, 5:32–39). Petitioner acknowledges, however, that Rolf does not
`disclose the files transmitted using the OFDM protocol (it does not specify
`any protocol), but that Frodigh describes OFDM as “particularly suited for
`cellular systems.” Id. at 22–23 (quoting Ex. 1006, 1:59–2:18). Petitioner
`asserts that the proposed modification to use OFDM as taught in Frodigh
`would result in no effective modification to Rolf because Frodigh is
`explicitly described as applicable to cellular systems, and provides particular
`advantages when used, such as efficient use of bandwidth and reduced
`interference. Id. at 23–24 (quoting Ex. 1006, 2:38–60). Step (a) also
`specifies that each data file is subject to a copyright owner. Petitioner
`asserts that Rolf does not explicitly disclose this, but the claim limitation
`imports no meaningful distinction because copyright protection
`automatically attaches to the musical works relevant to the claims. Pet. 25
`(citing 17 U.S.C. §§ 101(a)(2) & (a)(7)). Petitioner also cites to Hacker,
`which notes that MP3 files contain metadata indicating a copyright owner.
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`Pet. 26–27 (citing, e.g., Ex. 1062, 117, 262, 263). Petitioner asserts that this
`is evidence that a person of ordinary skill in the art would have understood
`that copyright information is standard information for an MP3 file, and that
`each is subject to a copyright owner. Id. at 27.
`As to claim 8, step (b), Petitioner asserts that Rolf discloses a remote
`facility that stores a database of music files and allows for the selection of
`one or more of those files by a cellular phone for download, and that the
`selection in accordance with this claimed step occurs when the user of the
`cell phone requests download of a music recording. Pet. 27–28 (citing, e.g.,
`Ex. 1003, 5:49–53, 9:12–15).
`As to claim 8, step (c), Petitioner asserts that Rolf does not disclose
`the transmission of just a portion of the file, but that this feature would have
`been obvious in view of the “pre-listen” functionality in Fritsch. Pet. 28.
`Specifically, Petitioner directs our attention to Fritsch’s description of a
`music download system similar to Rolf, in which a user can pre-listen to
`desired music prior to purchase. Id. at 28–29 (citing, e.g., Ex. 1004, 4:54–
`58, 5:52–56). Petitioner asserts that a person of ordinary skill in the art
`would have reason to add this “pre-listen” feature into the similar system of
`Rolf in order to provide, inter alia, “[t]he benefits of the age-old sales
`technique of ‘try before you buy.’” Id. at 30 (citing Ex. 1002 ¶¶ 111–115).
`As to claim 8, step (d), Petitioner asserts that Rolf discloses the
`transmission of a selected music file in its entirety rather than just a portion.
`Id. at 31–32. Petitioner asserts this would have been obvious in view of
`Fritsch, which discloses the “try before you buy” feature, and this step is
`merely the “buy.” Id. at 32–33.
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`As to claim 8, step (e), Petitioner asserts that it has explained why
`would have been obvious to use OFDM to transmit the data file in step (a).
`Id. at 34–35. As to the limitation that the cell phone includes a DSP to
`receive the file, Petitioner points out that Rolf includes a processor, but does
`not expressly disclose what type of processor it is. Id. at 35. However,
`Petitioner asserts that DSPs were well known to persons of ordinary skill in
`the art, as confirmed by Gatherer, which explains the functions that could be
`performed by a DSP on a cell phone. Id. (citing, e.g., Ex. 1005, 84, 85).
`Petitioner reasons that it would been obvious to a person of ordinary skill in
`the art to use a DSP in the cell phone for the reasons expressed in Gatherer,
`for example, being a “cost-effective, flexible upgrade path for the variety of
`evolving standards.” Id. at 35–36 (citing, e.g., Ex. 1005, 86; Ex. 1002
`¶ 129); id. at 37–41 (providing further discussion).
`Reviewing the arguments and evidence provided by Petitioner, we are
`persuaded that it has established that each feature of claim 8 was taught by
`the prior art, and has established a reason to combine the features in the
`manner claimed. We have considered the arguments set forth in Patent
`Owner’s Response, but are persuaded that Petitioner has established these
`facts by a preponderance of the evidence. We now turn to Patent Owner’s
`arguments.
`Patent Owner first argues that Rolf and Frodigh do not disclose the
`transmission of the data file by OFDM. PO Resp. 28–29. Patent Owner
`asserts that Frodigh discloses using OFDM for phone calls, but not data. Id.
`at 28. Patent Owner, however, does not address the portion in Frodigh that
`states that “[v]oice and data to be transmitted on each link are modulated,”
`which is cited by Petitioner in its Petition. Ex. 1006, 7:58–59 (cited at Pet.
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`22); see also Ex. 1005, 89 (“Bits, after all, are just bits, and they can be used
`to transmit data as well as voice”). Patent Owner also argues that Frodigh
`and Hacker fail to describe transmitting a data file such as an MP3 file using
`OFDM (PO Resp. 28–29), but this argument only considers the references’
`teachings in isolation rather than in combination with each other. As
`explained above, Petitioner cites to Rolf for the general music data file
`transfer system, Frodigh for the particular transmission protocol, and Hacker
`for the simple background fact that MP3s are subject to copyright. Thus,
`once Rolf’s system is specified to transmit using the known OFDM protocol,
`as suggested in Frodigh, it would then transmit the music files (MP3s) using
`OFDM. We find this rationale to be backed by persuasive evidence. See,
`e.g., Ex. 1006, 1:59–63 (“Frequency division multiplexing (FDM) is a
`method of transmitting data that has application to cellular systems.
`Orthogonal frequency division multiplexing (OFDM) as a particular method
`of FPM that is particularly suited for cellular systems.”), 2:38–39 (“OFDM
`offers several advantages that are desirable in a cellular system.”).11
`We note that this is not a case where there are many options (e.g.,
`wireless transmission protocols) and choosing a particular option (e.g.,
`OFDM) among many is invention in and of itself. See, e.g., Takeda Chem.
`Indus. V. Alphapharm Pty., 492 F.3d 1350, 1357 (Fed. Cir. 2007) (finding
`claims patentable when the prior art identified fifty-four candidate
`compounds but insufficient reason was given to target particular
`compounds). The ’870 patent chose OFDM not because of its suitability for
`
`11 In Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017),
`the Federal Circuit affirmed that the Board’s finding that it would have been
`obvious to use OFDM in Rolf’s system.
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`wireless transmission protocols, but “to provide enough speed for the data
`transmission” over the audio connection of a land line. Ex. 1001, 16:29–
`17:53. In the exemplary embodiment, OFDM is used for “transmitting data
`through the phone line” where a “customer does not need to use a Wireless
`Internet Service Provider.” Id. at 16:29–58. Here, given the breadth of the
`claim, Petitioner’s ground relies on OFDM as being an obvious candidate
`wireless protocol. That assertion is founded on credible evidence (e.g.,
`Frodigh, testimony of Dr. Lavian), and Petitioner’s reasons for including
`OFDM need not match the inventor’s. KSR Int’l Co. v. Teleflex Inc., 550 US
`398, 419 (2007) (“In determining whether the subject matter of a patent
`claim is obvious, neither the particular motivation nor the avowed purpose
`of the patentee controls.”).
`Patent Owner next argues that Petitioner has provided no evidence or
`explanation to support the conclusion that Rolf’s processor can be a DSP.
`PO Resp. 30–32. This argument again only considers the references in
`isolation because, as explained above, it is the combination of references that
`Petitioner uses to assert that this requirement would have been obvious.
`Gatherer explains that DSPs are “pervasive” in cellular telephones for
`various reasons, and their inclusion provides a “significant advantage.” Ex.
`1005, 84 (“DPSs are pervasive in the wireless handset market”), 85
`(discussing the “increase in the fraction of DSP [processing power used in
`cell phones] and noting “we expect this trend to accelerate”), 85 (“DSPs
`have a significant advantage over [the prior technology]”), 85–86 (“DSPs
`are essential to provide a cost-effective, flexible upgrade path”), 89 (noting
`“applications requirements will also drive a need for more powerful DSPs”).
`It is this teaching that is applied to the proposed combination of references,
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`and we find more than sufficient evidence that a person of ordinary skill in
`the art would have had reason to include DSPs for cell phone applications.
`Patent Owner then argues that “Rolf and Frodigh are premised on two
`entirely different systems of network communication,” and that this teaches
`away from their combination. Prelim. Resp. 32–35. Contrary to Patent
`Owner’s unsupported attorney argument, we find no basis to suggest that the
`skilled artisan would understand that Rolf’s system could only be
`implemented on a cellular network using, e.g., the 3G CDMA protocol. Rolf
`recites no particular transmission protocol—it is agnostic as to the
`transmission protocol. See generally Ex. 1003. Further, the evidence cited
`by Patent Owner regarding the SMG’s12 decision to use the CDMA protocol
`in the 3G standard indicates that there were advantages and drawbacks to
`both OFDM (Ex. 2005, 1–2) and CDMA (id. at 3–4) as a commercial
`standard. The non-adoption of OFDM as the standard protocol is not
`meaningful evidence of non-obviousness here. Accord Orthopedic Equip.
`Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“[T]he fact that
`the two disclosed apparatus would not be combined by businessmen for
`economic reasons is not the same as saying that it could not be done because
`skilled persons in the art felt that there was some technological
`incompatibility that prevented their combination. Only the latter fact is
`telling on the issue of nonobviousness.”). Indeed, as Petitioner points out, it
`
`
`12 “SMG” stands for the European Telecommunications Standards Institute’s
`Special Mobile Group. PO Resp. 33; Pet. Reply 3. This group allegedly
`convened to decide the transmission protocol for the third generation (3G) of
`wireless communications systems, i.e., the transmission protocol for cell
`phones.
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`is further evidence that a person of ordinary skill in the art would consider
`OFDM as a transmission protocol—because SMG did consider OFDM, even
`though it chose CDMA for the 3G standard. Pet. Reply 16–17; Ex. 1002
`¶ 94 (Petitioner’s expert testifying that “OFDM was one of a finite number
`of known techniques” and that “telecom heavyweights . . . had actively
`developed cellular systems employing OFDM for over a decade”).
`Patent Owner then argues that claim 8 “requires that the receiver and
`processor be configured to receive and process files transmitted by OFDM.”
`PO Resp. 35–37. Claim 8 does not recite a receiver or processor, however.
`The only structure set forth with respect to the method is that it is
`“executable by a computer system that includes server hardware and a
`database.” Patent Owner appears to be referencing, in part, the cellular
`phone to which the method of claim 8 “provides . . . the requested data file.”
`The cellular phone is said to “receive the data file . . . by . . . OFDM.” But
`the claim stops at the action of “providing for the transmitting” by the
`computer system, and does not include the steps for receipt or processing at
`the cell phone. At most, it requires that the computer system cause a
`transmission using OFDM, because the cell phone that receives the
`transmitted files uses OFDM. The cell phone, in turn, must be able to
`communicate using OFDM in order to receive the file, but the claim does
`not specify what processors or other structures it uses to decode and play the
`file (e.g., play it on a speaker of the phone or an attached device).
`Furthermore, to the extent Patent Owner is arguing that adding OFDM
`and/or DSP to Rolf’s phone or the associated cellular infrastructure is
`unpredictable or overly difficult, the evidence would not support such a
`conclusion. We are not aware of any credible evidence that implementing
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`an OFDM protocol in a cell phone is unpredictable or would require undue
`experimentation. To the contrary, Frodigh states that “OFDM . . . is
`particularly suited for cellular systems.” Ex. 1006, 1:59–63. Dr. Lavian also
`testifies that “telecom heavyweights . . . have actively developed cellular
`systems employing OFDM for over a decade.” Ex. 1002 ¶ 94; see also id.
`¶ 34 (citing Ex. 1024, Abstract; Ex. 1007 ¶¶ 1, 8; Ex. 1009; Ex. 1010).
`Similarly, we are not aware of any credible evidence that implementing a
`DSP in a cell phone is unpredictable or would require undue
`experimentation. To the contrary, it is routine. See, e.g., Ex. 1005, 84
`(“Programmable DSPs are pervasive in the wireless handset market for
`digital cellular telephony.”); Ex. 1002 ¶ 25 (“by the turn of the century,
`DSPs had become immensely popular”), ¶ 27 (“the entire digital wireless
`industry operate[d] with DSP-enabled handsets”) (quoting Ex. 1014, 52, left
`column). Accordingly, we find that the proposed modifications to Rolf’s
`phone to include OFDM and DSP would have yielded a predictable result
`and would not require undue experimentation.
`Petitioner has shown where each limitation of claim 8 is found in the
`prior art and has shown why a person of ordinary skill in the art would have
`combined the teachings of the prior art in the manner claimed.13 Based on
`the preponderance of the evidence, we determine that Petitioner has
`demonstrated that the subject matter of claim 8 of the ’870 patent would
`
`13 We note that although the combination has five references, the
`combination is essentially Rolf in view of Fritsch. The cell phone in Rolf
`necessarily has a processor and a transmission method, and Gatherer and
`Frodigh are cited for known options in that regard. Hacker does not serve to
`bring in features, but rather provides background information regarding
`copyrights.
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`have been obvious to a person of ordinary skill in the art at the time of the
`invention in view of Rolf, Gatherer, Fritsch, Hacker, and Frodigh.
`b. Dependent Claims 12–14
`Turning now
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