Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 37
`Entered: September 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STINGRAY DIGITAL GROUP INC.,
`Petitioner,
`
`v.
`
`MUSIC CHOICE,
`Patent Owner.
`
`Case IPR2017-00888
`Patent 7,320,025 B1
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, GREGG I. ANDERSON, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`Stingray Digital Group Inc. (“Petitioner”) filed a petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 1, 3, 4, and 8 (the
`
`“challenged claims”) of U.S. Patent No. 7,320,025 B1 (Ex. 1001, “the
`
`’025 patent”). 35 U.S.C. § 311. Music Choice (“Patent Owner”) timely
`
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On September 21,
`
`
`Tel: 571-272-7822
`
`Paper 37
`Entered: September 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STINGRAY DIGITAL GROUP INC.,
`Petitioner,
`
`v.
`
`MUSIC CHOICE,
`Patent Owner.
`
`Case IPR2017-00888
`Patent 7,320,025 B1
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, GREGG I. ANDERSON, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`Stingray Digital Group Inc. (“Petitioner”) filed a petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 1, 3, 4, and 8 (the
`
`“challenged claims”) of U.S. Patent No. 7,320,025 B1 (Ex. 1001, “the
`
`’025 patent”). 35 U.S.C. § 311. Music Choice (“Patent Owner”) timely
`
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On September 21,
`
`
`
`IPR2017-00888
`Patent 7,320,025 B1
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`2017, based on the record before us at the time, we instituted an inter partes
`
`review of claims 1, 3, 4, and 8. Paper 7 (“Institution Decision” or “Dec.”).
`
`We instituted the review on the following challenges to the claims:
`
`Basis
`
`Claims
`challenged
`
`§ 103
`
`1, 3, and 4
`
`References
`
`International Patent Publication WO 00/19662
`(Ex. 1004, “Mackintosh”) and Hallier, J.,
`Multimedia Broadcasting to mobile, portable and
`fixed Receivers using the Eureka 147 Digital
`Audio Broadcasting System; Proceedings of the
`5th IEEE International Symposium on Personal,
`Indoor and Mobile Radio Communications, The
`Hague, The Netherlands, Sept. 18–22, 1994
`(Ex. 1006, “Hallier”)
`
`U.S. Patent Application Publication No.
`2002/0078456 A1 (Ex. 1005, “Hudson”)
`
`§ 102(b) 8
`
`After we instituted this review, Patent Owner filed a Patent Owner
`
`Response in opposition to the Petition (Paper 19, “PO Resp.”) that was
`
`supported by a Declaration from Samuel Russ, Ph.D. (Ex. 2001). Petitioner
`
`filed a Reply in support of the Petition (Paper 27, “Reply”) that was
`
`supported by a Reply Declaration of Michael Shamos, Ph.D. (Ex. 1010).
`
`Patent Owner did not move to amend any claim of the ’025 patent.
`
`We heard oral argument on June 19, 2018. A transcript of the
`
`argument has been entered in the record (Paper 36, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). 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 is issued pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73.
`
`2
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`IPR2017-00888
`Patent 7,320,025 B1
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`For the reasons expressed below, we conclude that Petitioner has
`
`demonstrated by a preponderance of evidence that claims 1, 3, and 4 are
`
`unpatentable, but it has failed to do so for claim 8.
`
`B. RELATED PROCEEDINGS
`
`The parties identified as a related proceeding the co-pending district
`
`court litigation of Music Choice v. Stingray Digital Group, Inc., No. 2:16-cv-
`
`00586-JRG-RSP (E.D. Tex. June 6, 2016). Pet. 1; Paper 5, 2. Patent Owner
`
`identifies a number of other applications, patents, or proceedings as being
`
`related to this proceeding, including:
`
`a. Stingray Digital Group Inc. v. Music Choice, IPR2017-01191
`
`(PTAB), involving related U.S. Patent No. 9,351,045;
`
`b. Music Choice v. Stingray Digital Group Inc. and Stingray Music
`
`USA, Inc., Case No. 2:16-cv-00586-JRG-RSP (E.D. Tex.);
`
`c. U.S. Patent Application Serial Number 10/098,620, issued as U.S.
`
`Patent No. 7,783,722 on August 24, 2010;
`
`d. U.S. Patent Application Serial Number 60/390,312, filed on June
`
`21, 2002 (Expired);
`
`e. U.S. Patent Application Serial Number 60/395,360, filed on July 12,
`
`2002 (Expired);
`
`f. U.S. Patent Application Serial Number 10/339,425, issued as U.S.
`
`Patent No. 7,325,043 on January 29, 2008;
`
`g. U.S. Patent Application Serial Number 60/612,618, filed on
`
`September 24, 2004 (Expired);
`
`h. U.S. Patent Application Serial Number 11/963,164, issued as U.S.
`
`Patent No. 8,166,133 on April 24, 2012;
`
`3
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`
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`IPR2017-00888
`Patent 7,320,025 B1
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`i. U.S. Patent Application Serial Number 13/453,826, filed on April
`
`23, 2012 (Abandoned);
`
`j. U.S. Patent Application Serial Number 14/153,872, filed on January
`
`13, 2014 (Abandoned);
`
`k. U.S. Patent Application Serial Number 14/635,483, issued as U.S.
`
`Patent No. 9,351,045 on May 24, 2016;
`
`l. U.S. Patent Application Serial Number 15/162,259, filed on May 23,
`
`2016 (Abandoned); and
`
`m. U.S. Patent Application Serial Number 15/485,417, filed on April
`
`12, 2017 (Pending).
`
`Paper 5, 2–3.
`
`4
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`Patent 7,320,025 B1
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`C. THE ’025 PATENT
`
`The ’025 patent relates to “broadcast, on-demand and/or personalized
`
`entertainment and information systems.” Ex. 1001, 1:24–25. Figure 1,
`
`reproduced at right, is a block diagram illustrating an embodiment of
`
`system 100. System 100 may include distribution center 104 with “one or
`
`more broadcast
`
`signal receiving
`
`systems 120 for
`
`receiving signals
`
`transmitted from
`
`broadcast media
`
`source 102,” as well
`
`as a “transmission
`
`system 122 for
`
`combining an output
`
`of signal receiving
`
`systems 120 and on-
`
`demand channels
`
`outputted by on-
`
`demand system 192
`
`to generate a
`
`combined signal
`
`125” for
`
`transmission to a
`
`plurality of client
`
`systems 110. Id. at 4:37–46.
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`“[M]edia source 102 transmits to the distribution centers 104 audio
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`data corresponding to a song, video data to complement the audio data, and
`
`client application data,” and each “distribution center 104 may retransmit
`
`some or all of this data
`
`to a plurality of client
`
`systems 110.” Id.
`
`at 5:45–50. “[T]he
`
`client application data
`
`may control at least
`
`part of the user
`
`interface displayed to
`
`the user 101,” as shown
`
`in Figure 3, which is
`
`reproduced at right. Id.
`
`at 5:57–58. “[V]ideo
`
`content” may
`
`correspond to one or
`
`more “still images 302, 304 and text 306, 308 . . . all of which may be
`
`related to the current audio content of the broadcast channel.” Id. at 5:63–
`
`66. The “application data” may control the user interface to display one or
`
`more buttons, such as buttons 311, 312, 313, and 319, to enable a user to
`
`directly “link” from the broadcast content to on-demand content. Id. at 6:5–
`
`40, 8:26–46. To initiate the on-demand session, the “client system 110 may
`
`transmit to on-demand system 192 information identifying the button
`
`activated.” Id. at 6:38–46. Additionally, “activating a particular button may
`
`cause client system 110 to transmit to on-demand system 192 an asset
`
`6
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`IPR2017-00888
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`identifier associated with an asset,” and “[i]n response to receiving the asset
`
`identifier, on-demand system 192 may cease the current asset and transmit
`
`the asset identified by the identifier.” Id. at 8:55–60.
`
`Claims 1 and 8, which are the independent claims among the
`
`challenged claims, recite:
`
`1. A method, comprising:
`
`[a] configuring a client system to receive and play music
`broadcast from a broadcast media source through a broadcast
`channel;
`
`[b] receiving application data at the client system, the application
`data including a video identifier identifying a video, wherein
`the application data is transmitted with the broadcast music;
`
`[c] while the client system is playing the broadcast music, (a)
`enabling a user of the client system to indicate that the user
`desires to view the video and (b) receiving an indication that
`the user desires to view the video;
`
`[d] in response to receiving the indication, [i] automatically
`ceasing the playing of the broadcast music, [ii] transmitting
`from the client system to an on-demand system the received
`video identifier, and establishing an on-demand session
`between the on-demand system and the client system; and
`
`[e] after establishing the on-demand session, transmitting from
`the on-demand system to the client system the identified
`video, receiving the transmitted video at the client system,
`and automatically playing the received video in response to
`receiving the transmitted video from the on-demand system.
`
`Id. at 16:41–64 (with the parties’ labeling indicated within square brackets).
`
`8. A video-on-demand method comprising,
`
`[a] receiving at an on-demand system information indicating that
`a user desires to view a selected video;
`
`7
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`[b] creating a playlist, wherein the playlist includes a plurality of
`media assets, including one media asset corresponding to the
`selected video;
`
`[c] transmitting to a client system a media asset listed in the
`playlist;
`
`[d] transmitting to the client system a video identifier while
`transmitting to the client system the media asset;
`
`[e] while the client system is playing the media asset, (a) enabling
`a user of the client system to indicate that the user desires to
`view the video identified by the video identifier and (b)
`receiving an indication that the user desires to view the video;
`
`[f] receiving from the client system a message including the
`video identifier, wherein the message is received while at
`least a portion of the media asset is being transmitted to the
`client system; and
`
`[g] in response to receiving the message from the client system,
`ceasing transmitting the media asset and transmitting the
`video identified by the video identifier.
`
`Id. at 17:19–40 (with the parties’ labeling indicated within square brackets).
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`“A claim in an unexpired patent . . . shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority
`
`to construe claims according to Rule 42.100(b)). When applying that
`
`standard, we interpret the claim language as it would be understood by one
`
`of ordinary skill in the art in light of the specification, and absent any special
`
`definition, we give claim terms their ordinary and customary meaning. See
`
`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re
`
`8
`
`
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary
`
`and customary meaning is the meaning that the term would have to a person
`
`of ordinary skill in the art in question.” (internal quotation marks omitted)).
`
`Only terms which are in controversy need to be construed, and then only to
`
`the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`We find it necessary only to resolve the parties’ dispute over whether
`
`the first two steps recited in claim 8 must be performed in the order in which
`
`they appear in the claim.1 Patent Owner argues that the first two steps
`
`recited in claim 8 must be performed in the order recited. PO Resp. 11–12.
`
`Petitioner disagrees. Reply 5–6. The parties refer to these two steps as 8a
`
`and 8b. Pet. 37, 40; PO Resp. 11; Reply 5. Claim 8 recites these steps as
`
`follows:
`
`[a] receiving at an on-demand system information indicating that
`a user desires to view a selected video;
`
`[b] creating a playlist, wherein the playlist includes a plurality of
`media assets, including one media asset corresponding to the
`selected video;
`
`Ex. 1001, 17:20–24.
`
`Petitioner argues that we should follow the general rule that “[u]nless
`
`the steps of a method [claim] actually recite an order, the steps are not
`
`ordinarily construed to require one.” Reply 6 (quoting Mformation Techs.,
`
`
`1 In the Decision on Institution, we instructed the parties to brief the
`meaning of “video identifier” as recited in claims 1 and 8, and “a message
`including the video identifier” and “in response to receiving the message” as
`recited in claim 8. Dec. 23. The parties agreed upon the express meaning of
`all three phrases, PO Resp. 7–8; Reply 2, which we adopt for the purposes of
`this Final Written Decision.
`
`9
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`Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014)).
`
`“However, a claim ‘requires an ordering of steps when the claim language,
`
`as a matter of logic or grammar, requires that the steps be performed in the
`
`order written, or the specification directly or implicitly requires’ an order of
`
`steps.” Mformation, 764 F.3d at 1398.
`
`Here, the step of “creating a playlist” that includes an asset
`
`“corresponding to the selected video” logically requires completing the step
`
`of “receiving . . . information indicating that a user desires to view a selected
`
`video.” The “selected video” that must be included in the playlist created in
`
`step 8b is not determined until after step 8a is completed. Therefore, step 8a
`
`must be completed before step 8b is started.
`
`Petitioner argues that claim 8 must be interpreted to cover an
`
`embodiment in which the user selects videos for a customized playlist,
`
`which are sent to the on-demand system and then later played back to the
`
`user. Reply 6 (citing Ex. 1001, 8:2–24). The cited portion of the
`
`Specification indicates that the selection of videos by user 101 is transmitted
`
`to system 192 in step 510 of Figure 5, which precedes step 512 in which
`
`“system 192 creates a playlist of media assets.” Ex. 1001, 8:13–16. The
`
`Specification also indicates that the “playlist includes the video(s) selected
`
`by the user 101 and zero or more other media assets. For example, the
`
`playlist may include one or more short advertisements in addition to the
`
`video(s) selected by the user 101.” Id. at 8:20–24. Although the playlist
`
`may include only those videos selected by the user, system 192 creates that
`
`playlist only after receiving information from user 101 regarding the
`
`selection of videos for inclusion in the playlist. Id. at 8:2–24.
`
`10
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`IPR2017-00888
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`For all these reasons, we conclude that steps 8a and 8b of claim 8
`
`must be performed in the order recited.
`
`B. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`
`In our Institution Decision, we concluded that the argument and
`
`evidence adduced by Petitioner demonstrated a reasonable likelihood that
`
`claims 1, 3, 4, and 8 were unpatentable as anticipated or obvious based on
`
`the challenges identified in the table in Part I.A above. Dec. 22–23. We
`
`must now determine whether Petitioner has established by a preponderance
`
`of the evidence that the specified claims are unpatentable over the cited prior
`
`art. 35 U.S.C. § 316(e). In this connection, we previously instructed Patent
`
`Owner that “any arguments for patentability not raised in the [Patent Owner
`
`Response] will be deemed waived.” Paper 8, 6; see also In re Nuvasive,
`
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s
`
`failure to proffer argument at trial as instructed in scheduling order
`
`constitutes waiver). Additionally, the Board’s Trial Practice Guide states
`
`that the Patent Owner Response “should identify all the involved claims that
`
`are believed to be patentable and state the basis for that belief.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`C. LEGAL STANDARDS
`
`Petitioner challenges the patentability of claims 1, 3, 4, and 8 on the
`
`grounds that the claims are either anticipated or obvious in light of various
`
`references including: Mackintosh, Hallier, and Hudson. To prevail in its
`
`challenges to the patentability of the claims, Petitioner must establish facts
`
`supporting its challenges by a preponderance of the evidence. 35 U.S.C.
`
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`
`the burden from the onset to show with particularity why the patent it
`
`11
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`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`
`partes review petitions to identify “with particularity . . . the evidence that
`
`supports the grounds for the challenge to each claim”)). This burden never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`
`burden of proof in inter partes review).
`
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`
`631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v.
`
`Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining
`
`obviousness set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The
`
`KSR Court summarized the four factual inquiries set forth in Graham that
`
`we apply in determining whether a claim is reasonably likely to be
`
`unpatentable as obvious under 35 U.S.C. § 103(a) as follows:
`
`(1) determining the scope and content of the prior art, (2) ascertaining the
`
`differences between the prior art and the claims at issue, (3) resolving the
`
`level of ordinary skill in the pertinent art, and (4) considering objective
`
`evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406
`
`(citing Graham, 383 U.S. at 17–18). In an inter partes review, Petitioner
`
`cannot satisfy its burden of proving obviousness by employing “mere
`
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F. 3d 1364,
`
`1380 (Fed. Cir. 2016). Thus, to prevail, Petitioner must explain how the
`
`proposed combinations of prior art would have rendered the challenged
`
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`claims unpatentable. With these standards in mind, we address each
`
`challenge below.
`
`D. CLAIM 8: ANTICIPATION BY HUDSON
`
`Petitioner contends that Hudson anticipates claim 8. Pet. 29–48. For
`
`the reasons stated below, we determine that Petitioner has failed to
`
`demonstrate that Hudson anticipates claim 8.
`
`1. Overview of Hudson
`
`Hudson relates to “a system and methods for creating and distributing
`
`interactive video content.” Ex. 1005 ¶ 6. Hudson describes providing
`
`“primary content” and “ancillary content” with the ancillary content being
`
`accessed by interacting with an interface link that is displayed while a user is
`
`viewing the primary content.
`
`For example, if the user is watching a basketball game, and the
`user is interested in a particular shoe worn by a basketball player,
`the user may select the interface link associated with the
`basketball player’s shoe. Interacting with the interface link
`associated with the basketball shoe allows the user to access one
`or more pages of information or media content related to the shoe
`of interest, including retail information. During the user’s
`interaction with the interface link, the video stream is paused
`until the user returns to or continues the video stream delivery.
`
`Id. ¶ 9. The ancillary content may be, for example, another video. Id. ¶ 25.
`
`The interface links used to access ancillary content while viewing primary
`
`content may be embedded in and streamed with the primary video content.
`
`Id. ¶ 30.
`
`Petitioner describes one manner in which Hudson
`
`presents primary video content and the embedded link for
`
`accessing ancillary content in the colorized version of a
`
`portion of Hudson’s Figure 5, reproduced at right. Hudson
`
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`presents primary video content in the yellow rectangle along with an
`
`interface link (green) that is displayed as a “floating bug” on top of the
`
`primary video content. Pet. 39 (citing Ex. 1005 ¶¶ 24, 37, Figure 5). When
`
`the user clicks on the interface link (green), the primary video content is
`
`paused and ancillary content is displayed to the user. Ex. 1005 ¶¶ 25, 37,
`
`Figure 4.
`
`Hudson explains the manner in which a user watching primary video
`
`content can interact with an interface link in connection with the logic flow
`
`diagram of Figure 4, which is reproduced below right, as follows:
`
`If the user decides to interact
`with an interface link in step
`404, then the user selects a
`desired interface link corre-
`sponding to an object of
`interest.
`. . . Once
`an
`interaction with the interface
`link has been detected, in step
`408
`the video stream
`is
`paused or interrupted.
`
`[0038] In step 410, the
`IP address associated with the
`interacted interface link is
`accessed. . . . In step 412, a
`hub page and any associated
`metadata with the accessed
`address are delivered to the
`user.
`
`[0039] . . . If the user
`decides not to select any
`further pages, then in step
`420 the user may decide
`whether to continue the video
`stream in step 422.
`
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`Id. ¶¶ 37–39.
`
`Hudson organizes its video content into “storyboards,” which are
`
`implemented using “hub pages” that include links to the video content. Id.
`
`¶¶ 24, 26. Each “hub page” may also include links to “sub-pages” that a
`
`user may select to access content related to the primary content shown on the
`
`hub page. Id. ¶¶ 26, 38, 42. Once the storyboard is created and the hub and
`
`sub-pages reflecting the storyboard are generated, a user may navigate the
`
`storyboard in any order he desires. Id. ¶ 39.
`
`2. Analysis
`
`Patent Owner argues that Hudson fails to describe creating a playlist
`
`(step 8b) after the on-demand system receives information indicating that a
`
`user wishes to view a selected video (step 8a). PO Resp. 62–63. Petitioner
`
`contends that a “video (‘primary content’) is requested and played in a first
`
`page of a storyboard. Interface links in a storyboard page allow a user to
`
`select other videos or content (‘ancillary content’).” Pet. 40–41. Petitioner
`
`concludes that an ordinarily skilled artisan would understand that “when a
`
`user requests to view a video,” Hudson’s “system creates a playlist
`
`(‘storyboard’) for the user.” Pet. 41 (citing Ex. 1003 ¶¶ 51–57).
`
`Patent Owner points out that Hudson distributes the video content
`
`associated with its storyboards to servers 106, 206 in step 360 before a user
`
`can select and view any primary or ancillary content. PO Resp. 63. Hudson
`
`illustrates its “method for creating interactive video content” in Figure 3,
`
`reproduced below. Ex. 1005 ¶ 17.
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`15
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`
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`Hudson’s Figure 3 is a logic diagram setting forth the steps for
`creating interactive video content. Id. ¶ 24
`
`Hudson creates a storyboard at step 300 and programs and associates
`
`interface links with each storyboard at steps 340, 350. Id. ¶ 29. Video
`
`content is distributed to video servers 106, 206 in step 360. Id. ¶ 35.
`
`Corresponding web pages with the interface links associated with the video
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`content are distributed to web servers 108, 208 in step 370. Id.; see also id.
`
`¶ 28 (“Hub pages and sub-pages may be stored, for example, on web server
`
`108, 208.”) Users access media content by interacting with the interface
`
`links. Id. ¶ 37; see also id. Fig. 4 (illustrating logic for method of delivering
`
`interactive video content).
`
`For the reasons expressed in Part II.A above, we conclude that claim 8
`
`requires the first two steps of the claimed method to be performed in the
`
`order recited, which means that users select at least one video to view before
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`playlists are created containing the selected video. Under such an
`
`interpretation, Petitioner argues that Hudson describes the required order
`
`because Hudson expressly states that the steps illustrated in its Figures 3 and
`
`4 may be performed in any order. Reply 20 (citing Ex. 1005 ¶ 35 (for Figure
`
`3), ¶ 40 (for Figure 4)). However, Hudson’s indications that steps can be
`
`performed in any order apply only to each of Figures 3 and 4 individually,
`
`and not to the combination of the two figures collectively.
`
`In connection with its description of Figure 3, Hudson states “the
`
`aforementioned steps need not be performed in a particular order” followed
`
`by examples that apply only to steps mentioned in Figure 3. Ex. 1005 ¶ 35.
`
`Similarly, while describing Figure 4, Hudson states “the aforementioned
`
`steps need not occur in a particular order, or include all steps” followed by
`
`examples that apply only to steps mentioned in Figure 4. Ex. 1005 ¶ 40.
`
`Hudson never indicates that steps illustrated in Figure 4 may occur before
`
`steps illustrated in Figure 3. In Figure 3, Hudson illustrates how its system
`
`creates interactive video content, which necessarily must be completed
`
`before the steps for delivering interactive video content in Figure 4 are
`
`possible. For all these reasons, we determine that Petitioner has failed to
`
`establish that Hudson performs the first two steps of claim 8 in the order
`
`recited as required. Accordingly, we conclude that Petitioner has not shown
`
`by a preponderance of evidence that Hudson anticipates claim 8.
`
`E. CLAIMS 1, 3, AND 4:
`OBVIOUSNESS IN VIEW OF MACKINTOSH AND HALLIER
`
`Petitioner contends the combination of Mackintosh and Hallier
`
`renders claims 1, 3, and 4 unpatentable as obvious. Pet. 8–29. For the
`
`reasons stated below, we determine that Petitioner has demonstrated by a
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`preponderance of evidence that the combination of Mackintosh and Hallier
`
`renders claims 1, 3, and 4 unpatentable as obvious.
`
`1. Overview of Mackintosh
`
`Mackintosh describes a system for delivering music such as a radio
`
`broadcast and supplemental content that may include video. Ex. 1004, 3:12–
`
`20.2 In one embodiment, Mackintosh describes that supplemental materials
`
`can be shown on a user’s media player such as the one shown, for example,
`
`in Mackintosh’s Figure 7, which we reproduce below right. Mackintosh
`
`describes the exemplary player and user interface of Figure 7 as follows:
`
`Data window 3023 provides a place to display supple-
`mental information or materials retrieved from other servers such
`as data server 116 or supplemental server 120. For the example
`of the radio station as provided in Figure 5, data window 302 can
`include an album
`image 322, artist or
`album
`or
`track
`information 324, a
`buy now button 326,
`and additional infor-
`mation
`selection
`area
`328. Data
`window 302 can be
`implemented
`to
`include
`other or
`additional
`infor-
`mation or supple-
`mental materials as
`well.
`
`
`2 Citations to Exhibit 1004 refer to Mackintosh’s original page numbering.
`
`3 Data window 302 is the unlabeled white rectangle in which elements 322,
`324, 326, 328 are embedded. Ex. 1004, 16:13–15; Ex. 1003 ¶ 31.
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`18
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`Id. at 16:11–16. Mackintosh’s supplemental materials can include video
`
`clips among other types of media. Id. at 6:11–13.
`
`2. Overview of Hallier
`
`Hallier is a paper describing a digital audio broadcasting (“DAB”)
`
`system. Ex. 1006, Abstract. The DAB system simultaneously delivers
`
`audio, image, video, and other data content multiplexed into a single data
`
`stream of up to 1.728 Mbit/s bandwidth. Id. at 794.4
`
`3. Petitioner’s Arguments and Evidence
`
`Petitioner identifies in detail the portions of Mackintosh and Hallier
`
`that describe each limitation of claim 1. Pet. 8–48 (citing Ex. 1004, 3:5–
`
`4:1–22, 6:6–13, 7:10–15, 7:20–23, 8:18–24, 10:11–16, 10:31–32, 12:21–28,
`
`13:11–14:5, 15:34–16:15, 17:13–26, 17:31–36, 30:1–8, Figures 7, 12;
`
`Ex. 1006, 794). Petitioner also supports it contentions with expert testimony
`
`from Dr. Shamos. Id. (citing Ex. 1003 ¶¶ 34–37, 44–47, 51–57). Petitioner
`
`relies on Mackintosh as describing or suggesting every element of claims 1,
`
`3, and 4, except for the requirement that “the application data [including a
`
`video identifier] is transmitted with the broadcast music” as recited in the
`
`limitation referenced as 1b. Id. at 13, 16–29. Petitioner relies upon Hallier
`
`as describing multiplexing data, such as a video identifier, into a broadcast
`
`audio stream. Id. at 12–14, 17–19. Mackintosh suggests that video
`
`identifiers relating to the broadcast music “may be URLs that specify a
`
`music video or videos.” Id. at 18–19 (citing Ex. 1004, 13:11–27, 13:34–35);
`
`Reply 13 (citing Ex. 1003 ¶¶ 33–35).
`
`
`4 Citations to Exhibit 1006 refer to Hallier’s original page numbering.
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`Petitioner acknowledges that Mackintosh does not expressly describe
`
`step 1d(i), “automatically ceasing the playing of the broadcast music,” but
`
`contends that an ordinarily skilled artisan would have considered it obvious
`
`to do so. Id. at 24–25 (citing Ex. 1003 ¶¶ 44–45, Ex. 1004, 13:28–33,
`
`17:24–26). Petitioner also contends that an ordinarily skilled artisan would
`
`have found it obvious to modify Mackintosh to incorporate Hallier’s
`
`multiplexing method to avoid load-related problems that Mackintosh
`
`recognized in connection with its data server 214. Id. at 13–15.
`
`Patent Owner summarizes the modifications that Petitioner proposes
`
`to Mackintosh based upon Hallier in a modified and annotated version of
`
`Mackintosh’s Figure 5, which we reproduce below.
`
`Patent Owner’s annotated and modified version of Mackintosh’s
`Figure 5 illustrates the flow of broadcast audio with URLs to user
`terminals 212. PO Resp. 30; Ex. 2001 ¶ 75.
`
`
`
`20
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`In the modified version of Mackintosh, radio station 204 retrieves
`
`URLs that refer to supplemental content that is related to the broadcast audio
`
`from data server 214. Radio station 204 multiplexes the broadcast audio
`
`with the URLs and sends the multiplexed data to ISP 208, which broadcasts
`
`the multiplexed data over internet 210 to user terminals 212. Pet. 17–19
`
`(citing Ex. 1003 ¶¶ 34–37). Whenever a user indicates, via interaction with
`
`Mackintosh’s user interface, that the user wishes to see or hear supplemental
`
`content, user terminal 212 retrieves the supplemental content from
`
`supplemental server 216 using one of the URLs received in the audio stream.
`
`4. Analysis of Patent Owner’s Counterarguments
`
`Patent Owner argues that Petitioner’s challenges to claims 1, 3, and 4
`
`fail for three reasons. PO Resp. 15–42. First, Patent Owner argues that
`
`Petitioner has failed to establish that either Mackintosh or Hallier describes
`
`“automatically ceasing the playing of the broadcast music” in response to
`
`receiving an indication that a user wants to view a video identified by a
`
`video identifier as recited in limitation 1d(i). Id. at 15–23. Second, Patent
`
`Owner argues that Petitioner has failed to provide a reason why an ordinarily
`
`skilled artisan would modify Mackintosh to multiplex a video identifier with
`
`the broadcast music as set forth in limitation 1b. Id. at 23–38. Third, Patent
`
`Owner argues that the proposed combination of Mackintosh and Hallier fails
`
`to describe transmitting a video identified by a user “after establishing an
`
`on-demand session,” as recited in element 1e. Id. at 38–42. We address
`
`each argument in turn below.
`
`a) Limitation 1d(i)
`
`Limitation 1d(i) recites: “automatically ceasing the playing of the
`
`broadcast music” after the user indicates that he wishes to view the video
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`identified by the video identifier. Ex. 1001, 16:53–54. Petitioner
`
`acknowledges that Mackintosh does not expressly describe ceasing the
`
`music playback but contends that Mackintosh suggests it to an ordinarily
`
`skilled artisan. Pet. 24–25. Mackintosh states that “supplemental materials
`
`[e.g., video] can be coordinated with the broadcast material” (i.e., audio).
`
`Ex. 1004, 13:28–33. Dr. Shamos testifies that a user would not want to
`
`listen to simultaneous playback of two audio tracks (i.e., broadcast music
`
`and a supplemental video with an audio track). Ex. 1003 ¶¶ 44–45.
`
`Patent Owner argues that (1) Mackintosh expressly teaches
`
`simultaneously playing the broadcast with supplemental materials, PO
`
`Resp. 16, (2) an ordinarily skilled artisan has no motive to modify
`
`Mackintosh by preventing simultaneous playback to avoid annoying users,
`
`id. at 16–18, (3) Mackintosh already describes fu
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