Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: October 11, 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 IPR2017-01191
`Patent 9,351,045 B1
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, GREGG I. ANDERSON, and
`JOHN F. HORVATH, Administrative Patent Judges.
`Opinion for the Board filed by Administrative Patent Judge WEATHERLY.
`Opinion Dissenting-in-Part filed by Administrative Patent Judge
`HORVATH.
`Opinion Concurring with additional views filed by Administrative Patent
`Judge WEATHERLY
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`

`

`IPR2017-01191
`Patent 9,351,045 B1
`
`INTRODUCTION
`
`I.
`A. BACKGROUND
`Stingray Digital Group Inc. (“Petitioner”) filed a petition (Paper 2,
`“Pet.”) to institute an inter partes review of claims 1–20 (the “challenged
`claims”) of U.S. Patent No. 9,351,045 B1 (Ex. 1001, “the ’045 patent”).
`35 U.S.C. § 311. Music Choice (“Patent Owner”) timely filed a Preliminary
`Response. Paper 5 (“Prelim. Resp.”). On October 13, 2017, based on the
`record before us at the time, we instituted an inter partes review of claims 1–
`20. Paper 6 (“Institution Decision” or “Dec.”). We instituted the review to
`determine whether the challenged claims are unpatentable as obvious under
`35 U.S.C. § 103 in view of the combination of U.S. Patent Application
`Publication No. 2002/0078456 A1 (Ex. 1004, “Hudson”) and U.S. Patent
`No. 6,248,946 B1 (Ex. 1006, “Dwek”). Dec. 24.
`After we instituted this review, Patent Owner filed a Patent Owner
`Response in opposition to the Petition (Paper 20, “PO Resp.”) that was
`supported by a Declaration from Samuel Russ, Ph.D. (Ex. 2109). Patent
`Owner’s Response included a section VI(E) pertaining to secondary
`considerations of non-obviousness. See PO Resp. 32–52. However, Patent
`Owner filed an unopposed Motion to Expunge and Strike section VI(E) from
`its Response. Paper 26, 1. We granted Patent Owner’s Motion, and
`therefore do not consider any of Patent Owner’s secondary considerations of
`non-obviousness in reaching our conclusions regarding the patentability of
`the challenged claims. Paper 27, 2–3. Petitioner filed a Reply in support of
`the Petition (Paper 28, “Reply”) that was supported by a Reply Declaration
`of Michael Shamos, Ph.D (Ex. 1020). Patent Owner did not move to amend
`any claim of the ’045 patent.
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`We heard oral argument on June 19, 2018. A transcript of the
`argument has been entered in the record (Paper 37, “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.
`For the reasons expressed below, we conclude that Petitioner has
`demonstrated by a preponderance of evidence that claims 1–4 and 6–9 are
`unpatentable, but has failed to do so for claims 5 and 10–20.
`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 4, 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, Case IPR2017-00888
`(PTAB), involving related U.S. Patent No.7,320,025;
`b. U.S. Patent Application Serial Number 11/002,181, issued as U.S.
`Patent No. 7,320,025 B1 on January 15, 2008;
`c. U.S. Patent Application Serial Number 11/963,164, issued as U.S.
`Patent No. 8,166,133 B1 on April 24, 2012;
`d. U.S. Patent Application Serial Number 13/453,826, filed on April
`23, 2012 (Abandoned);
`e. U.S. Patent Application Serial Number 14/153,872, filed on January
`13, 2014 (Abandoned); and
`
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`IPR2017-01191
`Patent 9,351,045 B1
`f. U.S. Patent Application Serial Number 15/162,259, filed on May
`23, 2016 (Abandoned).
`Paper 4, 2–3.
`THE ’045 PATENT
`A.
`The ’045 patent relates to “broadcast, on-demand and/or personalized
`entertainment and information systems.” Ex. 1001, 1:24–25. Figure 1,
`reproduced below, is a block diagram illustrating an embodiment of
`system 100.
`
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`Figure 1 illustrates that 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.
`“[M]edia source 102 transmits to the distribution centers 104 audio
`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 5:43–50. “[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–
`
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`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
`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, 6, 11, and 16 are the independent claims among the
`challenged claims. Claims 1 and 11 are directed to a “video-on-demand
`method.” Id. at 16:28 (claim 1), 18:19 (claim 11). Claims 6 and 16 are
`directed to a “video-on-demand system” that is recited to include “a
`computer system . . . configured to perform a method.” Id. at 17:24–25
`(claim 6), 18:64–65 (claim 16). Claims 1 and 11 are illustrative of the
`claimed subject matter and recite:
`1. A video-on-demand method, comprising:
`[a] creating a playlist, wherein the playlist comprises a set of
`media asset identifiers selected by a user of a client system,
`each media asset identifier included in the set of media asset
`identifiers identifying a media asset;
`[b] receiving information transmitted by the client system, the
`information indicating that a user of the client system desires
`to view a media asset identified by a media asset identifier
`included in the playlist;
`[c] in response to receiving the information, transmitting to the
`client system the media asset desired by the user;
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`IPR2017-01191
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`[d] transmitting to the client system a video identifier while
`transmitting to the client system the desired media asset, the
`video identifier identifying a video;
`[e] while the client system is playing the desired media asset
`enabling the user of the client system to indicate that the user
`desires to view the video identified by the video identifier,
`and then receiving from the client system a message
`comprising information indicating that the user desires to
`view the video identified by 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
`[f] in response to receiving the message from the client system,
`ceasing transmitting to the client system the media asset and
`transmitting to the client system video data corresponding to
`the video identified by the video identifier.
`Id. at 16:28–55 (with the parties’ labeling indicated within square brackets).
`11. A video-on-demand method, comprising:
`[a] selecting a song for one of a plurality of music channels, the
`one of the plurality of music channels being associated with a
`genre of music;
`[b] transmitting simultaneously to a plurality of client systems
`audio data corresponding to the selected song, wherein each
`of the plurality of client systems is configured to use the audio
`data to play the song so that each user of each of the plurality
`of client systems can listen to the song, and the plurality of
`client systems includes a first client system and a second
`client system;
`[c] while transmitting the audio data to the plurality of client
`systems, transmitting to the first client system a video
`identifier identifying a video;
`[d] while the first client system is playing the song enabling the
`user of the first client system to indicate that the user desires
`to view the video identified by the video identifier, and then
`receiving from the first client system a message comprising
`information indicating that the user desires to view the video
`
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`IPR2017-01191
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`identified by the video identifier, wherein the message is
`received while at least a portion of the audio data is being
`transmitted to the first client system; and
`[e] in response to receiving the message from the first client
`system, transmitting to the first client system video data
`corresponding to the video identified by the video identifier.
`Id. at 18:19–45 (with the parties’ labeling indicated within square brackets).
`II. ANALYSIS
`LEVEL OF ORDINARY SKILL
`A.
`Petitioner contends a person of ordinary skill in the art pertaining to
`the ’045 patent, at the time of invention, “would have had at least an
`undergraduate degree in computer science or electrical engineering, or
`equivalent experience and, in addition, two years of experience in
`distribution of digital audio and video via networks.” Pet. 5 (citing Ex. 1003
`¶¶ 11–17). Patent Owner agrees. PO Resp. 6. In considering the issues
`presently before us, we have adopted and applied Petitioner’s proposed
`identification of the level of ordinary skill in the art, which is consistent with
`the ’045 patent and the asserted prior art.
`B. CLAIM INTERPRETATION
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued 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,
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`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 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).
`In the Decision on Institution, we instructed the parties to brief the
`meaning of “a message comprising information indicating that the user
`desires to view the video identified by the video identifier” as recited in
`claims 1 and 6; and “in response to receiving the message” as recited in
`claims 1 and 6. Dec. 24. The parties agreed upon the express meaning of
`both phrases, PO Resp. 6–7; Reply 2, which we adopt for the purposes of
`this Final Written Decision. We discern no need to interpret any other
`phrase expressly for the purposes of this Final Written Decision.
`LEGAL STANDARDS
`C.
`Petitioner challenges the patentability of claims 1–20 on the grounds
`that the claims are obvious in view of Hudson and Dwek. To prevail,
`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 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
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`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).
`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 claims unpatentable. With these standards in
`mind, we address each challenge below.
`THE PRIOR ART
`D.
`Hudson
`1.
`Hudson relates to “a system and methods for creating and distributing
`interactive video content.” Ex. 1004 ¶ 6. Hudson describes providing
`“primary content” and “ancillary content” with the ancillary content being
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`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 in pertinent part at right.
`Hudson 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. 26–27 (citing Ex. 1004 ¶¶ 11, 24, 25, 27,
`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. 1004 ¶¶ 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:
`
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`to
`If
`the user decides
`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 inter-
`face 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.
`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.
`
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`Headings1
`2.
`Petitioner also relies on “the content” of a U.S. application that
`Hudson broadly incorporates as follows: “[a] preferred example of a content
`management system operable with the present invention is taught in U.S.
`application Ser. No. (to be assigned), titled ‘Content Management System,’
`filed Jul. 31, 2001, which claims priority to U.S. application No. 60/280,691
`the disclosures of which are hereby incorporated by reference herein.”2
`Ex. 1004 ¶ 27.
`Headings describes a “preferred example of a content management
`system operable with [Hudson].” Id. Headings’ system relates to “methods
`for managing the preparation, programming, and publication of media
`assets.” Ex. 1005 ¶ 6. Those “media assets” include “movies, music videos,
`educational content, television shows, games, live events, and advertising.”
`
`
`1 Petitioner refers to Exhibit 1005, U.S. Pat. App. Pub. 2002/0143782 A1
`(published October 3, 2002) as “Headings,” which it asserts to be the
`published version of the application incorporated by referenced in Hudson.
`Pet. 6–7; see also Ex. 1005, Cover page (referring to priority claim to U.S.
`application No. 60/280,691).
`2 The issue of whether a patent document incorporates material by reference
`sufficiently for the incorporated material to become part of the disclosure of
`the citing document is an issue of law. Advanced Display Sys., Inc. v. Kent
`State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000). The Federal Circuit has
`found that language such as that appearing Hudson incorporates the entire
`contents of the referenced document. See Harari v. Lee, 656 F3d. 1331,
`1335–36 (Fed. Cir. 2011) (finding an application’s disclosure was
`incorporated by reference in its entirety “by the broad and unequivocal
`language: “The disclosures of the two applications are hereby
`incorporate[d] by reference.”). Accordingly, we conclude that Hudson
`incorporates the entire disclosure of Headings by reference, and Petitioner’s
`reliance on that disclosure is proper.
`
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`Id. ¶ 27. Headings further describes organizing content into categories
`(“movies, adult movies, television programs, books, music, music specials,
`and radio”) and sub-categories (e.g., “If the item type were, for example,
`music, then preferred media asset categories may include a preview video,
`tracks, an album cover, a browser thumbnail, and branding art”). Id. ¶ 32.
`Headings explains that the content it manages may be delivered over a
`number of different “digital service platforms” including “cable set-top box,
`digital subscriber line (DSL), and satellite platforms.” Id. ¶ 5.
`Dwek
`3.
`Dwek discloses a user interface that allows end users to search an
`online media database and then add songs in a desired order to a playlist.
`Ex. 1006, Abstract. Dwek’s user operates “a user interface which allows a
`user to search an online database of media selections and build a custom
`playlist,” id. at 3:45–48, an example of which is illustrated in Dwek’s
`Figure 3A that we reproduce below.
`
`illustrates an embodiment of user
`Dwek’s Figure 3A
`interface 250 for music player 120.
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`Dwek’s user interface 250 includes playlist pane 320c featuring buttons for
`interacting with playlists including buttons labeled, PLAY 362, NEW 363,
`SHARE 364, OPEN 365, and DELETE 366. Id. at 8:26–31; Figure 3A.
`Dwek explains that it was known that: “listeners desire the freedom
`and flexibility to choose exactly what song they hear, in the order they
`choose, and at times of their own choosing.” Id. at 1:37–40. Dwek also
`explains that traditional AM/FM radio stations and some existing Internet
`radio stations did not “meet the desire for total flexibility of music choice by
`a listener” because “the songs which are played are chosen by a program
`director.” Id. at 2:5–8. To address this shortcoming, Dwek describes a
`media player for playing music delivered via the Internet having “a user
`interface which allows a user to search an online database of media
`selections and build a custom playlist.” Id. at 3:40–48.
`Dwek also recognized the desire for improving advertising and
`commercial opportunities: “[I]t would be advantageous to provide a system
`and method of multimedia content delivery over a computer network which
`provides increased value to advertisers.” Id. at 3:28–31. To accomplish this
`goal, Dwek describes delivering advertising to end users in portion of
`toolbar 310 labeled “ADVERTISEMENT,” which persists on a user’s
`display while a song is playing. Id. at 3:50–57; 14:36–56, Figures 3A, 5.
`INDEPENDENT CLAIMS 1 AND 6
`E.
`Petitioner’s Argument and Evidence
`1.
`Petitioner identifies in detail the portions of Hudson and Dwek that
`describe each limitation of claim 1. Pet. 17–31 (citing Ex. 1004 ¶¶ 9–11, 21,
`24, 25, 27, 28, 37, 38, 41, 44, 59, Figures 3–5). Petitioner also supports its
`contentions with expert testimony from Michael Shamos, Ph.D. Id. (citing
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`Ex. 1003 ¶¶ 48–50, 53–57). Petitioner relies upon Hudson as describing all
`aspects of the claimed video-on-demand method other than creating a
`playlist. Pet. 17–31. Petitioner relies upon Dwek as describing methods
`enabling a user to create a customized playlist of media assets. Id. at 17–31.
`Petitioner contends that both Hudson and Dwek relate to systems permitting
`a user to view or listen to media content while being provided with an option
`to view ancillary content, for example, advertising. Id. at 14–15 (citing
`Ex. 1004 ¶ 24; Ex. 1006 1:31–50, 3:28–57). Hudson’s system delivers
`viewable “content” including “advertisements, promotions, music videos,
`motion pictures, and television programs.” Ex. 1004 ¶ 7. Hudson enables
`users to “effortlessly make a real-time transaction” while viewing a program
`and “may also be used for advertisements and specialized e-commerce
`opportunities.” Id. ¶ 12.
`Based on the overlapping disclosures and goals of Hudson and Dwek,
`Petitioner argues that an ordinarily skilled artisan would have found it
`“obvious to combine the playlist creation and selection features of Dwek
`with the on-demand playback system of Hudson” to gain the advantages that
`would “enhance the user’s experience with control over media playback
`choices and would also enhance the advertiser’s ability to reach end users in
`an unobtrusive and effective way.” Id. at 16 (citing Ex. 1003 ¶¶ 40–46).
`Analysis of Patent Owner’s Arguments and Evidence
`2.
`Patent Owner argues that Petitioner’s challenge to independent
`claims 1 and 6 fail for two reasons. First, Patent Owner contends that an
`ordinarily skilled artisan would have neither wanted to combine the
`teachings of Hudson and Dwek nor would have been able to do so without
`undue experimentation. PO Resp. 15–22. Second, Patent Owner contends
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`that neither Hudson nor Dwek describe “in response to receiving the
`message” indicating that a user wishes to view a desired video, “ceasing
`transmitting” the media asset that was playing at the time and transmitting
`the desired video. Id. at 27–31. For the reasons expressed below, neither
`argument is persuasive.
`a) Motivation to Combine
`(1) Teaching Away
`Patent Owner first argues that, because Hudson teaches away from
`incorporating Dwek’s customizable playlists, an ordinarily skilled artisan
`would not want to modify Hudson as Petitioner proposes. Id. at 15–18.
`Patent Owner contends that a “fundamental aspect of Hudson,” is solving “a
`need for interactive video content programming that permits the user to stop
`the video play to view ancillary content, and then continue video play from
`the point in time where play was stopped.” PO Resp. 16–17 (quoting
`Ex. 1004 ¶ 5); see also Ex. 1004 ¶¶ 9, 39, 48; Figure 4 (illustrating step 408
`of pausing video stream when user selects link to ancillary content). Patent
`Owner contends that, by contrast, Dwek’s music channels and customized
`playlists are “incompatible” with Hudson because Dwek continuously
`streams its content to player 120 such that when a user selects the content,
`the user joins the playlist “in progress.” PO Resp. 17 (citing Ex. 1006, 9:62–
`64, 10:28–34). Patent Owner concludes that Dwek fails to address the
`problem that Hudson solves, “namely, how to allow a content manager to
`provide interactivity without having to miss a single frame of the original
`show.” Id. at 18.
`The Federal Circuit recently set forth the law relating to whether a
`reference “teaches away” from a proposed modification as follows:
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`“A reference may be said to teach away when a person of
`ordinary skill, upon reading the reference, would be discouraged
`from following the path set out in the reference, or would be led
`in a direction divergent from the path that was taken by the
`applicant.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v.
`Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)).
`Moreover, a reference “must [be] considered for all it taught,
`disclosures that diverged and taught away from the invention at
`hand as well as disclosures that pointed towards and taught the
`invention at hand.” Ashland Oil, Inc. v. Delta Resins &
`Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation
`omitted). A reference does not teach away “if it merely expresses
`a general preference for an alternative invention but does not
`‘criticize, discredit, or otherwise discourage’ investigation into
`the invention claimed.” DePuy, 567 F.3d at 1327 (quoting In re
`Fulton, 391 F.3d at 1201). But even if a reference is not found
`to teach away, its statements regarding preferences are relevant
`to a finding regarding whether a skilled artisan would be
`motivated to combine that reference with another reference. See
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed.
`Cir. 2016) (en banc) (noting that, even if a reference “does not
`teach away, its statements regarding users preferring other forms
`of switches are relevant to a finding regarding whether a skilled
`artisan would be motivated to combine the slider toggle in” that
`reference with the invention of a second reference).
`Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018).
`Against this background, we determine that Hudson does not teach away
`from incorporating the ability to customize playlists as described by Dwek.
`Hudson never expressly mentions permitting a user to customize its
`storyboards much less disparages doing so. Dr. Shamos testifies that an
`ordinarily skilled artisan would have recognized that Hudson’s advantages
`of providing links to ancillary content along with primary content would be
`further enhanced if users also had Dwek’s ability to customize the primary
`content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions
`
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`IPR2017-01191
`Patent 9,351,045 B1
`otherwise fail to consider each of Hudson and Dwek as a whole, but instead
`focus narrowly upon specific implementations of delivering media in each
`reference. Ex. 2109 ¶¶ 49–52.
`When Hudson and Dwek are considered as a whole, the similarities in
`their goals suggests their combination. For example, Hudson, by
`incorporating Headings by reference, 3 recognizes that its system is
`compatible with streaming a wide variety of content including “movies,
`music videos, educational content, television shows, games, live events, and
`advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system
`may deliver more than music; it may also “deliver video or other streaming
`multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because
`Dwek describes joining a customized, shared channel “in progress,” Dwek’s
`system only broadcasts streams in a manner akin to live radio. PO Resp. 17.
`However, Dwek also contemplates starting playback of its user-defined
`shared channels at the beginning of the user-defined playlist. Id. at 11:27–
`33. Based on our review of Hudson and Dwek, we determine that they both
`describe systems in which users have some degree of control over what
`content they consume and when they consume it. Ex. 1004 ¶¶ 37–40,
`Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are
`designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44;
`Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a
`a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and
`conclude that Hudson does not teach away from permitting a user to
`
`
`3 Ex. 1004 ¶ 27.
`
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`Patent 9,351,045 B1
`customize its content storyboards in a manner akin to Dwek’s customization
`of musical playlists.
`
`(2) Undue Experimentation
`Patent Owner also argues that modifying Hudson to add Dwek’s
`ability to customize a playlist of content would have required “undue effort
`and experimentation.” PO Resp. 19–22. Patent Owner relies almost
`exclusively upon testimony from Dr. Russ, who cites almost no objective
`evidence to support his conclusions. Id. (citing Ex. 2109 ¶¶ 53–58 (citing
`only Ex. 1004 ¶ 4 (addressing limitations of using vertical blanking interval
`to transmit data in live broadcasts)). The parties agree that an ordinarily
`skilled artisan would have an engineering or computer science degree and
`two years of industry experience with systems that distribute digital media.
`See Part II.A above. We are persuaded by Petitioner’s evidence that a person
`with that level of skill would not have viewed the proposed modification to
`Hudson as being unduly difficult or requiring undue experimentation.
`Dr. Russ testifies that the proposed combination of Hudson and Dwek
`is not “end-user friendly,” Ex. 2019 ¶ 55, and would not be “useable to an
`end-user,” id. ¶ 56. Dr. Russ cites and analyzes virtually no objective
`evidence in support of his conclusion that modifying Hudson as suggested
`by Petitioner would have required undue effort or experimentation. Id.
`¶¶ 53–58 (containing one citation to Ex. 1004 ¶ 4). Dr. Russ testifies that
`creating Hudson’s storyboards “takes a lot of work,” and that those
`“storyboards are not intended to be customizable by the end-user.” Ex. 2109
`¶ 55 (citing Ex. 2109 ¶ 40 (citing Ex. 1004 ¶¶ 25–27, 29–34, 43