Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 28
`Entered: October 17, 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 IPR2017-01192
`Patent 8,769,602 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 2,
`“Pet.”) to institute an inter partes review of claims 1–11 (the “challenged
`claims”) of U.S. Patent No. 8,769,602 B1 (Ex. 1001, “the 602 patent”).
`35 U.S.C. § 311. Petitioner supported the Petition with a Declaration from
`Michael Shamos, Ph.D (Ex. 1003). Music Choice (“Patent Owner”) timely
`
`
`Tel: 571-272-7822
`
`Paper 28
`Entered: October 17, 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 IPR2017-01192
`Patent 8,769,602 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 2,
`“Pet.”) to institute an inter partes review of claims 1–11 (the “challenged
`claims”) of U.S. Patent No. 8,769,602 B1 (Ex. 1001, “the 602 patent”).
`35 U.S.C. § 311. Petitioner supported the Petition with a Declaration from
`Michael Shamos, Ph.D (Ex. 1003). Music Choice (“Patent Owner”) timely
`
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`IPR2017-01192
`Patent 8,769,602 B1
`filed a Preliminary Response. Paper 5 (“Prelim. Resp.”). On October 19,
`2017, based on the record before us at the time, we instituted an inter partes
`review of claims 1–11. Paper 6 (“Institution Decision” or “Dec.”). We
`instituted the review on the following challenges to the claims:
`
`Claims
`challenged
`Basis
`§ 102(b) 1–7
`
`§ 103
`
`8–11
`
`References
`International Patent Publication WO 00/19662 A1
`(Ex. 1004, “Mackintosh”)
`
`Mackintosh and Hallier, J., Multimedia
`Broadcasting to mobile, portable and fixed
`Receivers using the Eureka 147 Digital Audio
`Broadcasting System; 5th IEEE Int’l Symposium
`on Personal, Indoor and Mobile Radio Comm.,
`794-99 (Sept. 18–22, 1994) (The Hague, The
`Netherlands) (Ex. 1005, “Hallier”)
`
`After we instituted this review, Patent Owner filed a Patent Owner
`Response in opposition to the Petition (Paper 16, “PO Resp.”) that was
`supported by a Declaration from Samuel Russ, Ph.D. (Ex. 2004). Petitioner
`filed a Reply in support of the Petition (Paper 20, “Reply”) that was
`supported by a Reply Declaration of Michael Shamos, Ph.D (Ex. 1008).
`Patent Owner did not move to amend any claim of the ’602 patent.
`We heard oral argument on July 16, 2018. A transcript of the
`argument has been entered in the record (Paper 27, “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.
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`For the reasons expressed below, we conclude that Petitioner has
`demonstrated by a preponderance of evidence that claims 1–11 are
`unpatentable.
`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) (the “DC Litigation”). Pet. 1;
`Paper 4, 2. Patent Owner identifies a number of other applications, patents,
`or proceedings as being related to this proceeding, including:
`1. Stingray Digital Group Inc. v. Music Choice, Case IPR2017-01193
`(PTAB), involving related U.S. Patent No. 9,357,245 B1;
`2. U.S. Patent Application Serial Number 60/315,046, filed on August
`28, 2001 (Expired);
`3. U.S. Patent Application Serial Number 10/066,793, issued as U.S.
`Patent No. 7,275,256 B1 on September 25, 2007;
`4. U.S. Patent Application Serial Number 11/837,772, issued as U.S.
`Patent No. 7,926,085 B2 on April 12, 2011;
`5. U.S. Patent Application Serial Number 14/314,379, issued as U.S.
`Patent No. 9,451,300 B1 on September 20, 2016;
`6. U.S. Patent Application Serial Number 14/635,619, issued as U.S.
`Patent No. 9,357,245 B1 on May 31, 2016; and
`7. U.S. Patent Application Serial Number 15/266,799, filed on
`September 15, 2016 (Pending).
`Paper 4, 2–3.
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`C. THE ’602 PATENT
`The ’602 patent is directed toward a system and method for providing
`an interactive, visual complement to one or more audio programs. Ex. 1001,
`Abstract. Figure 1 of the ’602 patent is reproduced below.
`
`
`
`Figure 1 is a block diagram of audio/video system 100 for providing
`audio/video programming to consumers. Id. at 2:58–60. System 100
`includes audio subsystem 102 having playlist 110, video subsystem 104,
`first transmission system 190, second transmission system 170,
`receivers 180, and audio/video devices 182. Id. at 4:6–32. Playlist 110
`contains programmed sound recordings for transmission to listeners of
`system 100 over a particular broadcast channel, and is typically generated on
`a periodic basis (e.g., daily or weekly). Id. at 4:7–12. Audio subsystem 102
`transmits the programmed sound recordings to transmission subsystem 190,
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`which further transmits the recordings to signal transmission system 170,
`which transmits the recordings to audio/video receivers 180. The latter are
`coupled to audio/video devices 182 that reproduce the sound recordings for
`system subscribers. Id. at 4:18–30. Audio/video receivers 180 may be, e.g.,
`set-top boxes, and audio/video devices 182 may be, e.g., televisions. Id.
`at 4:30–32.
`Video subsystem 104 generates a data packet for the channel over
`which the sound recording is broadcast upon receiving a trigger from audio
`subsystem 102. Ex. 1001, 4:33–35, 6:28–33. The trigger identifies the
`sound recording, information about the sound recording, and the channel
`broadcasting the sound recording. Id. at 6:28–33. The generated data packet
`contains a video image specification that specifies a visual complement to
`the audio broadcast. Id. at 4:35–39. The video image specification includes
`one or more visual media asset identifiers, where visual media assets can be
`graphic images, videos, text messages, and other media assets. Id. at 4:41–
`48. For example, the video image specification may include the name of the
`song, artist, and album associated with the song broadcast by transmission
`system 170. Id. at 4:50–63. The video image specification “may also
`specify the screen position where each identified asset is to be displayed” on
`a subscriber’s screen. Id. at 4:43–45 (emphasis added). The data packet
`containing the video image specification may be an XML or HTML file. Id.
`at 5:28–36. Once generated, the data packet is transmitted from video
`subsystem 104 to transmission system 170. Id. at 5:37–44.
`Transmission system 170 parses the data packet received from video
`subsystem 104, and using the information contained in the video image
`specification, generates and transmits a video image to audio/video
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`receivers 180. Id. at 5:60–67. The video image is then sent to and displayed
`by audio/video devices 182. Id. at 6:1–3. To generate the video image from
`the video image specification, transmission system 170 preferably has access
`to storage unit 185 containing those visual media assets identified by visual
`media asset identifiers in the video image specification. Id. at 5:45–53.
`Alternatively, the visual media assets can be stored in storage unit 186 of
`video subsystem 104, and video subsystem 104 can transmit the visual
`media assets to transmission system 170. Id. at 5:54–59.
`The video image generated by transmission system 170 can include a
`user selectable “buy” button. Ex. 1001, 7:31–37. A user, selecting the
`“buy” button, can initiate an e-commerce transaction with transaction
`processing system 106. Id. at 7:61–64. The selection causes a message to
`be sent from the user’s audio/video receiver 180 to transaction processing
`system 106 containing an identifier of the product (e.g., song, album) the
`user wants to purchase. Id. at 8:7–12.
`Claims 1 and 8, which are the independent claims among the
`challenged claims, recite:
`1. A method for providing a visual complement to an audio
`stream, comprising:
`[a] transmitting, from a first transmission system to a second
`transmission system, audio data corresponding to a sound
`recording; and
`[b] transmitting a data packet comprising a video image
`specification while the audio data is being transmitted,
`[c-1] wherein the video image specification specifies one or more
`media asset identifiers, each of which identifies one or more
`media assets, one or more of said media asset identifiers
`identifying a media asset associated with the sound recording,
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`[c-2] said data packet further comprising sound recording
`information associated with the sound recording, the sound
`recording information comprising one or more of the title of
`the sound recording and the name of the artist who recorded
`the sound recording,
`[d-1] wherein the step of transmitting the data packet comprises
`transmitting the data packet to a system comprising a video
`image generator,
`[d-2] wherein the video image generator is configured to
`generate a video image using the video image specification
`and
`[d-3] the system is configured to provide the generated video
`image to a device that is operable to display the video image
`to a user of the device, and
`[d-4] wherein the video image generator is configured to
`generate the video image by retrieving the media assets
`identified in the video image specification.
`Id. at 15:60–16:20 (with the parties’ labeling indicated within square
`brackets and line breaks added to ease readability).
`8. A system for providing a visual complement to an audio
`service, the system comprising:
`[a]
`an audio subsystem configured to store a playlist for an
`audio channel of the audio service; and
`a first transmission system configured to transmit to a
`second transmission system audio data corresponding to a
`sound recording specified in the playlist; and
`[c-1] a video image generator configured to:
`i) receive, while the sound recording is being transmitted,
`a video image specification that specifies one or
`more media asset identifiers that identify one or
`more media assets, the one or more media assets
`being associated with the sound recording that is
`being transmitted, and
`
`[b]
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`[c-2] sound recording information associated with the
`sound recording, the sound recording information
`comprising one or more of the title of the sound
`recording and the name of the artist who recorded
`the sound recording, and
`[c-3] ii) generate a video image using the media assets
`identified in the video image specification, wherein
`the first transmission system is further configured to
`transmit to the second transmission system the
`generated video image multiplexed with the audio
`data corresponding to the sound recording,
`[d] wherein the system further comprises a video subsystem,
`[d-1] the audio subsystem is configured to i) retrieve the
`audio data corresponding to the sound recording
`prior to the first transmission system transmitting
`said audio data and
`[d-2] ii) provide to the video subsystem a trigger message
`comprising an identifier associated with said sound
`recording.
`Id. at 16:49–17:11 (with the parties’ labeling indicated within square
`brackets and line breaks added to ease readability).
`II. ANALYSIS
`A. LEVEL OF ORDINARY SKILL
`Petitioner contends a person of ordinary skill in the art pertaining to
`the ’602 patent, at the time of invention, “would have at least an
`undergraduate degree in computer science or electrical engineering, or
`equivalent experience, and, in addition, two years of experience in the
`distribution of digital audio and video via networks.” Pet. 7 (citing Ex. 1003
`¶¶ 12–18). Patent Owner agrees. PO Resp. 6. In considering the issues
`presently before us, we have adopted and applied Petitioner’s proposed
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`identification of the level of ordinary skill in the art, which is consistent with
`the ’602 patent and the asserted prior art.
`B. 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 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
`that 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).
`1. video image specification
`The parties disagree about the meaning of “video image specification”
`as recited in claim 1. PO Resp. 6–13; Reply 2–4. Patent Owner argues that
`“video image specification” means “data that specifies at least one visual
`media asset identifier and its position information.” PO Resp. 6. Petitioner
`argues that “video image specification” merely means “data that specifies at
`least one visual media asset identifier” without any limitation on its
`“position information.” Reply 2–4. In the DC Litigation, the Court did not
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`interpret “video image specification” because the parties agreed that “no
`construction [was] necessary” for the phrase. Ex. 2001, 12.
`The plain language of the claim supports Petitioner’s position because
`the claim does not expressly recite “position information” despite placing
`other express limitations on the meaning of the phrase. The claim requires
`that “the video image specification specifies one or more media asset
`identifiers, each of which identifies one or more media assets, one or more
`of said media asset identifiers identifying a media asset associated with the
`sound recording.” Ex. 1001, 15:67–16:4. Missing from this definition of
`“video image specification” is any indication that it must include “position
`information.” Id.
`Three other phrases in the claim describing how hardware interacts
`with the “video image specification” or the image generated using that
`specification imply that the video image specification need not specify
`information about the position of a media asset on the user’s display. First,
`the claim recites that “the video image generator is configured to generate a
`video image using the video image specification.” Id. at 16:13–15. This
`passage fails to limit the video image specification or the video image
`generator beyond requiring that the generated video image arise from “using
`the video image specification.” Id. at 16:13–15. Second, the claim recites
`that “the video image generator is configured to generate the video image by
`retrieving the media assets identified in the video image specification.” Id.
`at 16:18–20. This passage merely requires that the generated image is
`composed from “media assets” that the video image specification identifies;
`it fails to specify where the generated image is displayed. Third, the claim
`recites “the system is configured to provide the generated video image to a
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`device that is operable to display the video image to a user of the device.”
`Id. at 16:15–17. Although this passage requires a device that displays the
`generated video image, it does so without specifying the position of the
`image on the display.
`Claim 7, which depends directly from claim 1, introduces a
`requirement that “the video image specification specifies a screen location
`that is associated with said media asset identifier.” “[T]he presence of a
`dependent claim that adds a particular limitation raises a presumption that
`the limitation in question is not found in the independent claim.” Liebel-
`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). Absent
`information rebutting this presumption, the requirement in claim 7 that “the
`video image specification specifies a screen location” indicates that “the
`video image specification” recited in claim 1 requires no position
`information as Petitioner contends.
`Patent Owner unpersuasively argues that because claim 7 recites
`“screen location” rather than the allegedly broader concept of “screen
`position,” claim 7 is “distinguishable” from Patent Owner’s proposal that we
`limit video image specification to requiring a “screen position.” PO
`Resp. 13, n.3. Patent Owner cites Dr. Russ’s testimony, id., opining that
`“position information,” alleged to be required of the video image
`specification of claim 1, “need not be particular X-Y screen coordinates”
`required by claim 7’s reciting of “a screen location.” Ex. 2004 ¶ 33.
`Dr. Russ’s testimony is inconsistent with the manner in which the
`Specification uses “screen position,” namely, as referring to ordinally
`enumerated “locations” on the display. See Ex. 1001, 4:55–66 (specifying
`first through fourth “locations” 202, 204, 206, 208 illustrated in Figure 2);
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`see also id. Figure 4 (illustrating asset identifiers 404, 406, 491, 492, which
`refer to “Position = 5,” “Position = 3,” “Position = 1,” and “Position = 2,”
`respectively); see also id. 5:28–34, Figure 6 (specifying “position” numbers
`for asset identifiers in video image specification 602 that “associate[] a
`screen position with each asset identifier”). When asked at the hearing to
`identify any portion of the Specification that distinguished a screen position
`from a screen location akin to “X-Y screen coordinates,” Patent Owner
`could not do so. Tr. 53:11–54:3. We similarly find no part of the
`Specification that describes “screen location” as anything other than an
`ordinally enumerated “screen position.” The Specification does, however,
`indicate that along with identifying “one or more visual media assets,” the
`“video image specification may also specify the screen position where each
`identified asset is to be displayed.” Ex. 1001, 4:41–45 (emphasis added).
`This passage implies that the presence of a “screen position” in a “video
`image specification” is optional, but not required, and that the “video image
`specification” of claim 1 need not include screen position or “screen
`location” information as required by dependent claim 7.
`Based on our review of the plain language of claim 1, dependent
`claim 7, and the Specification, we conclude that “video image specification”
`means “data that specifies at least one visual media asset identifier” without
`specifying screen position information as Patent Owner contends.
`2. data packet
`Patent Owner does not expressly interpret “data packet” as recited in
`claim 1. See PO Resp. 6–13 (“claim construction” section addressing only
`“video image specification”). However, Patent Owner implicitly argues that
`the claimed “data packet” refers to a “single packet containing both” a video
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`image specification and sound recording information. PO Resp. 16. We
`disagree with Patent Owner’s implied interpretation of “data packet.”
`Instead, we agree with the analysis of the District Court in the DC
`Litigation interpreting “data packet” to mean a “collection of data” that is
`not limited to “a single file.” Ex. 2001, 40–42. The plain language of the
`claim, which encompasses one or more “data packets” by reciting “a data
`packet” without expressly limiting the data packet to a single data packet,
`supports our interpretation. Baldwin Graphics Sys., Inc. v. Siebert, 512 F.3d
`1338, 1342–43 (Fed. Cir. 2008). The Specification is consistent with our
`conclusion that the “data packet” may refer to multiple files because it
`describes “data packets” as “extensible mark-up language (XML) files or
`hyper-text mark-up language (HTML) files.” Ex. 1001, 5:34–36 (emphasis
`added); see also id. at 11:45–46 (“In one embodiment, data packet 732 is an
`HTML document.”).
`Claim 1, by reciting two “transmitting” steps, “transmitting, from a
`first transmission system to a second transmission system, audio data” and
`“transmitting a data packet,” implies that “data packet” is not only broad
`enough to cover multiple packets, but also may be transmitted by more than
`one source. The step of “transmitting . . . audio data” requires transmission
`from the “first transmission system” to the “second transmission system,”
`respectively. Id. at 15:62–63. By contrast, the step of “transmitting a data
`packet” does not identify the source of the “data packet,” only the
`destination, by requiring transmitting to “a system comprising a video image
`generator.” Id. at 16:10–12. By not specifying a source that performs the
`“transmitting a data packet,” the claim broadly encompasses transmitting
`that data packet from more than one source. Encompassing the concept of
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`transmitting from unspecified sources also implies that “a data packet”
`broadly encompasses more than one data packet.
`Based on our review of the intrinsic record, we conclude, as the
`District Court did, that “a data packet” means “a collection of data.”1 As
`such, “a data packet” is not limited to “a single file,” and may be transmitted
`from more than one source.
`
`C. 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 1–11 were unpatentable as anticipated or obvious based on the
`challenges identified in the table in Part I.A above. Dec. 22. 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). To that end, we previously instructed Patent Owner that
`“any arguments for patentability not raised in the [Patent Owner Response]
`will be deemed waived.” Paper 7, 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).
`
`
`1 We note that this is the construction Patent Owner advocated in its claim
`construction brief to the District Court. See Ex. 1011, 23–25 (“The proper
`construction of the term ‘data packet’ is ‘a collection of data such as one or
`more files or documents.’”).
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`D. LEGAL STANDARDS
`Petitioner challenges the patentability of the challenged claims on the
`grounds that the claims are either anticipated by Mackintosh or obvious in
`view of the combination of Mackintosh and Hallier. “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 as 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 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. With these standards in mind, we
`address each challenge below.
`E. CLAIMS 1–7: ANTICIPATION BY MACKINTOSH
`Petitioner contends that Mackintosh anticipates claims 1–7. Pet. 9–
`44. For the reasons stated below, we determine that Petitioner has
`demonstrated, by a preponderance of evidence, that Mackintosh anticipates
`claims 1–7.
`1. Overview of Mackintosh
`Mackintosh discloses “systems and methods for providing enhanced
`features for the delivery of broadcast material to a listener, viewer or, more
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`generally, a user.” Ex. 1004, 3:6–8. Mackintosh provides supplemental
`materials to the user “in a coordinated fashion such that they relate to the
`actual broadcast materials . . . being streamed or otherwise delivered to the
`user.” Id. at 3:10–12. Supplemental materials can include “images, video
`clips, audio clips, data, or other materials that may be provided to the user in
`conjunction with the broadcast materials.” Id. at 3:18–20. For example,
`Mackintosh discloses “the broadcast of radio broadcast materials over the
`Internet,” such as the broadcast of “a plurality of tracks that can be streamed
`to a user via the Internet.” Id. at 3:24–27. The tracks (e.g., music tracks or
`songs) can be “provided along with program data that can indicate, for
`example, an identification of the track, the type of track, and other pertinent
`or relevant information regarding the particular track.” Id. at 3:27–32.
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`Figure 5, reproduced at
`right, is a block diagram showing
`radio station 204 providing a
`broadcast to user terminal 212 via
`Internet Service Provider
`(“ISP”) 208. Ex. 1004, 5:20–22.
`Radio station 204 broadcasts
`material to ISP 208, which then
`provides the broadcast material to
`user terminals 212 via the Internet.
`Id. at 10:31–32, 12:13–14. The
`broadcast can be provided in AM,
`FM, or digital format, and can
`consist of pre-programmed
`broadcast material. Id. at 11:1–8.
`The broadcast material can
`include the current radio broadcast
`and program data associated with the current radio broadcast, such as cut
`codes indicating the tracks in the broadcast, advertising data, and format data
`indicating the type of music broadcast or the type of product advertised. Id.
`at 10:32–35, 11:28–35, 12:13–14. The format data can be used to key
`particular pieces or categories of supplemental material to the current
`broadcast. Id. at 12:1–2. User terminal 212, which can be any general
`purpose audio/video player capable of playing the broadcast material and the
`supplemental material, plays the broadcast material to a user. Id. at 12:21–
`26.
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`ISP 208 provides program data associated with the broadcast,
`including a cut number and category, to either data server 214 or user
`terminal 212. Id. at 12:17–20. When provided to user terminal 212, user
`terminal 212 provides the program data to data server 214. Id. at 12:29–33.
`Data server 214 uses the program data to retrieve supplemental materials
`such as images, videos, audios, or text that are associated with the program
`data, or to retrieve URLs or other location information identifying the
`location of supplemental materials on supplemental servers 216. Id.
`at 13:10–16. Data server 214 then returns some or all of the supplemental
`materials and/or location information for the supplemental materials to user
`terminal 212. Id. at 13:16–21. User terminal 212 receives the supplemental
`materials, or uses the location information to retrieve the supplemental
`materials from supplemental servers 216, and “plays” or displays them to the
`user while the user listens to the broadcast material. Id. at 13:22–29. This
`allows the system to provide the user with, e.g., a track number, artist, album
`title, album image, links to purchase the album, promotional materials,
`concert schedules, other images or videos relating to the album or artist, or
`virtually any other information related to the current track broadcasted by
`radio station 204. Id. at 13:34–14:5.
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`The supplemental material provided to user terminal 212 can be
`displayed or “played” on a multimedia player such as that shown in
`Figure 7, which is reproduced below right. The user interface includes data
`window 302, player
`interface 304, history
`window 306, and
`advertising window
`308. Id. at 15:34–36.
`Player interface 304
`includes user selectable
`controls such as volume
`control 312, status
`display 314, on-air
`display 316, and station list 318. Id. at 16:1–5. Data window 302 includes
`areas to display track image 322, track information 324, buy now
`button 326, and additional information selection area 328. Id. at 16:11–15.
`When “user terminal 212 is provided with URL’s to retrieve
`supplemental materials, the URL’s can be used to retrieve some or all of the
`information provided” in data window 302. Id. at 16:17–19 (emphasis
`added). Track image 322 can be an album image, i.e., a picture, image, or
`graphical representation of the album containing the current song being
`played. Id. at 16:22–24. Track information 324 can display the artist’s
`name, the current song being played, the album on which that song can be
`found, and any other information related to the current song. Id. at 16:35–
`17:3. User terminal 212 can retrieve and display the track/album image 322
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`and track information 324 automatically upon receipt without user
`interaction. Id. at 17:8–10.
`Additional information selection area 328 can provide menus or icons
`the user can interact with to obtain additional information or supplemental
`materials regarding the currently playing track, such as concert schedules,
`tickets, merchandizing or other information. Id. at 17:13–20. This
`information is generally not retrieved by user terminal 212 until it is
`requested by clicking on an icon or otherwise interacting with the menu
`provided in additional information selection area 328. Id. at 17:24–27.
`2. Independent Claim 1
`Petitioner argues that Mackintosh anticipates claim 1. Pet. 13–30.
`Petitioner cites specific portions of Mackintosh that describe each aspect of
`claim 1. Id. (citing Ex. 1004, 3:5–5:5, 6:30–34, 10:26–11:2, 12:13–18,
`12:21–14:5, 14:30–32, 16:11–21, 16:35–17:3, 18:25–28, 25:18–21, 28:3–26,
`28:33–29:9, 30:23–32:11, Figures 5, 6, 7, 12, 13). Petitioner also supports
`its allegations with testimony from Dr. Shamos. Id. (citing Ex. 1003 ¶¶ 41,
`42, 45, 47, 48, 50). In its Reply, Petitioner supplements its showing by
`citing portions of Mackintosh and additional testimony from Dr. Shamos.
`Reply 7–14 (citing Ex. 1004, 13:19–33; 16:11–21, 16:35–17:7, 28:3–18,
`28:20–35, 29:1–9, 30:1–13, Figure 6; Ex. 1008 ¶¶ 19–21, 23, 25, 26). We
`adopt Petitioner’s analysis in the Petition and Reply as our own in
`connection with all limitations of claim 1, and we further analyze below
`Patent Owner’s arguments made in the Patent Owner Response.
`Patent Owner argues that Mackintosh fails to anticipate claim 1 for
`only two reasons. PO Resp. 14–25. First, Patent Owner argues Mackintosh
`allegedly fails to describe a “data packet” as described in limitations 1b and
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`1c-2. Id. at 14–23. Second, Patent Owner argues that Mackintosh fails to
`describe a “video image specification” that specifies where the related media
`asset is positioned on the user’s screen. Id. at 23–25. For the reasons
`expressed below, Petitioner persuades us that Mackintosh describes both
`allegedly missing limitations.
`a) Whether Mackintosh Describes the Claimed Data Packet
`The claimed “data packet,” according to the express limitations of
`claim 1, must include both “a video image specification,” Ex. 1001, 15:65–
`66, and “sound recording information . . . comprising one or more of the title
`. . . and the name of the artist” id. at 16:4–9. Patent Owner contends that
`Mackintosh describes sending a data packet from data server 214 to terminal
`212 that either includes URLs (the alleged
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