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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 6
`Entered: October 19, 2017
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`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.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`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. Music Choice (“Patent Owner”) timely filed a Preliminary
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`Response. Paper 5 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`37 C.F.R. § 42.108. Based on our review of the record, we conclude that
`Petitioner is reasonably likely to prevail with respect to at least one of the
`challenged claims.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 9–60):
`
`References
`
`Basis
`
`Claims
`challenged
`
`International Patent Publication WO 00/19662 A1
`(Ex. 1004, “Mackintosh”)
`
`§ 102(b) 1–7
`
`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”)
`
`§ 103
`
`8–11
`
`Generally, Patent Owner contends that the Petition should be denied
`in its entirety. For the reasons described below, we institute an inter partes
`review of all claims on all challenges to patentability.
`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
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`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.
`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.
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`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,
`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.,
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`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 can contain 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 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
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`media asset identifier 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,
`[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,
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`[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
`[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
`
`[b]
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`[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. 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,
`2144–46 (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. In re Suitco Surface, Inc., 603
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
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`meaning that the term would have to a person of ordinary skill in the art in
`question.’”). Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner contends that all claim terms, except for the term “video
`image specification,” should be given their plain and ordinary meaning, and
`except as explained below, does not expressly construe any claim term.
`Pet. 8. Patent Owner argues the term “video image specification” does not
`require construction, and does not expressly construe any claim term.
`Prelim. Resp. 10–11.
`Petitioner argues that “video image specification” means “data that
`specifies at least one visual media asset identifier.” Id. (citing Ex. 1001,
`4:33–49). Petitioner argues the Specification discloses a “video image
`specification” may, but need not, specify the screen position where a video
`media asset is displayed. Id. Patent Owner argues this term requires no
`construction. Based on the portion of the Specification cited by Petitioner,
`we agree that “video image specification” means “data that specifies at least
`one visual media asset identifier.”
`B. THE CHALLENGES TO THE CLAIMS
`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
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`(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 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. With these standards in mind, we
`address each challenge below.
`1. 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 a reasonable likelihood that it will establish that Mackintosh
`anticipates claim 1, and we exercise discretion to institute inter partes
`review on Petitioner’s challenge to dependent claims 2–7.
`a) Overview of Mackintosh
`Mackintosh discloses “systems and methods for providing enhanced
`features for the delivery of broadcast material to a listener, viewer or, more
`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
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`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.
`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
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`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.
`
`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 is 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 the supplemental materials 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. 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 and track
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`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 requested
`by clicking on an icon or otherwise interacting with the menu provided in
`additional information selection area 328. Id. at 17:24–27.
`b) Independent Claim 1
`Claim 1 recites a “method for providing a visual complement to an
`audio stream,” and requires a first transmission system transmitting audio
`data corresponding to a sound recording to a second transmission system.
`Ex. 1001, 15:60–64.
`Petitioner demonstrates a reasonable likelihood of establishing that
`Mackintosh discloses this limitation. Pet. 14–16 (citing Ex. 1004, 3:24–29,
`10:26–11:2, 12:13–18, Fig. 5). In particular, Petitioner identifies
`Mackintosh’s radio station 204 as the first transmission system, ISP 208 as
`the second transmission system, and demonstrates radio station 204
`transmits audio data to ISP 208. Id. Mackintosh discloses radio station 204
`broadcasts “a predetermined audio stream comprising a predetermined
`sequence of songs.” Ex. 1004, 26:25–28. Patent Owner does not contest
`Mackintosh discloses this limitation. See Prelim. Resp.
`Claim 1 further requires transmitting a data packet that is generated
`from the selected song’s identifier, and that includes a media asset identifier
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`and sound recording information, including the selected song’s title and
`recording artist. Ex. 1001, 16:1–7.
`Petitioner argues this transmitting step does not require use of the first
`or second transmission systems otherwise required by claim 1. Pet. 16.
`Petitioner contends that Mackintosh’s data server 214 performs this step by
`transmitting a data packet containing supplemental materials to user
`terminal 212. Id. (citing Ex. 1004, 13:16–18, 14:30–32, Fig. 5). Petitioner
`further contends that the transmitted data packet includes both a media asset
`identifier (e.g., a URL pointing to images, videos, audio, text, or other
`information based on the program data associated with the current song),
`and sound recording information such as the name of the song and the
`recording artist. Id. at 23–27 (citing Ex. 1004, 3:29–34, 10:7–14, 10:31–35,
`13:10–18, 13:24–14:5, 16:11–21, 16:35–17:3, 28:3–26, Fig. 7; Ex. 1003
`¶ 45).
`Patent Owner argues that Petitioner has failed to demonstrate that
`Mackintosh’s data server 214 generates and transmits a data packet that
`includes both a video image specification including a media asset identifier
`and sound recording information comprising one or more of the song title
`and artist. Prelim. Resp. 13–18. In particular, Patent Owner contends that
`Mackintosh discloses alternative embodiments in which the data packet
`transmitted from data server 214 to user terminal 212 contains either
`supplemental materials, or location information (e.g., URLs) by which user
`terminal 212 can obtain supplemental materials. Id. at 16–17 (citing
`Ex. 1004, 4:7–11, 8:14–9:8).1 Patent Owner argues that the portions of
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`1 Patent Owner’s citation is in the form X(Y):a–b, where X is the page
`number of Ex. 1004 appearing at the bottom of the page, and Y is the page
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`Mackintosh cited by Petitioner fail to disclose a single embodiment in which
`the transmitted data packet includes both the supplemental material itself
`(e.g., sound recording information) and URLs to the supplemental material
`(e.g., a video image specification including media asset identifiers). Id.
`at 17–18 (citing Ex. 1004, 10:7–14, 13:10–18). Therefore, because
`anticipation can’t be shown by combining different embodiments of a
`reference, Patent Owner argues Petitioner has failed to show Mackintosh
`anticipates claim 1. Id. at 18–19.
`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s arguments. Petitioner cites to, among others, Mackintosh’s
`disclosures on page 16, lines 11–21, and page 28, lines 3–26. Pet. 21–25.
`Mackintosh discloses that 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.” Ex. 1004, 16:17–
`19 (emphasis added). This suggests that not all of the information displayed
`in data window 302 is retrieved via URL. Mackintosh further discloses
`when a data server receives the cut code (song identifier) of the currently
`broadcasted song, it can use the cut code to retrieve (1) the name of an
`image containing the album cover for the song, (2) a link to additional
`information related to the song, (3) the name of the artist, (4) the name of the
`album, and (5) the name of the song. Id. at 28:3–18. The data server then
`either obtains the album cover image and sends the media player the album
`cover image, song name, artist name, and album name, or sends the media
`
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`number of the published Mackintosh application appearing at the top of the
`page. For simplicity, we cite only to the page number of the published
`Mackintosh application.
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`player the link to the album cover image, which the media player uses to
`obtain the album cover image. Id. at 28:20–26. This again, suggests the
`data packet sent by the data server to the media player contains some of the
`information displayed in data window 302 (e.g., album, artist, and song
`name), and a link allowing the media player to obtain additional information
`such as the album cover image. For example, Mackintosh discloses
`“[r]esponsive to the receipt of the artist name, album name, song name,
`image, and provider link . . . [this information is] provided to the player
`510.” Id. at 28:33–35.
`Accordingly, at this stage of the proceeding, having considered
`Petitioner’s and Patent Owner’s arguments and evidence, both for and
`against, we find Petitioner has demonstrated a reasonable likelihood of
`establishing that Mackintosh discloses transmitting a data packet that
`includes a video image specification including a media asset identifier and
`sound recording information, including one or more of title and artist as
`required by claim 1.
`Patent Owner has not argued that Petitioner has failed to demonstrate
`a reasonable likelihood of establishing the Mackintosh describes the
`remaining limitations of claim 1. Based on our review of Petitioner’s
`argument and evidence, we determine that Petitioner has demonstrated a
`reasonable likelihood of establishing that Mackintosh describes those
`limitations. Accordingly, we determine that inter partes review of claim 1 is
`warranted.
`
`c) Dependent Claims 2–7
`Claims 2–7 depend ultimately from claim 1. Ex. 1001, 16:21–48.
`Regarding these dependent claims, Patent Owner proffers argument only for
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`claim 7. Prelim. Resp. 19–22. We exercise our discretion under 37 C.F.R.
`§ 42.108 and also institute inter partes review of these dependent claims for
`this challenge. By exercising our discretion in this regard, we seek to
`achieve a final resolution of the dispute between the parties at the Board.
`See Intex Recreation Corp. v. Bestway Inflatables & Material Corp., Case
`No. IPR2016-00180, 2016 WL 8377184, at *3–5 (PTAB Jun. 6, 2016)
`(exercising discretion to institute on all challenged claims after determining
`reasonable likelihood that at least one claim is unpatentable). We note,
`however, that the burden remains on Petitioner to demonstrate
`unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015).
`d) Conclusion
`Based on our review of the current record, we institute inter partes
`review to determine whether Mackintosh anticipates claims 1–7.
`2. Claims 8–11: Obviousness in View of Mackintosh and Hallier
`Petitioner contends that the combination of Mackintosh and Hallier
`renders claims 8–11 unpatentable as obvious. Pet. 44–60. For the reasons
`stated below, we determine that Petitioner has demonstrated a reasonable
`likelihood that it will establish that the combination of Mackintosh and
`Hallier renders claims 8–11 unpatentable as obvious.
`a) Overview of Hallier
`Hallier is a paper describing a digital audio broadcasting (“DAB”)
`system. Ex. 1005, Abstract. The DAB system simultaneously delivers
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`IPR2017-01192
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`audio, image, video, and other data content multiplexed into a single data
`stream of up to 1.728 Mbit/s bandwidth. Id. at 794.2
`b) Independent Claim 8
`Petitioner identifies in detail the portions of Mackintosh and Hallier
`that describe each limitation of independent claim 8. Pet. 48–58 (citing
`Ex. 1004, 3:5–5:5, 10:31–35, 11:7–16, 13:13–16, 13:24–14:5, 15:6–10,
`16:35–17:3, 26:25–27:23, Figures 1, 7, 12; Ex. 1005, 794). Petitioner also
`supports it contentions with expert testimony from Dr. Shamos. Id. (citing
`Ex. 1003 ¶¶ 74–76, 80–85). Petitioner relies on Mackintosh as describing
`every element of claim 8 except for the requirement that “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” as recited in the limitation
`referenced as 8c-3. Id. at 46, 53–54. Petitioner relies upon Hallier as
`describing multiplexing data including video data into a broadcast audio
`stream. Id. at 44–46. 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 46–48.
`Petitioner also contends that Mackintosh suggests such multiplexing of
`audio and video when it illustrates direct communication from program
`provider 104 and data server 116. Id. at 47. Petitioner supports its
`contentions regarding what an ordinarily skilled artisan would have been
`
`
`2 Citations to Exhibit 1005 refer to Hallier’s original page numbering.
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`motivated to incorporate from Hallier into Mackintosh with testimony from
`Dr. Shamos. Id. at 46–48 (citing Ex. 1003 ¶¶ 63–68).
`Patent Owner argues that we should not institute inter partes review
`of claims 8–11 because Petitioner has not established that the combination of
`Mackintosh and Hallier describes “a video image generator configured to . . .
`ii) generate a video image using the media assets identified in the video
`image specification” as recited in claim 8. Prelim. Resp. 22–23. Patent
`Owner’s argument is not persuasive.
`Petitioner identifies data server 214 as the “video image generator”
`recited in claim 8. Petitioner contends that implementing a “video image
`generator” on data server 214 is suggested by Figure 1, which illustrates
`direct communication between program provider 104 and data server 116.
`Pet. 50. Mackintosh’s Figures 1 and 2 and accompanying text describe a
`system in which program provider 104 sends audio and related identifying
`data to data server 116, which then retrieves supplemental information,
`which may include video, and delivers one broadcast to clients 112.
`Mackintosh states: “In a step 138, data server 116 provides the retrieved
`supplemental materials to user equipment 112 such that they can be played,
`displayed, or otherwise provided to the user in coordination with the
`broadcast materials.” Ex. 1004, 8:21–23. Similarly, Mackintosh expressly
`suggests that data server 214 is also capable of retrieving supplemental
`materials and sending those materials, including video images, directly to
`user terminal 212. Id. at 13:19–21; see also id. at 13:12–13 (“supplemental
`materials can include, for example, images, videos, audios, text, or other
`data”).
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`Patent Owner never provides an express interpretation of “generate a
`video image,” but appears to imply that “generat[ing] a video image” refers
`to creating a file that represents a video image.3 The Specification of the
`’602 patent broadly describes its video image generator as a component that
`“generates a video image based on the provided video image specification
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