Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper No. 8
`Filed: October 13, 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 IPR2017-01193
`Patent 9,357,245 B1
`____________
`
`
`
`Before GREGG ANDERSON, MITCHELL WEATHERLY, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 8
`Filed: October 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STINGRAY DIGITAL GROUP, INC.,
`Petitioner,
`
`v.
`
`MUSIC CHOICE,
`Patent Owner.
`____________
`
`Case IPR2017-01193
`Patent 9,357,245 B1
`____________
`
`
`
`Before GREGG ANDERSON, MITCHELL WEATHERLY, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2017-01193
`Patent 9,357,245 B1
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`A. Background
`
`I. INTRODUCTION
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`Stingray Digital Group, Inc., (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) to institute inter partes review of claims 1–9, 12–14, 16, and 17 (“the
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`challenged claims”) of U.S. Patent No. 9,357,245 B1 (Ex. 1001, “the ’245
`
`patent”). Music Choice (“Patent Owner”) filed a Preliminary Response
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`(Paper 5, “Prelim. Resp.”).
`
`Upon consideration of the Petition and Preliminary Response, we are
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`persuaded, under 35 U.S.C. § 314(a), that Petitioner has demonstrated a
`
`reasonable likelihood that it would prevail in showing the unpatentability of
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`at least one of the challenged claims of the ’245 patent. Accordingly, we
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`institute an inter partes review of all challenged claims.
`
`B. Related Matters
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`Petitioner identifies the following as matters that could affect, or be
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`affected by, a decision in this proceeding: Music Choice v. Stingray Digital
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`Group, Inc.; Case No. 2:16-cv-00586-JRG-RSP (E.D. Tex.); Stingray
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`Digital Group, Inc. v. Music Choice, Case No. IPR2017-01192 (challenging
`
`the patentability of U.S. 8,769,602 (“the ’602 patent”), from which the ’245
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`patent descends. Pet. 1. Patent Owner identifies the same matters, as well
`
`as U.S. Patent Nos. 7,275,256, 7,926,085, 8,769,602, and 9,451,300, from
`
`which the ’245 patent also descends. Paper 3, 2–3.
`
`C. Evidence Relied Upon
`
`Reference
`
`Publication Date
`
`Exhibit
`
`Mackintosh
`
`WO 00/19662
`
`Apr. 6, 2000
`
`Ex. 1004
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`Petitioner also relies upon the Declaration of Michael Shamus, Ph.D.
`(Ex. 1003).
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`
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`D. Asserted Ground of Unpatentability
`
`Petitioner asserts the following ground of unpatentability:
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`1
`
`Mackintosh
`
`§ 102(b)
`
`1–9, 12–14, 16,
`and 17
`
`II. ANALYSIS
`
`A. The ’245 Patent
`
`The ’245 patent is directed toward a system and method for providing
`
`an interactive, visual complement to one or more audio programs. Ex. 1001,
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`Abstract. Figure 1 of the ’245 patent is reproduced below.
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`Figure 1 is a block diagram of audio/video system 100 for providing
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`audio/video programming to consumers. Id. at 2:63–65. System 100
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`includes audio subsystem 102 having playlist 110, video subsystem 104,
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`first transmission system 190, second transmission system 170,
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`receivers 180, and audio/video devices 182. Id. at 4:10–36. Playlist 110
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`contains programmed sound recordings for transmission to listeners of
`
`system 100 over a particular broadcast channel, and is typically generated on
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`a periodic basis (e.g., daily or weekly). Id. at 4:11–16. Audio
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`subsystem 102 transmits the programmed sound recordings to transmission
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`subsystem 190, which further transmits the recordings to signal transmission
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`system 170, which transmits the recordings to audio/video receivers 180.
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`The latter are coupled to audio/video devices 182 that reproduce the sound
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`recordings for system subscribers. Id. at 4:22–34. Audio/video
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`receivers 180 may be, e.g., set-top boxes, and audio/video devices 182 may
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`be, e.g., televisions. Id. at 4:34–36.
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`Video subsystem 104 generates a data packet for the channel over
`
`which the sound recording is broadcast upon receiving a trigger from audio
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`subsystem 102. Ex. 1001, 4:37–39, 6:30–35. The trigger identifies the
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`sound recording, information about the sound recording, and the channel
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`broadcasting the sound recording. Id. at 6:30–35. The generated data packet
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`contains a video image specification that specifies a visual complement to
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`the audio broadcast. Id. at 4:39–44. The video image specification includes
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`one or more visual media asset identifiers, where visual media assets can be
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`graphic images, videos, text messages, and other media assets. Id. at 4:45–
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`52. For example, the video image specification may include the name of the
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`song, artist, and album associated with the song broadcast by transmission
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`system 170. Id. at 4:54–67. The video image specification “may also
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`specify the screen position where each identified asset is to be displayed” on
`
`a subscriber’s screen. Id. at 4:47–49 (emphasis added). The data packet
`
`containing the video image specification can contain an XML or HTML file.
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`Id. at 5:31–39. Once generated, the data packet is transmitted from video
`
`subsystem 104 to transmission system 170. Id. at 5:40–47.
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`Transmission system 170 parses the data packet received from video
`
`subsystem 104, and using the information contained in the video image
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`specification, generates and transmits a video image to audio/video receivers
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`180. Ex. 1001, 5:63–6:2. The video image is then sent to and displayed by
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`audio/video devices 182. Id. at 6:2–3. To generate the video image from the
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`video image specification, transmission system 170 preferably has access to
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`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 5:48–56.
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`Alternatively, the visual media assets can be stored in storage unit 186 of
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`video subsystem 104, and video subsystem 104 can transmit the visual
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`media assets to transmission system 170. Id. at 5:57–62.
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`The video image generated by transmission system 170 can include a
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`user selectable “buy” button. Ex. 1001, 7:34–40. A user, selecting the
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`“buy” button, can initiate an e-commerce transaction with transaction
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`processing system 106. Id. at 7:64–67. The selection causes a message to
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`be sent from the user’s audio/video receiver 180 to transaction processing
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`system 106 containing an identifier of the product (e.g., song, album) the
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`user wants to purchase. Id. at 8:10–15.
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`Figure 2 of the ’245 patent is reproduced below.
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`
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`Figure 2 is an illustration of the locations on a TV screen (i.e., audio/video
`
`device) where visual media assets can be displayed. Ex. 1001, 2:66–67. For
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`example, when audio/video device 182 receives and plays a song from U2’s
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`Joshua Tree album, the Joshua Tree album cover is displayed at
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`location 202, and the name of the song, as well as U2 and Joshua Tree are
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`displayed at location 204. Id. at 4:56–67.
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`
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`Claims 1, 12, and 17 of the ’245 patent are independent claims. Other
`
`challenged claims depend directly or indirectly from claims 1, 12, and 17.
`
`Claim 1 is a method claim, and is reproduced below.
`
`1. A method for providing a visual complement to
`an audio stream, comprising:
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`transmitting, from a first transmission system to a
`second
`transmission
`system,
`audio
`data
`corresponding to a selected song; and
`
`transmitting a data packet that was generated using
`an identifier identifying the selected song, wherein
`the data packet includes a media asset identifier
`identifying a media asset and further includes song
`information associated with the selected song, the
`song information comprising the title of the song
`and the name of the artist who recorded the song,
`wherein
`
`the step of transmitting the data packet comprises
`transmitting the data packet to a receiving system
`that is configured such that, in response to receiving
`the data packet, the receiving system automatically
`generates a video image using the information
`included in the data packet and automatically
`outputs the generated video image such that it is
`received by a display device that is operable to
`display the video image to a user of the display
`device without the user having to select a menu
`item, and
`
`the generated video image includes the song
`information comprising the title of the song and the
`name of the artist.
`
`
`Ex. 1001, 15:62–16:19. Claim 17 is also a method claim, and differs from
`
`claim 1 in that it further requires the method to be performed by a music
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`multicast system that simultaneously transmits an audio stream to a plurality
`
`of users, where the audio stream consists of audio data for a song
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`automatically selected from a set of available songs. Compare id. at 15:62–
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`16:19 with id. at 18:4–32. Claim 12 is an apparatus claim, and is reproduced
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`below.
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`12. A system for providing a visual complement to
`an audio service, the system comprising:
`
`an audio transmission system configured to transmit
`audio data corresponding to a sound recording
`specified in a playlist for a linear audio channel; and
`
`a receiving system, comprising a receiver and a
`video image generator, the receiving system being
`configured to:
`
`i) in response to receiving a data packet that was
`generated using an identifier identifying the sound
`recording, generate a video image in accordance
`with information included in the data packet,
`wherein the data packet includes a media asset
`identifier identifying a media asset and further
`includes sound recording information associated
`with the sound recording, the sound recording
`information comprising the title of the sound
`recording and the name of the artist who recorded
`the sound recording; and
`
`ii) automatically output the generated video image
`such that it is received at a display device operable
`to display the video image to a user of the display
`device without the user having to select a menu
`item, wherein
`
`the generated video image includes the song
`information comprising the title of the song and the
`name of the artist, and
`
`the receiving system is configured to retrieve the
`identified media asset and use the retrieved media
`asset in generating the video image.
`
`Id. at 16:63–17:23.
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`B. Claim Construction
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`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144–46 (2016). Consistent with the rule of broadest
`
`reasonable interpretation, claim terms are generally given their plain and
`
`ordinary meaning, as would be understood by one of ordinary skill in the art
`
`in the context of the entire patent disclosure. See In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in
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`controversy need to be construed and only to the extent necessary to resolve
`
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`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. 7–8. Patent Owner argues the term “video image specification” does
`
`not require construction, and does not expressly construe any claim term.
`
`Prelim. Resp. 10. We construe the terms “the data” and “video image
`
`specification” below.
`
`1. the data
`
`This term appears in claim 5, which depends from claim 1 by way of
`
`claim 4, and recites “the video subsystem is configured to generate the data
`
`based . . . on pre-defined configuration data and information included in the
`
`trigger message.” Ex. 1001, 16:39–42.
`
`Petitioner argues the term lacks antecedent basis, and therefore makes
`
`claim 5 ambiguous because claims 1 and 4, from which claim 5 depends,
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`identify different types of data to which “the data” recited in claim 5 may
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`refer (e.g., “audio data”, “data packets”, and “song information”). Pet. 36.
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`Nonetheless, Petitioner argues “the data” should be construed to mean “a
`
`video image specification” because this interpretation (a) conforms to the
`
`disclosure in the ’245 patent, and (b) provides antecedent basis for “the
`
`video image specification” recited in claim 6, which otherwise lacks
`
`antecedent basis. Id. Patent Owner does not dispute Petitioner’s
`
`interpretation of “the data” recited in claim 5. See Prelim. Resp.
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`The Specification of the ’245 patent discloses video subsystem 104
`
`generates a data packet comprising a video image specification, and
`
`transmits the data packet to audio/video transmission system 170. Ex. 1001,
`
`4:37–42, 5:40–43. The data packet is generated upon receiving a trigger
`
`message from audio subsystem 102, and uses pre-defined configuration data
`
`associated with a channel being viewed. Id. at 6:44–56. Consistent with this
`
`disclosure, original claim 1 of the application that issued as the ’245 patent
`
`recited “transmitting a data packet comprising a video image specification
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`for the sound recording.” Ex. 3001, 25.1 Original claim 52 recited, in
`
`relevant part, “the video subsystem is configured to generate the video
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`image specification based, at least in part, on pre-defined configuration
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`data.” Id. at 26. Original claim 6 recited, as it does now, “[t]he method of
`
`claim 5, wherein the video subsystem is configured to generate the video
`
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`1 We cite to the page numbers appearing at the bottom of Exhibits 3001 and
`3002, rather than to the page numbers within each of these Exhibits.
`
`2 We note claim 5, as originally submitted, depended from claim 6, which in
`turn, depended from claim 5. This cyclical, self-referential, indefinite
`dependency was corrected by amending claim 5 to depend from claim 4.
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`image specification in response to receiving the trigger message.” Id.
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`In response to an examiner’s rejection, the applicant amended claim 1
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`to recite, as it does now, “transmitting a data packet that was generated using
`
`an identifier,” and amended claim 5 to recite, as it does now, “the video
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`subsystem is configured to generate the data based, at least in part, on pre-
`
`defined configuration data.” Ex. 3002, 2–3. In doing so, the applicant
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`introduced an antecedent basis problem for claim 5 by referring to “the data”
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`rather than to “the data packet” of claim 1, and introduced an antecedent
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`basis problem for claim 6 by deleting the phrase indicating the data packet
`
`comprised “a video image specification.” Id.
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`At this stage of the proceedings, and based upon our review of the
`
`disclosure and prosecution history of the ’245 patent, we construe “the data”
`
`recited in claim 5 to refer to “the data packet” recited in claim 1, and to
`
`mean “a data packet that includes a video image specification.”
`
`2. the video image specification
`
`As noted above, claim 6 depends from claim 5, and recites “[t]he
`
`method of claim 5, wherein the video subsystem is configured to generate
`
`the video image specification in response to receiving the trigger message.”
`
`Ex. 1001, 16:43–45.
`
`Petitioner argues the broadest reasonable interpretation of the term
`
`“video image specification,” based on its description in the ’245 patent, is
`
`“data that specifies at least one visual media asset identifier.” Id. (citing
`
`Ex. 1001, 4:37–53). 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.
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`At this stage of the proceedings, we agree with Petitioner that the term
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`“video image specification” means “data that specifies at least one visual
`
`media asset identifier.” The Specification of the ’245 patent discloses “the
`
`video image specification specifies one or more visual media asset
`
`identifiers.” Ex. 1001, 4:45–46.
`
`C. Petitioner’s Challenge to Claims 1–9, 12–14, 16, and 17
`
`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
`
`generally, a user.” Ex. 1004, 3:6–8. Mackintosh provides supplemental
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`materials to the user “in a coordinated fashion such that they relate to the
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`actual broadcast materials . . . being streamed or otherwise delivered to the
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`user.” Id. at 3:10–12. Supplemental materials can include “images, video
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`clips, audio clips, data, or other materials that may be provided to the user in
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`conjunction with the broadcast materials.” Id. at 3:18–20. For example,
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`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 of Mackintosh is reproduced below.
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`
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`Figure 5 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
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`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–
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`8. The broadcast material can include the current radio broadcast and
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`program data associated with the current radio broadcast, such as cut codes
`
`indicating the tracks in the broadcast, advertising data, and format data
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`indicating the type of music broadcast or the type of product advertised. Id.
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`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.
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`
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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. Ex. 1004, 12:17–20. When provided to user terminal 212,
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`user terminal 212 provides the program data to data server 214. Id. at
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`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
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`program data, or to retrieve URLs or other location information identifying
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`the location of supplemental materials on supplemental servers 216. Id. at
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`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
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`user listens to the broadcast material. Id. at 13:22–29. This allows the
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`system to provide the user with, e.g., a track number, artist, album title,
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`album image, links to purchase the album, promotional materials, concert
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`schedules, other images or videos relating to the album or artist, or virtually
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`any other information related to the current track broadcasted by radio
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`station 204. Id. at 13:34–14:5.
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`The supplemental material provided to user terminal 212 can be
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`displayed or “played” on a multimedia player such as that shown in
`
`Figure 7, which is reproduced below.
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`
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`Figure 7 is an illustration of a multimedia player user interface according to
`
`one embodiment of the invention. Ex. 1004, 5:26–27. The user interface
`
`includes data window 302, player interface 304, history window 306, and
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`advertising window 308. Id. at 15:34–36. Player interface 304 includes user
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`selectable controls such as volume control 312, status display 314, on-air
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`display 316, and station list 318. Id. at 16:1–5. Data window 302 includes
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`areas to display track image 322, track information 324, buy now
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`button 326, and additional information selection area 328. Id. at 16:11–15.
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`When “user terminal 212 is provided with URL’s to retrieve supplemental
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`materials, the URL’s can be used to retrieve some or all of the information
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`provided” in data window 302. Id. at 16:17–19. Track image 322 can be an
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`album image, i.e., a picture, image, or graphical representation of the album
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`containing the current song being played. Id. at 16:22–24. Track
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`information 324 can display the artist’s name, the current song being played,
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`the album on which that song can be found, and any other information
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`related to the current song. Id. at 16:35–17:3. User terminal 212 can
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`retrieve and display the track/album image 322 and track information 324
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`automatically upon receipt without user interaction. Id. at 17:8–10.
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`Additional information selection area 328 can provide menus or icons the
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`user can interact with to obtain additional information or supplemental
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`materials regarding the currently playing track, such as concert schedules,
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`tickets, merchandizing or other information. Id. at 17:13–20. This
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`information is generally not retrieved by user terminal 212 until it requested
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`by clicking on an icon or otherwise interacting with the menu provided in
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`additional information selection area 328. Id. at 17:24–27.
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`2. Review of Challenge to Claim 1
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`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 selected song to a second transmission system.
`
`Ex. 1001, 15:63–67.
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`Petitioner demonstrates a reasonable likelihood of showing where
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`Mackintosh discloses this limitation. Pet. 14–16 (citing Ex. 1004, 3:24–29,
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`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
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`sequence of songs.” Ex. 1004, 26:25–28. Patent Owner does not contest
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`Mackintosh discloses this limitation. See Prelim. Resp.
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`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 song information, including the selected song’s title and recording artist.
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`Ex. 1001, 16:1–7.
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`Petitioner argues this transmitting step does not require use of the first
`
`or second transmission systems otherwise required by claim 1. Pet. 16.
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`Petitioner argues Mackintosh’s data server 214 performs this step by
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`transmitting a data packet containing supplemental materials to user
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`terminal 212. Id. (citing Ex. 1004, 13:16–18, 14:30–32, Fig. 5). Petitioner
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`argues the transmitted data packet is generated from the program data,
`
`including cut codes identifying the broadcasted song, data server 214
`
`receives from user terminal 212 or ISP 208. Id. at 17–20 (citing Ex. 1004,
`
`3:29–32, 8:8–33, 10:31–35, 11:19–12:2, 12:15–18, 13:10–18). Petitioner
`
`further argues 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 song information such as the name of the song and the recording artist.
`
`Id. at 20–25 (citing Ex. 1004, 13:24–14:5, 16:11–21, 16:35–17:3, 28:3–26,
`
`Fig. 7; Ex. 1003 ¶ 43).
`
`Patent Owner argues Petitioner has failed to demonstrate that
`
`Mackintosh’s data server 214 generates and transmits a data packet that
`
`includes both a media asset identifier and song information comprising the
`
`song title and artist. Prelim. Resp. 13–17. In particular, Patent Owner
`
`argues Mackintosh discloses alternative embodiments in which the data
`
`17
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`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 14–15 (citing
`
`Ex. 1004, 4:7–11, 8:14–9:8).3 Patent Owner argues the portions of
`
`Mackintosh cited by Petitioner fail to disclose a single embodiment in which
`
`the transmitted data packet includes both the supplemental material itself
`
`(e.g., song information) and URLs to the supplemental material (e.g., media
`
`asset identifiers). Id. at 15–16 (citing Ex. 1004, 13:22–14:5, 16:11–21,
`
`16:35–17:3). 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 17.
`
`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. 22–24.
`
`Mackintosh discloses 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, 15:11–
`
`21 (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
`
`
`3 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
`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.
`
`18
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`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
`
`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 proceedings, having considered
`
`Petitioner’s and Patent Owner’s arguments and evidence, both for and
`
`against, we find Petitioner has demonstrated a reasonable likelihood of
`
`showing where Mackintosh discloses transmitting a data packet that is
`
`generated from the selected song’s identifier, and that includes a media asset
`
`identifier and song information, including the selected song’s title and
`
`recording artist as required by claim 1.
`
`Claim 1 further requires the data packet to be transmitted to a
`
`receiving system that uses the information in the data packet to
`
`automatically generate and output a video image to a display device that
`
`displays the video image without requiring the user to select a menu item.
`
`Ex. 1001, 16:8–16.
`
`19
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`Petitioner demonstrates a reasonable likelihood of showing where
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`Mackintosh discloses this limitation. Pet. 25–27 (citing Ex. 1004, 6:30–34,
`
`17:8–12, 28:16–18, 30:23–32:11, Figs. 5, 7, 12, 13). First, Petitioner argues
`
`the ’255 patent describes the term video image broadly, so that a video
`
`image encompasses still images such as GIF, JPEG, and bitmap images.
`
`Pet. 25–26 (citing Ex. 1001, 4:47–53). Next, Petitioner argues Mackintosh’s
`
`user terminal 212 is a receiving system that receives the data packet
`
`transmitted by data server 214, generates a video image from the
`
`information in the data packet, and automatically displays the video image
`
`on a display device without user input as shown in Figures 7 and 12. Id.
`
`Mackintosh discloses user terminal 212 can be a computer system having a
`
`processor, communications interface, and display device. Ex 1004, 6:30–34,
`
`30:23–32:11, Figs. 5, 13. Mackintosh further discloses user terminal 212
`
`can retrieve and display track image 322 and track information 324
`
`(including song, album, and artist names) retrieved from data server 214
`
`automatically, and without user input. Id. at 17:8–12, 28:16–18, Figs. 7, 12.
`
`Patent Owner, other than contesting the data packet received from data
`
`server 214 fails to include both a media asset identifier and song information
`
`(which we find unpersuasive for the reasons discussed above), does not
`
`contest Mackintosh discloses this limitation. See Prelim. Resp.
`
`Lastly, claim 1 requires the displayed video image to include the song
`
`information, including the title and recording artist of the selected song.
`
`Ex. 1001, 16:17–19.
`
`Petitioner demonstrates a reasonable likelihood of showing where
`
`Mackintosh discloses this limitation. Pet. 28 (citing Ex. 1004, 28:16–18).
`
`As discussed above, Mackintosh discloses the video image displayed in data
`
`20
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`window 302 includes song information including the song title and
`
`recording artist. Ex. 1004, 28:16–18, Figs. 7, 12. Patent Owner does not
`
`contest Mackintosh discloses this limitation. See Prelim. Resp.
`
`For the reasons discussed above, having considered the evidence and
`
`arguments presented by Petitioner and Patent Owner, we find on the current
`
`record that Petitioner has demonstrated a reasonable likelihood of showing
`
`Mackintosh discloses all the limitations of claim 1 and that claim 1 is
`
`unpatentable as anticipated by Mackintosh.
`
`3. Review of Challenge to Claims 2–9, 12–14, 16, and 17
`
`Petitioner also argues claims 2–9, 12–14, 16 and 17 are anticipated by
`
`Mackintosh. See Pet. 28–60. Patent Owner argues Petitioner has failed to
`
`demonstrate the likelihood of showing Mackintosh anticipates independent
`
`claims 12 and 17 for the same reasons set forth above regarding Petitioner’s
`
`challenge to claim 1. See Prelim. Resp. 17–19. Patent Owner further argues
`
`Petitioner has failed to demonstrate Mackintosh anticipates dependent
`
`claims 7 and 13 because Petitioner has failed to show that Mackintosh
`
`discloses transmitting a data packet that “specifies a screen location that is
`
`associated with said media asset identifier” as recited in claims 7 and 13. Id.
`
`at 19–21.
`
`Having determined Petitioner has demonstrated a reasonable
`
`likelihood of showing claim 1 is unpatentable as anticipated by Mackintosh,
`
`we need not consider the merits of Petitioner’s challenge to claims 2–9, 12–
`
`14, 16, and 17 at this stage of the proceedings. See 35 U.S.C § 314
`
`(permitting institution of inter partes review upon determining “a reasonable
`
`likelihood the petitioner would prevail with respect to at least 1 of the claims
`
`challeng
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