Playboy Enterprises, Inc.v.Skky, Inc.

Patent Trial and Appeal Board

Jan 29, 2016

10183756 (P.T.A.B. Jan. 29, 2016)

Trials@uspto.gov Paper 45
571-272-7822 Date Entered: January 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MINDGEEK, S.A.R.L., MINDGEEK USA, INC., and
PLAYBOY ENTERPRISES, INC.,
Petitioner,

v.

SKKY INC.,
Patent Owner.
____________

Case IPR2014-01236
Patent 7,548,875 B2
____________

Before HOWARD B. BLANKENSHIP, KRISTEN L. DROESCH, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
MindGeek, s.a.r.l., MindGeek USA, Inc., and Playboy Enterprises,
Inc., (collectively, “Petitioner”) filed a petition1 requesting an inter partes
review of claims 1–3, 5, and 15–23 of U.S. Patent No. 7,548,875 B2 (Ex.
1001, “the ’875 patent”) under 35 U.S.C. §§ 311–319. See Paper 4
(“Petition” or “Pet.”). The Board instituted an inter partes review of claims
1–3, 5, and 15–23 on asserted grounds of unpatentability for obviousness.
Paper 10 (“Dec. on Inst.”).
Subsequent to institution, Patent Owner Skky, Inc. filed a patent
owner response. Paper 21 (“PO Resp.”). Petitioner filed a reply. Paper 28
(“Pet. Reply”). We authorized Patent Owner to file a surreply to Petitioner’s
Reply. Paper 32 (“Surreply”).
Patent Owner filed a Motion to Exclude (Paper 33; “PO Mot. to
Exclude”). Petitioner filed an Opposition to the Motion to Exclude (Paper
39; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 41; “PO
Exclude Reply”). Petitioner filed a Motion to Exclude (Paper 35; “Pet. Mot.
to Exclude”). Patent Owner filed an Opposition to the Motion to Exclude
(Paper 38; “PO Exclude Opp.”), and Petitioner filed a Reply (Paper 40, “Pet.
Exclude Reply”).
An oral hearing was held on September 23, 2015. A transcript of the
hearing is included in the record (Paper 42; “Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.

1 This proceeding was terminated with respect to one party to the petition,
General Media Communications, Inc. Paper 20 (Decision on Joint Motion
to Terminate).
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For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–3, 5, and 15–23 of the ’875
patent are unpatentable.

A. Related Proceedings
According to Petitioner, the ’875 patent is involved in the following
lawsuits in the U.S. District Court for the District of Minnesota: Skky, Inc. v.
Manwin USA, Inc., No. 13-2086 (PJS/JJG); Skky, Inc. v. Vivid Entm’t, No.
13-2087 (PJS/JJG); Skky, Inc. v. Playboy Enters., Inc., No. 13-2089
(PJS/JJG); Skky, Inc. v. Gen. Media Commc’ns., No. 13-2085 (PJS/JJG); and
Skky, Inc. v. Dada Entm’t, No. 13-2083 (PJS/JJG). Pet. 4. Patent Owner
identifies a U.S. patent and several U.S. patent applications that may affect,
or be affected by, a decision in this proceeding. Paper 6, 1–2.

B. The ’875 Patent
The ’875 patent relates to a method for delivery and playback of
sound and image files on an electronic device. Ex. 1001, Abstract.

C. Illustrative Claim
Claim 1, reproduced below, is the sole independent claim in the ’875
patent.
1. A method of wirelessly delivering over the air one or
more digital audio and/or visual files from one or more servers
to one or more wireless device means comprising:
compressing said one or more digital audio and/or visual
files, wherein said audio and/or visual files comprise one or
more full or partial master recordings of songs, musical scores
or musical compositions, videos or video segments, movies or
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movie segments, film or [film] segments, one or more image
clips, television shows, human voice, personal recordings,
cartoons, film animation, audio and/or visual advertising
content and combinations thereof, and wherein said
compressing comprises normalizing, sampling and compressing
said digital audio and/or visual files;
storing compressed audio and/or visual files in one or
more storage mediums; and
transmitting to said wireless device means said
compressed audio and/or visual files wirelessly over the air,
with or without an Internet network.

D. Asserted Prior Art
U.S. Patent No. 7,065,342 B1, June 20, 2006 (Ex. 1017, “Rolf”).

Scot Hacker, MP3: The Definitive Guide, Mar. 2000 (Ex. 1009, “MP3
Guide”).

OFDM/FM Frame Synchronization for Mobile Radio Data Communication,
Aug. 1993 (Ex. 1015, “OFDM/FM”).

E. Asserted Grounds of Unpatentability
We instituted inter partes review on the following grounds of
unpatentability under 35 U.S.C. § 103(a):

References

Claim(s)
Rolf and MP3 Guide 1–3, 5, 15–21, and 23
Rolf, MP3 Guide, and OFDM/FM 22
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II. ANALYSIS
A. Claim Interpretation
In an inter partes review, the Board construes claim terms in an
unexpired patent using their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015),
cert. granted, 72016 WL 205946 (U.S. Jan. 15, 2016) (No. 15-446). The
claim language should be read in light of the specification, as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a claim
term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
customary meaning” is that which the term would have to a person of
ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007).
Our reviewing court also has explained:
The first step in construing a means-plus-function
limitation is to identify the function explicitly recited in the
claim. The next step is to identify the corresponding structure
set forth in the written description that performs the particular
function set forth in the claim. Section 112 paragraph 6 does
not “permit incorporation of structure from the written
description beyond that necessary to perform the claimed
function.” Structural features that do not actually perform the
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recited function do not constitute corresponding structure and
thus do not serve as claim limitations.

Asyst Techs, Inc. v. Empak, Inc., 268 F.3d 1364, 1369–70 (Fed. Cir. 2001)
(citations omitted).2

B. Wireless Device Means
Claim 1 recites, in its preamble, a method of wirelessly delivering
files “to one or more wireless device means.” The final step of the claim
recites “transmitting to said wireless device means said compressed audio
and/or visual files wirelessly over the air, with or without an Internet
network” (emphasis added).
There is a presumption that when the word “means” appears in a
claim element in combination with a function, it is a means-plus-function
element to which Section 112, sixth paragraph, applies. Signtech USA, Ltd.
v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999). A claim element,
however, that uses the word “means” but recites no function corresponding
to the means does not invoke Section 112, paragraph 6. Rodime PLC v.
Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).
The first step in construing a means-plus-function limitation is to
identify the function explicitly recited in the claim. See Asyst Techs, Inc. v.
Empak, Inc., 268 F.3d at 1369–70. The “wireless device means” of claim 1,
however, is not associated with or defined by a function. We acknowledge

2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, paragraph six, as 35 U.S.C. § 112(f). Pub. L.
No. 112-29, 125 Stat. 284, 296 (2011). Because the ’875 patent has a filing
date before September 16, 2012 (effective date of § 4(c)), we will refer to
the pre-AIA version of § 112.
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that the law does not require that a Section 112, sixth paragraph, limitation
contain the literal phrase “means for” or be in the form of a nonce word
followed by the word “for” and an associated function. For example, in
Signtech USA. v. Vutek, Inc., our reviewing court construed the term “ink
delivery means.” “[T]he claim element ‘ink delivery means’ uses the term
‘means’ in association with a function, namely ‘ink delivery.’ Although the
phrase ‘means for’ is not used, the phrase ‘ink delivery means’ is equivalent
to the phrase ‘means for ink delivery,’ because ‘ink delivery’ is purely
functional language.” 174 F.3d at 1356. The relevant inquiry is whether the
term at issue is purely functional. See Baran v. Med. Device Tech., Inc., 616
F.3d 1309, 1317 (Fed. Cir. 2010) (holding that the word “release” in the
claimed “release means for retaining the guide in the charged position” was
“not an idle description but a vital function to be performed by the means-
plus-function element.”).
In this case, however, the term “wireless device” is not purely
functional language but language that denotes structure. The ’875 patent
provides examples of wireless devices, such as “cellular phone 202” (Fig. 2)
and “I-Pod™ type listening device 1802” (Fig. 18). Ex. 1001, col. 14, ll.
14–18, col. 30, ll. 49–59.
In the Petition, Petitioner submits that the “wireless device means” is
a means-plus-function limitation that is to be interpreted in accordance with
35 U.S.C. § 112, sixth paragraph. Pet. 9–12. After hearing from Patent
Owner in its Preliminary Response (Paper 8), we determined, for purposes
of the Decision to Institute, that “wireless device means” is not a means-
plus-function limitation. Dec. on Inst. 5–7. We authorized a surreply to
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Petitioner’s Reply because Patent Owner had not had the opportunity to
respond to Petitioner’s views on our claim interpretation.
In its Patent Owner Response and Surreply, Patent Owner argues that
the prosecution history of the ’875 patent compels that the “wireless device
means” be interpreted in accordance with 35 U.S.C. § 112, sixth paragraph.
We acknowledge that the prosecution history indicates that instant claim 1
was allowed in response to the insertion of the term “wireless device means”
into the claim, at the suggestion of the Examiner. The USPTO, however, is
“under no obligation to accept a claim construction proffered as a
prosecution history disclaimer, which generally only binds the patent
owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (2014).
The meaning of “wireless device means,” under the required broadest
reasonable interpretation, is not precluded from review in this proceeding.
The only “function” recited in the claims that Patent Owner appears to
rely on for its position with respect to application of Section 112, sixth
paragraph, is the preamble of claim 1, which is said to include the
“functional language” of “wirelessly delivering” the compressed file to the
wireless device means. PO Resp. 7. “As such, the functional language of
‘wirelessly delivering’ defines the function of the ‘wireless device means.’”
Id. “[B]ased on the language of the claim, a person of ordinary skill in the
art would interpret the function of the wireless device means as requesting,
wirelessly receiving, and processing a compressed audio and/or visual file.”
Id. Patent Owner cites no authority for the proposition that the function of
an element in a means-plus-function limitation may be defined by inference
from language in the preamble of the claim, and we know of none. Patent
Owner does cite, without explanation, to an unreported Markman Order
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concerning a patent unrelated to the ʼ875 patent. The District Court in that
Order, however, came to the unsurprising conclusion that the function
associated with a claimed “means for securing said device to a delivery
system” is “securing the device to a delivery system.” AGA Medical Corp.
v. W. L. Gore & Associates, Inc., No. 10-3734, 2012 WL 4479241, at *11
(D. Minn. Sept. 28, 2012). The Court came to the equally unsurprising
conclusion that the function associated with a claimed “means for
attachment to a delivery device” is “to attach the device to a delivery
device.” Id. at *13. We, therefore, are unconvinced that claim 1 defines the
“wireless device means” in functional terms.
Assuming for the moment, however, that the “wireless device means”
is to be interpreted according to Section 112, sixth paragraph, we note that
Patent Owner argues the corresponding structure for the claimed “wireless
device means” includes multiple hardware processors. In the ʼ875 patent, a
preferred embodiment may be described, inherently, as containing two
processors — one in cell phone 202 and one in board 203 contained in
accessory 204. Ex. 1001, col. 14, l. 13–col. 15, l. 17, Figs. 2, 3. Alternative
embodiments of a “wireless device means,” however, are not described as
having multiple processors. See, e.g., id. at col. 30, l. 49–col. 31, l. 3, Fig.
18 (“I-PodTM type listening device 1802”). Patent Owner contends,
apparently, that the ’875 patent inherently describes that the “I-PodTM type
listening device” requires multiple processors. PO Resp. 22–23. As set
forth below, we need not determine if that contention is correct because (1)
the claimed wireless device means is not limited to structures described in
the Specification and equivalents thereof, and (2) even if it were, Patent
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Owner does not address all the described embodiments of the wireless
device means.
We must evaluate Patent Owner’s arguments in light of the evidence
that is before us. Patent Owner submits that “the patent” is not limited to an
accessory unit as depicted in Figure 2. PO Resp. 18 n.2. Patent Owner
quotes only a partial sentence from the ’875 patent for disclosure that “‘a
chip performing the same functions of the board [that] may instead be
embedded in the phone itself.’” Id. (quoting Ex. 1001, col. 14, ll. 15–25)
(alteration by Patent Owner). The quoted sentence reads in full: “Although
the system 200 [Fig. 2] is described as incorporating an accessory unit, it
should be understood that a chip performing the same functions of the board
may instead be embedded in the phone itself, or a software system may be
integrated with the existing hardware chip of a conventional cellular phone
without the need for additional hardware.” Ex. 1001, col. 14, ll. 19–25
(emphasis added). This software embodiment also is discussed elsewhere in
the ’875 patent. See, e.g., Ex. 1001, col. 5, l. 66–col. 6, l. 2 (“A cellular
phone, or similar device (having a processor, RAM, and flash elements) may
be integrated with software at the time of manufacturing for implementing
the system of the present invention.”); col. 32, ll. 46–50 (“It is a further
object of the present invention to provide a software system which may be
integrated into existing cellular telephone hardware for enabling the cellular
telephone to access and utilize sound files including clips, without the need
for extra hardware.”).
When the specification describes two or more distinct embodiments
that perform the same recited function, one does not attempt to craft a single
claim interpretation that is consonant with all structures in the specification
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corresponding to the claimed functions. Ishida Co. v. Taylor, 221 F.3d
1310, 1316 (Fed. Cir. 2000). Further, though such “means plus function”
limitations embrace all of the disclosed embodiments that correspond to the
claimed function, the claims are not limited to any particular one of the
disclosed embodiments. See Micro Chem. Inc. v. Great Plains Chem. Co.,
194 F.3d 1250, 1259 (Fed. Cir. 1999) (“Because alternative structures
corresponding to the claimed function were described, the district court
incorrectly limited ‘weighing means’ to the specific structures of the
preferred embodiment.”). Of particular relevance is our reviewing court’s
determination in the case of Serrano v. Telular Corp., 111 F.3d 1578 (Fed.
Cir. 1997). Although the specification disclosed discrete logic circuitry as a
preferred embodiment, the invention was not limited to such circuitry
because the specification also stated that the logic could be configured in
software. Id. at 1583. Thus, even if the “wireless device means” were to be
interpreted in accordance with Section 112, sixth paragraph, we are
unpersuaded that such “means” is required to have multiple processors.
Patent Owner argues, in the alternative, that even if not interpreted in
accordance with Section 112, sixth paragraph, the claimed “wireless device
means” should be interpreted as “a device capable of receiving data over a
cellular communications network and having multiple processors wherein
one or more processors is primarily dedicated to processing the compressed
multimedia data.” PO Resp. 15. Patent Owner relies on a declaration
submitted under 37 C.F.R. § 1.132 during prosecution by a co-inventor of
the patent, which is said to provide “additional evidence” that the “means”
includes a cellular device with “at least a second processor” in addition to a
processor included with the device. PO Resp. 21. Patent Owner refers to
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the Declaration (Ex. 1036) at paragraphs 4 and 5, contending that the
paragraphs reveal: (1) a prototype contained a second processor dedicated to
processing the data associated with compressed audio files; (2) one of
ordinary skill in the art would know that a conventional cellular phone
contains a single processor; and (3) the single processor was not powerful
enough to process a compressed audio and/or visual file. Id. at 20–21.
Patent Owner’s arguments are unhelpful because they do not quote the
statements from the Declaration that are deemed to provide the basis for
Patent Owner’s allegations. We find no indication in the cited paragraphs
that a “second processor” was necessary, or even contemplated.
Patent Owner also relies on the Declaration of its expert, which
alleges that a particular cell phone commercially available around the time
of invention contained a processor. PO Resp. 17 (citing Ex. 2021 ¶¶ 45˗46).
We can assume there were cell phones available at the time of invention that
contained a processor. It is not apparent, however, how that testimony may
be relied upon to show that the ʼ875 patent’s disclosure limits the claimed
“wireless device means” to “a device capable of receiving data over a
cellular communications network and having multiple processors wherein
one or more processors is primarily dedicated to processing the compressed
multimedia data,” as urged by Patent Owner.
Patent Owner refers also to one embodiment of a “wireless device
means” described by the ʼ875 patent that includes multiple processors. PO
Resp. 18˗20. But the “wireless device means” is not interpreted in
accordance with Section 112, sixth paragraph. Our reviewing court has
repeatedly warned against confining such claims to specific embodiments
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described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).
In view of the foregoing, on this record, we determine that the term
“wireless device means” is not a means-plus-function limitation and, thus, is
not governed by Section 112, sixth paragraph. Further, even if the term
were to be so construed, the corresponding structure in the specification is
not limited to the multiple-processor embodiment as depicted in Figure 2.
No further construction is required for the purposes of this decision.

C. A Segment of a Full Song, Musical Composition or Other Audio
Recording or Visual Recordings

Claim 21 depends from claim 1 and recites “wherein the compressed
digital audio and/or visual file is a segment of a full song, musical
composition or other audio recording or visual recordings.” Patent Owner
submits that the phrase “segment of a full song, musical composition, or
other audio recording or visual recording” should be construed as a
“playable portion of a song, musical composition, or other audio recording
or visual recording.” PO Resp. 25. As a basis for the interpretation, Patent
Owner argues that the Specification of the ’875 patent “discloses that a
segment is simply a shorter, playable portion of a full song, musical
composition, or other audio or visual recording.” Id. at 25–26.
The patent refers, for example, to “[s]ound clips, which are segments
of whole songs, musical compositions or other sound recordings.” Ex. 1001,
col. 11, ll. 3–5. The patent also refers to “a multiple number of clip
segments from a single song, musical composition, or other sound recording
played in sequence.” Id. at col. 11, ll. 46–48.
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We agree with Patent Owner that a “segment of a full song, musical
composition, or other audio recording or visual recordings” as recited in
claim 21 may be construed as a “playable portion of a song, musical
composition, or other audio recording or visual recording.”

D. Asserted Grounds of Unpatentability
1. Section 103(a) – Rolf and MP3 Guide
Rolf describes a mobile cellular telephone used to select a music
recording from a remote source, with the phone wirelessly receiving the
selected music recording into memory where it is available for playback by
an audio player in the phone. Ex. 1017, at *[57]. Petitioner applies the
teachings of Rolf and MP3 Guide in an asserted ground of obviousness as to
claims 1–3, 5, 15–21, and 23.
Petitioner contends that Rolf describes the method of claim 1 with the
exception of the “normalizing” and “sampling” limitations, which MP3
Guide describes as standard or well-known operations in applying MP3
compression to audio files. Pet. 20, 21–27 (claim chart). Petitioner relies on
the testimony of Dr. Michael Kotzin (Ex. 1008). Petitioner submits that one
of ordinary skill in the art would have combined the teachings of Rolf and
MP3 Guide because each reference relates to digital audio files and teaches
(MP3) compression processes for the files, achieving known results. Pet.
20– 21.
Patent Owner responds that Rolf does not disclose a structure
consisting of multiple hardware processors, with one or more of the
processors being “primarily dedicated” to processing compressed
multimedia data, which Patent Owner contends is a structural feature of the
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“wireless device means.” PO Resp. 33–36. We are not persuaded, however,
that the “wireless device means” is limited to a structure consisting of
multiple hardware processors. As discussed above, we are not persuaded
that the “wireless device means” is governed by 35 U.S.C. § 112, sixth
paragraph. Moreover, even if the “wireless device means” were to be
construed as a means-plus-function limitation under Section 112, sixth
paragraph, Patent Owner relies on only one embodiment described by the
’875 patent. The cell phone embodiment may be described, inherently, as
containing two processors — one in cell phone 202 and one in board 203
contained in accessory 204. Ex. 1001, col. 14, l. 13–col. 15, l. 17, Figs. 2, 3.
At least one alternative embodiment of a “wireless device means,” however,
is not described as having multiple processors. See § II.B, supra.

a. Claim 18
Claim 18 depends from claim 1 and recites that the compressed file
“is delivered to said wireless device means independent of an Internet
connection or other computer based system.” Patent Owner submits (PO
Resp. 37) that the claim is supported by the Specification at column 16, line
31 through column 17, line 19, which describes a method for transferring
data over an audio channel of a wireless telephone, whereby a customer need
not use a wireless internet service provider.
For the requirements of claim 18, the Petition relies on MP3 Guide at
page 286, which describes offering MP3 files for direct download over the
World Wide Web “or through an FTP server.” Pet. 31; Ex. 1009, 286.3 The

3 We cite to the document’s page number when referencing Exhibit 1009.
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Petition relies, further, on the Declaration of Dr. Kotzin (Ex. 1008). Pet. 31.
Dr. Kotzin opines that one of ordinary skill in the art would recognize that
file access from an FTP server need not be through the Internet, but the
server “could reside on a separate personal computer / network which is not
connected to the internet.” Ex. 1008 ¶¶ 73–74.
Patent Owner argues that “MP3 Guide explicitly teaches that an FTP
server uses the Internet.” PO Resp. 38. Patent Owner does not, however,
point to any disclosure in MP3 Guide that an FTP server or the FTP (file
transfer) protocol is limited to use on the Internet. Patent Owner further
argues that even if an Internet connection is not required, Petitioner’s expert
Dr. Kotzin testified in his Declaration that an FTP server for stored MP3
files could reside “on a separate personal computer/network which is not
connected to the Internet,” such that Dr. Kotzin “admits” that using FTP
requires a computer based system. Id. at 37–38. Dr. Kotzin, however,
describes the architecture of connecting to an FTP server on a private
network using cellular remote access to a modem, rather than requiring some
intervening computer between the server and the modem. See Ex. 1008
¶ 74. Thus, although the FTP server could reside on a computer, Dr. Kotzin
does not admit that the compressed file is delivered to the wireless device
means using a computer. Cf. Ex. 1001, col. 16, ll. 55˗57 (“A user can
simply place a regular call to the specific number (e.g., an “800” number) to
gain access to the Server” (emphasis added)). Patent Owner also refers for
support to paragraphs 89 through 91 of the Declaration of its expert,
Professor Kevin C. Almeroth. PO Resp. 38. Professor Almeroth, however,
does not allege that access to an FTP server for delivery of files requires a
“computer based system,” but does allege that an FTP server is “most
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typically” accessed via the Internet. Ex. 2021 ¶ 91. The testimony does not
support the view that an FTP server is limited to use on or over the Internet.

b. Claim 21
Claim 21 depends from claim 1 and recites “wherein the compressed
digital audio and/or visual file is a segment of a full song, musical
composition or other audio recording or visual recordings.” For disclosure
or suggestion of the additional requirements of claim 21, the Petition refers
to material in Rolf that includes column 8, lines 8 through 16, which states
that a user may download “the single being played, or the entire album on
which the single is located.” Pet. 32–33; Ex. 1017, col. 7, ll. 8–16; Ex. 1008
¶ 79. Patent Owner acknowledges that Petitioner cites to portions of Rolf
“that disclose that a single full length song may be distributed rather than an
entire album” but argues a “single full length song is not a segment of a
song.” PO Resp. 39. “The plain language of the claim limits the
transmission to a segment of a song, or a playable portion of the song.” Id.
We disagree with Patent Owner’s assessment of claim 21 because a
“segment of a full song” is but one of the alternatives recited by the claim.
Under the broadest reasonable interpretation, and consistent with Patent
Owner’s construction as a “playable portion of a song, musical composition,
or other audio recording or visual recording” (§ II.C, supra), the claim is
read as “segment” (or “playable portion”) modifying “musical composition
or audio recording” — and a single full length song is a “segment” (or
“playable portion”) of an album. Further, even if “segment” were to be read
as modifying only “a full song,” a single full length song from an album is,
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at the least, an “other audio recording” in accordance with the claim because
it is not “a segment of a full song.”

2. Section 103(a) – Rolf, MP3 Guide, and OFDM/FM
Petitioner applies the teachings of Rolf, MP3 Guide, and OFDM/FM
in an asserted ground of obviousness as to dependent claim 22, which recites
“the use of OFDM.” Petitioner submits that OFDM/FM teaches that
orthogonal frequency division multiplexing (“OFDM”) was used for data
transmission over an analog FM channel such as one used with an analog
cellular phone. Pet. 55–56. According to Petitioner, one of skill in the art
who was considering how to transfer data over a cellular network would
have “considered and likely used OFDM as a tool to facilitate the transfer of
data.” Id. at 56. Petitioner also relies on the testimony of Dr. Kotzin. Id. at
55–57 (citing Ex. 1008).
Patent Owner in its Response argues that the use of OFDM on cellular
networks “was anything but routine,” and submits that several disadvantages
related to using OFDM were known around the time of invention. PO Resp.
42–43. Patent Owner relies on the Declaration of Professor Almeroth (Ex.
2021). As one drawback, Patent Owner submits that one would not have
contemplated using OFDM on a cellular network because cellular phones
are mobile receivers having signals subject to Doppler shift, for which the
system must compensate. PO Resp. 42–43. Yet, the title of the OFDM/FM
reference makes plain that device mobility was considered: “OFDM/FM
Frame Synchronization for Mobile Radio Data Communication” (emphasis
added). Moreover, although we acknowledge there may be tradeoffs in the
selection of any particular modulation technique, we also are cognizant that
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the OFDM/FM reference teaches “OFDM/FM is particularly attractive
because it can be implemented simply and inexpensively by retrofitting
existing FM communication systems.” Ex. 1015, 302.4 Further, in
evaluating the weight to be accorded Patent Owner’s arguments and
evidence, we observe that the ʼ875 patent does not teach that the inventors
faced significant obstacles in implementing OFDM for data transmission.
The patent, in fact, lists numerous benefits in the use of an OFDM
modulation scheme, without any hint or indication that the inventors were
the ones who discovered those benefits. Ex. 1001, col. 16, l. 60–col. 17. l. 3.
Patent Owner also alleges that, around the time of invention, OFDM
was considered for implementation by cellular network standard setting
bodies, but was ultimately rejected. PO Resp. 43 (citing Ex. 2021 ¶ 75).
Patent Owner does not however, identify any of the “standard setting
bodies” or allege why OFDM may have been “ultimately rejected.”
Moreover, even if the allegation were founded in fact, Patent Owner directs
us to no evidence tending to show what factors a standard setting body might
consider in setting a standard, and the relative weight given to each factor.
Patent Owner alleges that Rolf and OFDM/FM “teach away from each
other” because Rolf teaches the use of 3G modulation protocols instead of
OFDM. “Because 3G does not use an OFDM modulation scheme, Rolf
teaches away from the process in OFDM/FM.” PO Resp. 44 (citing Ex.
2021 ¶ 103). Although the prior art might teach more than “one” way,
Appellant fails to point to any actual “teaching away” in either reference.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be

4 We cite to the document’s page number when referencing Exhibit 1015.
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discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. A reference does not teach away,
however, if it merely expresses a general preference for an
alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention claimed.

Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (internal quotations omitted). Neither reference warns
against, or discourages the artisan from, using OFDM.
Patent Owner argues, further, there would be no expectation of
success in combining Rolf and OFDM because Rolf uses a 3G network and
OFDM uses an incompatible ALOHA network architecture. PO Resp. 46
(citing Ex. 2021 ¶ 111). The asserted ground of obviousness, however, does
not propose combining a 3G network and an ALOHA network architecture.
Rather, Petitioner proposes using OFDM as a modulation technique for use
over an analog FM channel. Pet. 55–56. Patent Owner also submits that
data resulting from experiments performed in “a pure ALOHA environment
would have no bearing on real world data transmission.” PO Resp. 45
(citing Ex. 2021 ¶ 78). Actually, Patent Owner’s expert opines that data
from such experiments would provide “little if any” insight on real world
data transmission. Ex. 2021 ¶ 78. Patent Owner’s expert does not, however,
cite to any comparative data or other evidence in the record in support of the
opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
the underlying facts or data on which the opinion is based is entitled to little
or no weight.”).
Patent Owner also alleges that the cellular device taught in Rolf would
require “dramatic changes” to utilize OFDM transmission as taught by
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OFDM/FM. PO Resp. 45 (citing Ex. 2021 ¶ 81). Actually, Patent Owner’s
expert opines that due to a relatively high bit error rate (BER), the system
described by OFDM/FM “would likely require error control techniques” to
be implemented at the receiver in order for complex data to be successfully
received. Ex. 2021 ¶ 81. Even assuming that error control techniques would
be required, Patent Owner’s expert does not allege, let alone show, that such
techniques would have been beyond the level of skill of the ordinary artisan.
Moreover, we are not persuaded that the bit error rate associated with the
OFDM/FM paper would discourage transmission of a compressed audio file
or even a “high quality rich media file.” PO Resp. 46. Patent Owner’s
expert refers to Exhibit 2020 (Handbook of Electrical Engineering
Calculations) at 170 as support for the opinion that “to transmit MP3 data as
taught by Rolf,” a BER “better than 1 x 10-6 would be required.” Ex. 2021
¶ 110. Exhibit 2020 at 170, however, indicates that “[g]enerally, speech
transmission requires a BER better than 10-6, and video transmission
requires BER < 10-7 to provide acceptable signals.” The instant claims,
however, are not directed to speech or video “transmission” or streaming.
The claims are directed to wireless delivery of compressed audio or video
files (e.g., a compressed audio file of a human voice) for storage and later
playback. See independent claim 1, dependent claims 2, 3, and 15. We,
therefore, accord little weight to the view that the BER associated with
OFDM/FM would be fatal to the combination proposed by Petitioner.
Further, we are not persuaded that the combination as proposed would
require “undue experimentation.” PO Resp. 47–48. The evidence to which
Patent Owner cites (Ex. 2021 ¶ 107) is testimony that merely alleges
differences exist between the systems of Rolf and OFDM/FM.
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Patent Owner also alleges that Petitioner has not shown a motivation
to combine Rolf and MP3 Guide with the teachings of OFDM/FM.
“Petitioners fail to address why one of skill would modify the transmission
modulation used in Rolf with that provided in OFDM/FM.” PO Resp. 49.
Patent Owner’s argument is factually incorrect and, thus, not persuasive.
Petitioner submits, for example, that OFDM/FM was particularly attractive
because it could be implemented simply and inexpensively by retrofitting
existing FM communication systems. Pet. 57; Ex. 1015, 302.

E. Asserted Grounds — Conclusion
Upon review of the Petition and supporting evidence, as well as the
Patent Owner Response, Surreply, and supporting evidence, we conclude
that Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–3, 5, 15–21, and 23 are unpatentable under 35 U.S.C. § 103(a) as
obvious over the combination of Rolf and MP3 Guide, and that claim 22 is
unpatentable under § 103(a) over the combination of Rolf, MP3 Guide, and
OFDM/FM.

F. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Petitioner’s Exhibit 1046. PO Mot. to
Exclude. In its Reply, Petitioner relies on Exhibit 1046 to show that a
particular cell phone addressed by Patent Owner’s expert in his Declaration
included multiple processors. We did not, and need not, consider such
arguments or evidence in connection with the Reply. We have determined
that Petitioner has demonstrated, by a preponderance of the evidence that the
challenged claims are unpatentable, without considering Petitioner’s
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arguments regarding the particular cell phone. Accordingly, we dismiss
Patent Owner’s motion to exclude as moot.

G. Petitioner’s Motion to Exclude
Petitioner moves to exclude much of the testimony in Professor
Almeroth’s Declaration on the basis that he is not qualified to provide expert
testimony in this proceeding. Most of Petitioner’s arguments in support of
the motion appear to address the weight to be given the testimony, as
opposed to its admissibility. We have considered the testimony and
assigned the weight to which we believe it is entitled.
Petitioner also moves to exclude Exhibits 2006 through 2020, filed
with Professor Almeroth’s Declaration, and testimony in the Declaration that
is purported to rely on the Exhibits, on the basis that the Exhibits consist of
inadmissible hearsay.
In any event, because consideration of Professor Almeroth’s
Declaration and Exhibits 2006 through 2020, to the extent relied upon by
Patent Owner in its Response, does not affect the outcome in favor of
Petitioner in this final written decision, Petitioner’s motion to exclude is
dismissed as moot.

III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 1–3, 5, 15–
21, and 23 of the ’875 patent are unpatentable under 35 U.S.C. § 103(a) as
obvious over the combination of Rolf and MP3 Guide, and that claim 22 is
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unpatentable under § 103(a) over the combination of Rolf, MP3 Guide, and
OFDM/FM.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–3, 5, and 15–23 of the ’875 patent have
been shown to be unpatentable;
FURTHER ORDERED that the parties’ respective motions to exclude
evidence are dismissed; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:
Frank M. Gasparo
VENABLE LLP
fmgasparo@venable.com

For PATENT OWNER:

Ryan Schultz
Andrew J. Kabat
ROBINS, KAPLAN, MILLER, & CIRESI LLP
rmschultz@rkmc.com
AJKabat@rkmc.com