Cypress Lake Software, Inc

Patent Trials and Appeals Board

Jul 1, 2020

IPR2019-00391 (P.T.A.B. Jul. 1, 2020)

Trials@uspto.gov Paper 19
571-272-7822 Date: July 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC, DELL INC. and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

CYPRESS LAKE SOFTWARE, INC.,
Patent Owner.
____________

IPR2019-00391
Patent 9,817,558 B1
____________

Before KEN B. BARRETT, MIRIAM L. QUINN, and
GREGG I. ANDERSON, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
A. Background and Summary
Google LLC, Dell Inc. and Samsung Electronics America, Inc.
(collectively “Petitioner”)1 filed a Petition requesting inter partes review of
U.S. Patent No. 9,817,558 B1 (“the ’558 patent,” Ex. 1001). Paper 1
(“Pet.”). The Petition challenges the patentability of claims 14–22, 24–28,
and 30 of the ’558 patent. Id. at 8. We instituted an inter partes review of
all challenged claims on the sole proposed ground of unpatentability. Paper
8 (“Dec. to Inst.”), 24. Cypress Lake Software, Inc. (“Patent Owner”)2 filed
a Response to the Petition. Paper 10 (“PO Resp.”). Petitioner filed a Reply
(Paper 12, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 13, “PO
Sur-Reply”). An oral argument was not held. See Paper 17 (granting
Petitioner’s unopposed request to cancel the oral argument).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons discussed below, we determine that Petitioner has shown by
a preponderance of the evidence that claims 14–22, 24–28, and 30 of
the ’558 patent are unpatentable.
B. Related Proceedings
One or both parties identify, as matters involving or related to
the ’558 patent, Patent Trial and Appeal Board case IPR2019-00390 and the
following:

1 Petitioner identifies Google LLC, Dell Inc., Dell Technologies Inc., Denali
Intermediate Inc., Dell USA LP, Dell Products LP, EMC Corporation,
Samsung Electronics America, Inc., Samsung Electronics Corp, Ltd. and HP
Inc. as real parties-in-interest. Pet. 6.
2 Patent Owner identifies Cypress Lake Software, Inc. as the real party-in-
interest. Paper 7, 1.
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LG Electronics MobileComm USA, Inc. v. Cypress Lake
Software, Inc., Case No. 1-18-cv-00806 (D. Del.);
Cypress Lake Software, Inc. v. Dell, Inc., Case No. 6-18-
cv-00138 (E.D. Tex.);
Cypress Lake Software, Inc. v. Samsung Electronics
America, Inc., Case No. 6-18-cv-00030 (E.D. Tex.);
Cypress Lake Software, Inc. v. Samsung C&T America,
Inc., Case No. 6-18-cv-00016 (E.D. Tex.);
Cypress Lake Software, Inc. v. BlackBerry Corporation,
Case No. 6-17-cv-00692 (E.D. Tex.);
Cypress Lake Software, Inc. v. HP Inc., Case No. 6-17-
cv-00462 (E.D. Tex.);
Cypress Lake Software, Inc. v. LG Electronics USA,
Inc., Case No. 1-17-cv-01133 (D. Del.);
Cypress Lake Software, Inc. v. ZTE (USA) Inc., Case
No. 6-17-cv-00300 (E.D. Tex.);
Cypress Lake Software, Inc. v. HP Inc., Case No. 5:18-
cv-06144 (N.D. Cal.) (according to Patent Owner, transferred
from the Eastern District of Texas on 10/5/2018); and
Cypress Lake Software, Inc. v. ZTE (USA) Inc., Case
No. 5:18-cv-06146 (N.D. Cal.) (according to Patent Owner,
transferred from Eastern District of Texas on 10/5/2018).
Pet. 6–7; Paper 7, 2.
C. The ’558 Patent
The ’558 patent is titled “Methods, Systems, and Computer Program
Products for Coordinating Playing of Media Streams.” Ex. 1001, code (54).
The ’558 patent describes a problem of multiple media streams, such as
video, being allowed to be presented on the same device thus causing
undesirable interference.
When applications attempt to play more than one media
stream on current devices, all the applications are allowed
access to the presentation devices of the device, for example a
display device and/or an audio device. The media streams are
played by corresponding applications without regard for other
media streams being played. Watching a video or listening to a
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song with interference from other audio streams and video
streams is a common experience.
Id. at 1:21–28. Thus, according to the ’558 patent, “there exists a need for
methods, systems, and computer program products for coordinating playing
of media streams.” Id. at 1:43–45. Further according to the ’558 patent,
“[c]oordination and control of media streams as described herein may
prevent incomprehensible and sometimes unpleasant user experiences
resulting from media streams playing simultaneously in an uncoordinated
manner.” Id. at 14:51–54.
The ’558 patent discloses the use of “presentation focus information”
to coordinate the actions for the media players:
Methods and systems are described for coordinating
playing of media streams. In one aspect the method includes
detecting a first media player access to a first presentation
device to play a first media stream. The method further
includes accessing first presentation focus information for
determining whether the first media player has first presentation
focus for playing the first media stream.
Id. at 1:57–63. The ’558 patent explains that “presentation focus refers to an
attribute associated with a media player, directly and/or indirectly, indicating
whether the media player is allowed to access one or more presentation
devices for playing one or more corresponding media streams on the
presentation devices.” Id. at 9:43–48. “Presentation focus is an attribute for
restricting and coordinating access to an output device by one or more
applications.” Id. at 9:60–62. “Presentation focus information identifies
and/or otherwise enables the identification of one or more media players and
whether the media players have presentation focus.” Id. at 9:20–23.
A change in the presentation focus may result from a user input such
as pressing “play.” Id. at 11:50–52 (“A user input for identifying a
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particular media stream and/or player to play may be detected resulting in a
change to presentation focus information.”). The utilization of multiple
presentation devices is discussed:
In another aspect, presentation focus information may
identify more than one media stream of one or more media
players for playing on one or more presentation devices. That
is, multiple presentation devices may play media streams at the
same time and/or multiple media players may play
corresponding media streams on a shared presentation device.
Id. at 9:28–34.
D. Illustrative Claim
Of the challenged claims of the ’558 patent, claims 14 and 24 are
independent claims. The remaining challenged claims depend directly or
indirectly from claim 14 or claim 24. Claim 14, reproduced below with
bracketed annotations3 inserted, is illustrative:
14[a]. A first presentation device, comprising:
[14b] a non-transitory memory storing instructions;
[14c] a touchscreen; and
[14d] one or more processors in communication with the
non-transitory memory and the touchscreen, wherein the one or
more processors execute the instructions to:
[14e] simultaneously present a first media player and a
second media player, [14f] where the first media player is
presented with at least one first input control and the second
media player is presented with at least one second input control,
the at least one first input control and the at least one second
input control each including at least one of a play input control
or a pause input control;
[14g] detect a selection of the at least one first input
control presented with the first media player;

3 We utilize Petitioner’s annotations for claim 14 for ease of reference but
have retained the paragraph formatting from the issued patent.
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[14h] in response to the detection of the selection of the
at least one first input control presented with the first media
player, present a first media stream via the first presentation
device utilizing the first media player;
[14i] detect, while the first media stream is being
presented via the first presentation device utilizing the first
media player, a selection of the at least one second input control
presented with the second media player;
[14j] in response to the detection of the selection of the at
least one second input control presented with the second media
player while the first media stream is being presented via the
first presentation device utilizing the first media player, cause a
change in presentation focus, by: [14k] pausing the
presentation of the first media stream via the first presentation
device utilizing the first media player, and presenting a second
media stream via the first presentation device utilizing the
second media player;
[14l] wherein the first presentation device is configured
such that the change in presentation focus results from at least
one of: a releasing of a first presentation focus in connection
with the first media player, a detected user input indication for
giving the second media player a second presentation focus, a
change in input focus, a change in an attribute of a user
interface element, a count of media streams being played, a
ranking of media streams being played, a transparency level of
at least one of the user interface element, or another user
interface element sharing a region of a display of the first
presentation device.
Ex. 1001, 33:5–51.
E. Evidence
Petitioner relies on the following references:
Reference Dates Exhibit No.
Marano US Pat. Appl. Pub.
No. 2010/0138780 A1
Filed May 20, 2009;
Published June 3, 2010
1003
Murray US Pat. Appl. Pub.
No. 2009/0228897 A1
Filed March 4, 2009;
Published Sept. 10, 2009
1006
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Petitioner also relies on the Declaration of Dr. Benjamin B. Bederson
(Ex. 1002) in support of its arguments. Patent Owner initially relied on the
“Rebuttal Expert Report of Dr. Aviel D. Rubin” (Ex. 2002) filed in a related
district court litigation. See PO Resp. 3, 9 n.17, 28 n.47. Patent Owner
withdrew reliance on that testimony and, pursuant to the parties’ joint
stipulation, Exhibit 2002 containing that testimony was expunged because
Dr. Rubin became unavailable for cross-examination. See Paper 11 at 2.
The parties rely on other exhibits as discussed below.
F. Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following ground:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
14–22, 24–28, 30 103(a) Marano, Murray
II. ANALYSIS
A. Principles of Law
Petitioner bears the burden of persuasion to prove unpatentability of
the claims challenged in the Petition, and that burden never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). To prevail, Petitioner must establish by a
preponderance of the evidence that the challenged claims are unpatentable.
35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2018).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) any objective evidence of
non-obviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. The Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted).
Petitioner, relying on the testimony of Dr. Bederson, maintains that:
In the relevant timeframe, a person of ordinary skill in the art
had at least a Bachelor’s Degree in Computer Science and two
years of work experience programming personal computing
systems including programming for audio-visual presentation
within various computer systems.
Pet. 50 (citing Ex. 1002 ¶ 29 (the Bederson Declaration); Ex. 1013, 12
(claim construction order in a district court proceeding)).
Patent Owner notes that the ’558 patent has been the subject of two
claim construction orders issued by the District Court for the Eastern District
of Texas, and requests that “the Board adopt a definition of [the person of
ordinary skill in the art] consistent with the District Court (and consistent
with the Petitioner’s reliance on documents from such proceedings).” PO

4 The parties have not directed our attention to any objective evidence of
non-obviousness.
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Resp. 25–26 (citing Exs. 1013, 1022 (claim construction orders)). Patent
Owner, however, does not explain how, if at all, Petitioner’s proposed level
of ordinary skill in the art is not consistent with that of the District Court.
Through added emphasis in quoting the District Court’s claim construction
order, Patent Owner identifies the type of bachelor’s degree as a difference.
Id. at 25 (quoting Ex. 1013, 12). The District Court found that a person of
ordinary skill in the art would have had a “Bachelor’s degree in Electrical
Engineering, Computer Engineering, Computer Science, or equivalent
thereof” (Ex. 1013, 12), whereas Petitioner proposes a Bachelor’s Degree in
Computer Science (Pet. 50). Although the District Court’s definition seems
broader than that proposed by Petitioner, we cannot say that the two
definitions are inconsistent. Patent Owner also does not explain how, if at
all, Petitioner’s proposed level of ordinary skill in the art is not consistent
with Petitioner’s (or Patent Owner’s) reliance here on documents from those
proceedings. See PO Resp. 26 (citing Exs. 1010, 1013–1022); cf., e.g.,
Pet. 17 (citing Exs. 1010, 1013–1020 in the context of informing the Board
that “[v]arious parties have taken positions concerning claim construction in
related litigation.”); Paper 11 at 2 (Patent Owner withdrawing reliance on
Dr. Ruben’s testimony from a district court proceeding).
We determine that the definition offered by Petitioner and
Dr. Bederson comports with the qualifications a person would have needed
to understand and implement the teachings of the ’558 patent and the prior
art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (recognizing that the prior art itself may reflect an appropriate level of
skill in the art). Moreover, the parties do not identify, and we not discern,
any difference between the two proposed definitions that has a material
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effect on any dispositive issue in this case. Because Petitioner’s and Dr.
Bederson’s definition reflects the level of ordinary skill in the art, we adopt
and apply it here.
C. Claim Construction
In an inter partes review requested in a petition filed on or after
November 13, 2018, we apply the same claim construction standard used in
district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019).
In applying that standard, claim terms generally are given their
ordinary and customary meaning as would have been understood by a person
of ordinary skill in the art at the time of the invention and in the context of
the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
the meaning of the disputed claim limitation, we look principally to the
intrinsic evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17).
The ’558 patent has been the subject of two claim construction orders
issued by the District Court for the Eastern District of Texas—in Cypress
Lake Software, Inc. v. ZTE (USA) Inc., Case No. 6-17-cv-00300 (E.D. Tex.)
(Ex. 1013, “the ZTE Claim Construction Order,” signed August 23, 2018)
and in Cypress Lake Software, Inc. v. Samsung Electronics America, Inc.,
Case No. 6-18-cv-00030 (E.D. Tex.) (Ex. 1022, “the Samsung Claim
Construction Order,” signed May 10, 2019).5

5 In the related case IPR2019-00390, the parties each filed a brief addressing
the possible impact on that inter partes review of the then-recently issued
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1. Presentation Focus and Presentation Focus Information
The parties to the ZTE litigation (Patent Owner Cypress Lake and
defendant HP Inc.) agreed to the following proposed constructions of
“presentation focus” and “presentation focus information” within the
meaning of claim 14 of the ’558 patent:
[P]resentation focus [refers to] an attribute associated
with a media player, directly and/or indirectly, indicating
whether the media player is allowed to access one or more
presentation devices for playing one or more corresponding
media streams on the presentation devices; an attribute for
restricting and coordinating access to an output device by one
or more applications [; and]
[P]resentation focus information [refers to] data that
identifies one or more media players and whether the media
players have presentation focus.
Ex. 1013, 12; see also Ex. 1010, 2 (Joint Claim Construction Statement,
“Cypress and HP have agreed on the following constructions”). The ZTE
District Court adopted those agreed-upon constructions. Ex. 1013, 13. The
parties to the Samsung litigation also agreed to the same or similar
construction for “presentation focus” within the meaning of claims 14
and 17, and the District Court adopted that agreed-upon construction.
Ex. 1022, 13, 15.
Petitioner, in the Petition, argues that the agreed constructions in the
ZTE Claim Construction Order are supported by the Specification and that
they should be adopted here. Pet. 17–18 (citing Ex. 1001, 9:15–25;
Ex. 1002 ¶¶ 50–51). In the Institution Decision, we determined that

claim construction order in the District Court, and particularly regarding a
recitation of independent claim 1. IPR2019-00390, Papers 10, 11. The
parties did not request similar briefing in this inter partes review involving
independent claims 14 and 24.
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Petitioner’s proposed constructions are consistent with descriptions in the
Specification and are applicable to independent claims 14 and 24 and their
respective dependent claims. Dec. to Inst. 9–10 (citing Ex. 1001, 9:20–23,
9:43–48, 9:60–62). We adopted those constructions for purposes of the
Institution Decision. Id. at 10. In its Response, Patent Owner states that it
does not dispute the adopted constructions. PO Resp. 27. For purposes of
this decision, we again adopt the constructions for “presentation focus” and
“presentation focus information” as set forth above.
2. Instructions To . . .
Independent claims 14 and 24 recite “wherein the one or more
processors execute the instructions to . . .” followed by a list of actions.
In the ZTE Claim Construction Order, the District Court determined
that the “instructions to” recitations of claim 14 of the ’558 patent are not
governed by 35 U.S.C. § 112 ¶ 6 and are to be given their plain and ordinary
meaning. Ex. 1013, 66–67. Petitioner states:
For the limited purpose of the present petition, the Petitioners
apply the court’s interpretation in ZTE that claim terms of the
form “instructions to . . . [perform a function]” are not governed
by 35 U.S.C. §112 ¶6 . . . . Petitioners apply the art to the
challenged claims in this petition in a manner that is generally
consistent with how Cypress Lake appears to be asserting the
“instructions to” limitations of the ’558 patent in the related
district court litigations.
Pet. 18–19 (bracketed alteration in original). In light of the Court’s
interpretation as set out in the ZTE Claim Construction Order, we understand
the Petition to apply the “plain and ordinary meaning” of “instructions to” in
the articulation of its challenges.
In the Institution Decision, we observed that there was no dispute
between the parties as to the “instructions to” limitations being properly
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construed as having the plain and ordinary meaning, and we determined that
the limitations did not require express or further construction for purposes of
that decision. Dec. to Inst. 10–11.
There continues to be no dispute between the parties regarding the
meaning of the “instructions to . . .” phrase. See, e.g., PO Resp. 27 (claim
construction section indicating that Patent Owner does not dispute the
“proposed and adopted constructions”). Additionally, we discern no
dispositive issue that turns on the meaning of that phrase. For these reasons,
we again determine that the “instructions to . . .” phrase does not require
express construction.
3. Media Stream
Independent claim 24, for example, recites “instructions to . . . allow
the first media stream to be presented via the first presentation device.”
Ex. 1001, 35:43–45 (emphasis added). Claim 24 contains a similar
recitation where the second presentation device is to be utilized. Id.
at 35:49–51. Independent claim 14 recites “instructions to . . . present a first
media stream via the first presentation device . . . and presenting a second
media stream via the first presentation device.” Id. at 33:23–24, 33:37–38
(emphasis added).
Patent Owner argues that “a ‘media stream,’ in the context
claimed[,] . . . inherently includes an audio component.” PO Sur-Reply 4.
Patent Owner further argues that “even if the claims of the ‘558 patent do
not explicitly require audio and video to be played, the claims require the
system to include the ability to play audio and/or[6] video.” Id. at 10. Patent

6 Although Patent Owner uses the phrase “and/or,” we understand Patent
Owner to intend only “and” based on Patent Owner’s arguments as to that
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Owner implicitly argues that the claims, via the recitation of “media stream,”
require the “handling of audio output” and displaying multimedia streams.
See id. at 19 (“Marano does not disclose handling of audio output, in the
context claimed. Specifically, Marano fails to disclose Patent Owner’s
claimed technique wherein [sic] ‘allow the first media stream to be presented
via the second presentation device,’ in the context claimed in claim 24.”); id.
at 11 (section heading, with bolding omitted: “Marano is directed . . . not
towards displaying multimedia streams.”); see also PO Resp. 38 (arguing
that the relied-upon references do not “teach handling of audio output data
associated with multiple resources.”).
Petitioner argues that the claims do not require audio. Pet. Reply 3–6.
Petitioner contends that the claim term “media stream” encompasses “video
‘and/or’ audio (one or the other, or both).” Id. at 3–4 (bolding and footnote
omitted) (quoting Ex. 1001, 18:52–57). Petitioner argues that “[t]he silence
of the ’558 patent claims concerning audio contrasts sharply with their
express recitation of video.” Id. at 4 (quoting claims 1 and 24).
For the reasons that follow, we conclude that the claim term “media
stream” does not require audio or, as Patent Owner urges, the handling of
audio output or the displaying of multimedia streams.
Turning first to the claim language itself, we observe that the
independent claims of the ’558 patent do not include the term “audio.”
Ex. 1001, 28:65–29:35, 33:5–51, 35:18–67 (independent claims 1, 14,
and 24); cf. PO Sur-Reply 4 (Patent Owner arguing that “an audio

which Marano purportedly lacks. See, e.g., PO Sur-Reply 11 (heading, with
emphasis and capitalizing omitted, “Marano does not disclose handling of
audio, in the context claimed.”).
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component” is inherent in the claim term “media stream.”). The lack of an
explicit mention of “audio” in the independent claims is in contrast to the
language in, for example, independent claim 1 reciting “a first media stream
that includes video.” Ex. 1001, 29:13–14; see also id. at 35:38–39
(independent claim 24 reciting the same). As discussed below, the
Specification of the ’558 patent evidences that video and audio are types of
“media.” The drafter’s use of the broader term “media stream” coupled with
the explicit reference to a media stream that includes video supports a
conclusion that the independent claims do not, as Patent Owner urges,
require a media stream that includes audio.
As Petitioner notes (Pet. Reply 3), the concept of audio, although not
recited in the independent claims, does appear in dependent claim 7, which
sets a maximum limit (but not a minimum) on the number of “audible video
streams” presented on a given presentation device. See Ex. 1001, 31:21–27
(“[T]he first presentation device is configured such that no more than a
single audible video stream is presented via [each of two presentation
devices] at a time, in order to avoid an unpleasant listening experience.”).
Claim 7 evidences that the drafter knew how to include language directed to
audio when intended.
The Specification of the ’558 patent indicates that the term “media
stream” is a genus encompassing the species “audio streams” and “video
streams.” For example, the background section, in describing the problem
addressed, explains:
When applications attempt to play more than one media
stream on current devices, all the applications are allowed
access to the presentation devices of the device, for example a
display device and/or an audio device. The media streams are
played by corresponding applications without regard for other
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media streams being played. Watching a video or listening to a
song with interference from other audio streams and video
streams is a common experience.
Ex. 1001, 1:21–28. In other words, a video stream (“[w]atching a video”) is
a type of “media stream,” and an audio stream (“listening to a song”) is
another type of “media stream.” The drafter, in the quoted excerpt above,
like others in the Specification, used the phrase “and/or” to broadly disclose
the subject matter and thereby encompass one or the other or both of a
particular item. Id. at 1:21–24 (“attempt[ing] to play more than one media
stream on . . . a display device and/or an audio device.”); 10:19–23 (“Priority
may be based on a content type of a media stream; a source of the stream,
and/or a time a media stream and/or media player has been waiting for
presentation focus. The list provided is exemplary and not exhaustive.”);
18:50–57 (“Applications 404a in FIG. 4a are illustrated including media
player user interface element handlers (UIEH) 432a configured to
interoperate with GUI [graphical user interface] subsystem 420a and/or
audio subsystem 428a to present one or more video and/or audio streams on
display 130 and/or an audio presentation device (not shown).”) (emphasis
added).
The Specification further explains that “types of media streams”
include visual, audio, tactile, and odors, and states that “[c]orrespondingly,
exemplary media streams include a video or image data stream, an audio
stream, and a stream of other presentable sensory data.” Id. at 6:46–59;
cf. id. at 6:64–66 (“An audio player, video player, and/or or other media
player type may process and play audio data, video data, and/or other media
data, respectively”). Thus, although an audio stream is a type of media
stream, a media stream does not necessary include audio.
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Patent Owner refers to the Specification and presents several
arguments in support of its position, with many utilizing qualified,
exemplary, and permissive, rather than mandatory, terminology. Patent
Owner makes the non-controversial assertion that “[a] media player may be
a multimedia player configured to play multiple media streams
concurrently,” but this does not help Patent Owner as the pertinent claim
term is “media player,” not “multimedia player.” PO Sur-Reply 8–10
(emphasis added). Patent Owner argues that “ALL of the exemplary file
formats for the media players in both the ‘558 Patent and Marano list
formats that are either audio . . . or audio/video,” but presents no persuasive
argument or evidence from which to conclude that the claimed invention is
limited to a device utilizing those exemplary formats. Id. at 9 (emphasis in
original); cf. id. at 10 (seemingly contradictorily arguing that “Marano fails
to disclose or enable presentation of a ‘media stream,’ in the context
claimed.”). Patent Owner further argues that “the ‘558 patent teaches that
‘[c]ontainers for video formats often are defined to include audio and other
types of data streams’ . . . [and t]hus, even if the claims of the ‘558 patent do
not explicitly require audio and video to be played, the claims require the
system to include the ability to play audio and/or video.” Id. at 10 (quoting
Ex. 1001, 7:7–8) (emphasis added). Patent Owner does not explain how the
Specification’s qualified statement that video formats often are defined to
include audio streams translates into a claim limitation where formats must
always include audio. See id. (stating as support but without explanation:
“See, for example, claim 14 of the ‘558 Patent which is directed to the
technique of ‘present[ing] a first media stream via the first presentation
device utilizing the first media player,’ in the context claimed.”).
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Petitioner additionally argues that the inference of a lack of an audio
requirement in the challenged patent is further strengthened by the treatment
and explicit claiming of audio in a related patent. Pet. Reply 5. Petitioner
notes that U.S. Patent No. 8,787,731 B27, having the same named inventor
and attorney as the ’558 patent, recites “media stream[s]” in independent
claim 1 and specifies, in dependent claim 3, that the media streams include
an audio stream. Ex. 1027, 28:25, 36, 60–63 (“The computer program
product of claim 1 wherein the computer program product is operable such
that the first media stream includes a first audio stream and the second media
stream includes a second audio stream.”); compare id., codes (72), (74), with
Ex. 1001, codes (72), (74). We find Petitioner’s argument persuasive as this
again evidences that the claim drafter knew how to craft, when intended,
claims directed to a media stream having an audio stream component.
Petitioner also presents credible expert testimony that, in the pertinent
timeframe, “[a] media player would typically output a media stream, which
is a series of data pertaining to video, audio, or both.” Ex. 1002 ¶ 31; see
Pet. Reply 4 (citing the same).
Having considered all of the claim construction arguments and
evidence presented by the parties, we conclude that the claim term “media
stream” does not require audio or, as Patent Owner urges, the handling of
audio output or the displaying of multimedia streams.

7 The ’731 patent and the challenged ’558 patent each identify U.S.
Application No. 12/691,042 as a related application, via a series of
continuations, and incorporate by reference that application. Ex. 1027, 1:6–
15; Ex. 1001, 1:6–17.
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D. The Alleged Obviousness of
Claims 14–22, 24–28, and 30 over Marano and Murray
Petitioner, relying on the testimony of Dr. Bederson (Ex. 1002) for
support, alleges that all of the challenged claims—claims 14–22, 24–28, and
30 of the ’558 patent—would have been obvious over Marano and Murray.
See, e.g., Pet. 52–64 (“claim mapping” for claim 14). Petitioner contends
that “Marano allows the output of software on one computer be presented on
any of a number of possible devices,” that “Murray, in turn, teaches
coordinating among media players to avoid interference,” and that “[i]t
would have been obvious to use Murray’s idea to coordinate among media
players within Marano’s system.” Id. at 20 (citing Ex. 1002 ¶¶ 53–55).
According to Petitioner, “Murray’s priority system supplements Marano’s
system.” Id. at 34.
Patent Owner concedes that “Murray describes the use of
prioritization to avoid simultaneous media player output.” PO Resp. 21
(citing Ex. 1006 ¶ 25). However, Patent Owner argues that a person of
ordinary skill in the art would not have a reason to modify Marano and that
the proposed combination fails to “teach handling of audio output data
associated with multiple resources.” PO Resp. 28–38. Specifically, Patent
Owner argues that the “Marano excerpts relied upon by Dr. Benderson [sic]
and cited by Petitioners, [do not] disclose or enable the presentation of a
‘media stream,’ on ‘a second presentation device,’ in the context claimed.”
PO Sur-Reply 4; see id. at 14, 19 (associating the “second presentation
device” argument with independent claim 24 but not independent claim 14).
As to dependent claim 26, Patent Owner further argues that the proposed
combination lacks the “temporal limitations.” PO Resp. 38–47; see id. at 45
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(underlining the claim terms “while” and “allowing continuation of the
presentation”).
For the reasons given below, we determine Petitioner has shown by a
preponderance of the evidence that the challenged claims are unpatentable
over Marano and Murray.
1. Overview of Marano (Ex. 1003)
Marano discloses the use of external display devices with a mobile
computing device. Ex. 1003 ¶ 2. “When an external display device is
connected or attached to a mobile computing device, output data associated
with a resource executing on the mobile computing device may be displayed
on the external display device.” Id. Figure 2C of Marano is shown below.

Figure 2C depicts an “embodiment of a system for displaying a plurality of
resources in a user-configurable display layout on an external display
device.” Id. ¶ 22. A “resource” may be an application. Id. ¶ 93.
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Marano discloses the use of a window management service. As
shown in Figure 2A, reproduced below, the window management service is
located between the resources and the displays.

Figure 2A is a block diagram depicting a system for displaying a plurality of
resources in a user-configurable display layout on an external display device.
Id. ¶ 20. “The window management system 206 and virtual graphics
driver 208 manage the locations and sizes of the display of output data
associated with each of the plurality of resources in a user-configurable
display layout.” Id. ¶ 91. The window management system may transmit
the output of resources to the mobile computing device’s native display, an
external display, or a combination thereof. Id.
Marano teaches that the window management service may store
associations between resources and cells on a grid display layout. Id. ¶ 112.
“In some embodiments, the user may associate a plurality of resources with
the same cell and prioritize the resources to determine which output data will
be displayed in the cell if more than one of the associated resources are
being executed.” Id.
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2. Overview of Murray (Ex. 1006)
Murray pertains to media players that control the playback of other
media players. Ex. 1006 ¶ 2. Murray explains that it was known to have a
media player embedded in a web page or a separate application launched
upon accessing a web page that streams content. Id. ¶ 3. A user may
navigate from one website streaming content to another such that two media
players produce audio or video output simultaneously. Id. This would
require the user to locate the media player desired to be stopped and then
actively stop that media player. Id.
In addressing this, Murray describes the use of prioritization to avoid
simultaneous player output.
A user may experience a computer or other system running
several media players at the same time. In embodiments of the
present invention, these media players coordinate media
playback control with each other using bidirectional
communications, so that only one media player plays media at a
given time. The media players may establish a priority for
playback, and only the player with the highest priority may
play. When the highest priority player finishes, the system may
remove this media player from the priority list, and allow the
media player with next highest priority to play. In this way,
only one media source plays at any time. Additionally, the
media players will respond to user interactions and user
interactions will be assigned the highest priority.
Ex. 1006 ¶ 25. Murray further explains that, “[g]enerally, to provide the
best end user experience, a media player is assigned the highest priority
when the user interacts with it.” Id. ¶ 53. For user interaction, Murray
describes a media player having visible controls, such as icons or buttons for
starting and stopping media. Id. ¶ 29. Figure 1 is shown below.
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Figure 1 shows an internet browser and two media players. Id. ¶ 18.
Murray discusses the interaction between two competing media
players and the change in priority due to user interaction. Id. ¶¶ 52–57. For
example, if a user presses “play” on the second media player while the first
media player is playing, a priority allocation arises, with the second media
playing having highest priority because it is the subject of the most recent
user interaction. Id. ¶ 52. The change of active media players is explained
with reference to Figure 5:
At some later time, second media player 506 will begin
to play media. However, before the media can be played, the
first media player may be stopped. Thus, in process 525 second
media player 506 sends a “stop playing” message to first media
player 504 using a LocalConnection. The first media player
504 may then become aware that another media player with
higher priority wishes unimpeded access to the audio or video
device, and in exemplary embodiments, may pause or stop
playing in process 526. On or about the same time, second
media player begins to play its own media in process 527.
Id. ¶ 57.
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3. The Alleged Obviousness of Claim 14 in View of Marano and
Murray
As Petitioner notes, independent claim 14 pertains to a scenario where
both media players are associated with the first presentation device, as
depicted in the diagram below.

Pet. 14 (citing 1002 ¶ 41); see PO Sur-Reply 7 (same or similar); see, e.g.,
Ex. 1001, 33:35–39 (claim 14 reciting: “pausing the presentation of the first
media stream via the first presentation device utilizing the first media player,
and presenting a second media stream via the first presentation device
utilizing the second media player”). The diagram above, depicting a
scenario where both media players are associated with the first presentation
device, shows arrows from the First Media Player and the Second Media
Player both directed to the First Presentation Device.
a. 14[a]. A first presentation device
Petitioner asserts, and we agree, that Marano discloses a presentation
device in the form of Mobile Computing Device 102 having native
display 201. Pet. 52 (citing Ex. 1006 ¶¶ 91–92, Fig. 2A).
b. [14b] a non-transitory memory storing instructions
Petitioner asserts, and we agree, that Marano’s Mobile Computing
Device is an example of computing device 100, which can have a hard disk
drive, for example, storing instructions. Id. at 52–53 (citing, inter alia,
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Ex. 1003 ¶¶ 80, 85, 87). Petitioner persuasively contends that it would have
been obvious that, in the computer of the proposed modification, “all
subsequent functional claim elements are performed by the execution of
instructions.” Id. at 53 (citing Ex. 1002 ¶ 111). Patent Owner does not
address this feature. We find, based on the arguments and evidence
presented by Petitioner, summarized above, that Marano teaches or at least
suggests the recited non-transitory memory storing instructions.
c. [14c] a touchscreen
Petitioner asserts that Marano discloses that many modern mobile
devices had touch screens, and contends that it would have been obvious to
use a touchscreen with Mobile Computing Device 102 “for the known
advantages of allowing a user to interact with screen content without
carrying an attached keyboard and mouse.” Pet. 53–54 (citing Ex. 1002
¶ 112). Patent Owner does not address this feature. Petitioner persuasively
shows that Marano teaches or suggests the recited touchscreen.
d. [14d] one or more processors in communication with
the non-transitory memory and the touchscreen,
wherein the one or more processors execute the
instructions to . . .
Petitioner asserts that Marano’s computing device 100 has a processor
(CPU 121) in communication with storage device 128 to cause loading of
software instructions from the storage device to be executed by CPU 121.
Id. 54–55 (citing Ex. 1003 ¶¶ 75–78). Petitioner contends that a person of
ordinary skill in the art “would have understood that the CPU 121 must and
obviously did communicate with the touch screen to tell the touch screen
what to display, and to receive input commands from the touch screen.” Id.
at 55 (citing Ex. 1003 ¶ 77; Ex. 1002 ¶ 113). Patent Owner does not address
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this feature. Based on the arguments and evidence presented by Petitioner,
we find that Marano teaches or suggests the recited “one or more processors
in communication with the non-transitory memory and the touchscreen,
wherein the one or more processors execute the instructions to . . . .”
e. [14e) instructions to:] simultaneously present a first
media player and a second media player, [14f] where
the first media player is presented with at least one first
input control and the second media player is presented
with at least one second input control, the at least one
first input control and the at least one second input
control each including at least one of a play input
control or a pause input control
Petitioner asserts that Marano teaches providing access to a plurality
of resources that can be any application and that Murray teaches multiple
media players (applications that play a media stream) in the same computing
environment, and that it would have been obvious for Marano’s system to
present two media players. Pet. 55–56 (referring to the reasoning in
§ III.C.2 of the Petition and citing Ex. 1003 ¶¶ 91–93, 104; Ex. 1006 ¶ 3,
Fig. 1; Ex. 1002 ¶¶ 115–117, 170). Petitioner further asserts that Marano
discloses that the execution of resources—in this case, media players—could
be simultaneous, and that Murray discloses, including via Figure 1, two
media players simultaneously-presented. Id. at 55–56 (citing Ex. 1003
¶¶ 91, 116, Figs. 2A, 2C; Ex. 1006 ¶¶ 13, 27, Fig 1). Petitioner points to
Murray’s Figure 1 as showing a play input control (play button) on the two
media players. Id. at 57.
We understand Patent Owner to not dispute Petitioner’s contentions
regarding these limitations, other than the reasons to combine the references’
teachings. We address below Patent Owner’s arguments in that regard.
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Based on the arguments and evidence presented by Petitioner,
summarized above, we find that Petitioner persuasively shows that the
combination of Marano and Murray teaches or suggests the recited “[14e)
instructions to:] simultaneously present a first media player and a second
media player, [14f] where the first media player is presented with at least
one first input control and the second media player is presented with at least
one second input control, the at least one first input control and the at least
one second input control each including at least one of a play input control
or a pause input control.”
f. [14g) instructions to:] detect a selection of the at least
one first input control presented with the first media
player
Petitioner asserts that Marano offers the general teaching of standard
applications that the user may access and that may be detected in the normal
ways by the window management service. Pet. 57-58 (citing Ex. 1002 ¶¶ 72
(sic, ¶ 172), 128; Ex. 1003 ¶¶ 7, 25). Petitioner further asserts that Murray
specifically teaches selecting media players to play a media stream, with the
media players having standard controls like play and stop buttons. Id. at 58–
59 (citing Ex. 1006 ¶ 29, Fig. 1). Petitioner persuasively argues that it
would have been obvious to detect user interactions with media players
because otherwise the system could not respond when, for example, the user
presses the play button on a media player. Id. at 59 (citing Ex. 1002 ¶¶ 127–
131, 143). Patent Owner does not address this feature. We find that, based
on the arguments and evidence presented by Petitioner, summarized above,
Petitioner persuasively shows that the combination of Marano and Murray
teaches or suggests the recited “[instructions to:] detect a selection of the at
least one first input control presented with the first media player.”
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g. [14h) instructions to:] in response to the detection of
the selection of the at least one first input control
presented with the first media player, present a first
media stream via the first presentation device utilizing
the first media player
Petitioner asserts that clicking the play button would have caused the
media player to present a first media stream as that was typical for media
players in 2010, and that the media player would transmit the content to a
display. Id. at 59–60 (citing Ex. 1002 ¶¶ 134, 173, 192). Thus, argues
Petitioner, the presentation would have been in response to the detection of
the selection of the play button. Id. at 60. Further, Petitioner refers to its
earlier arguments (in Sections III.B.1 and III.C.2 of the Petition) that Marano
teaches that multiple resources can be configured to a first presentation
device, and contends that it would have been obvious for a first media player
to present a first media stream via the first presentation device if configured
by the user or the system to do so. Id. (citing Ex. 1002 ¶¶ 130, 144).
We understand Patent Owner to not dispute Petitioner’s contentions,
other than the reasons to combine the references’ teachings, regarding this
“first presentation device” limitation. See, e.g., PO Sur-Reply 14, 19
(directing arguments to the “second presentation device” limitation of
claim 24); id. at 11 (quoting “the first media stream is allowed to be
presented via the second presentation device” recitation of independent
claim 1, which is not challenged in the instant petition); PO Resp. 35–36
(quoting the “second presentation device” language of claim 24 and
referring to unspecified “this or similar [language] in independent
claim 14”). To the extent that Patent Owner argues that the proposed
combination fails to teach the subject limitation due to a lack of the ability to
play audio, we do not find that argument persuasive because, as discussed
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above in the context of claim construction (supra, Section II.C.3), the term
“media stream” does not require audio or, as Patent Owner urges, the
handling of audio output. See id. at 10 (quoting the last phrase of the subject
limitation for the proposition that “the claims require the system to include
the ability to play audio and/or video.”).
Based on the arguments and evidence presented by Petitioner,
summarized above, we find that Petitioner persuasively shows that the
combination of Marano and Murray teaches or suggests the recited
“[instructions to:] in response to the detection of the selection of the at least
one first input control presented with the first media player, present a first
media stream via the first presentation device utilizing the first media
player.”
h. [14i) instructions to:] detect, while the first media
stream is being presented via the first presentation
device utilizing the first media player, a selection of the
at least one second input control presented with the
second media player
This limitation is similar to that of 14g, discussed above, and involves
an input with the second media player, rather than the first. Petitioner
reiterates its assertion that Murray detects the selection of the play button of
any media player, including the second media player, and including when
the first media player is playing. Pet. 61 (referring to the discussions in
Sections III.B.2 and III.C.4 of the Petition, and citing Ex. 1006 ¶¶ 5–7, 27,
30–32, 37–0047; Ex. 1002 ¶ 146). Patent Owner does not address this
feature. We find that, based on the arguments and evidence presented by
Petitioner, summarized above, Petitioner persuasively shows that the
combination of Marano and Murray teaches or suggests the recited
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“[instructions to:] detect, while the first media stream is being presented via
the first presentation device utilizing the first media player, a selection of the
at least one second input control presented with the second media player.”
i. [14j) instructions to:] in response to the detection of
the selection of the at least one second input control
presented with the second media player while the first
media stream is being presented via the first
presentation device utilizing the first media player,
cause a change in presentation focus, by: [14k]
pausing the presentation of the first media stream via
the first presentation device utilizing the first media
player, and presenting a second media stream via the
first presentation device utilizing the second media
player
Petitioner asserts that Murray discloses that, when one media player is
playing and the user or the software selects an input control of a second
media player, there will be a change in priority (presentation focus) from the
first to the second media player. Id. at 61 (citing Ex. 1006 ¶¶ 49, 52, 57,
Fig. 5; Ex. 1002 ¶¶ 147, 175). Petitioner contends that it would have been
obvious to configure both media players to present on only the first
presentation device (e.g., the Mobile Computing Device having a native
display) and that it would have been obvious that the second media player (a
resource) would have played back on the device for which it was designated
(e.g., the first presentation device). Id. at 61–62 (citing Ex. 1002 ¶ 148;
Ex. 1003 ¶¶ 91, 94).
Petitioner further asserts that Murray discloses that, when the user or
the software selects “play” on the second media player, the first media
player will be paused or stopped (which, according to Petitioner, is a pausing
of the media stream) and the second media player will present (play) via the
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first media presentation device. Id. at 62 (citing Ex. 1006 ¶¶ 49, 52, 57,
Fig. 5).
Patent Owner does not address this feature. We find that, based on
the arguments and evidence presented by Petitioner, summarized above,
Petitioner persuasively shows that the combination of Marano and Murray
teaches or suggests the recited “[instructions to:] in response to the detection
of the selection of the at least one second input control presented with the
second media player while the first media stream is being presented via the
first presentation device utilizing the first media player, cause a change in
presentation focus, by: [14k] pausing the presentation of the first media
stream via the first presentation device utilizing the first media player, and
presenting a second media stream via the first presentation device utilizing
the second media player.”
j. [14l] wherein the first presentation device is
configured such that the change in presentation focus
results from at least one of: a releasing of a first
presentation focus in connection with the first media
player, a detected user input indication for giving the
second media player a second presentation focus, a
change in input focus, a change in an attribute of a
user interface element, a count of media streams being
played, a ranking of media streams being played, a
transparency level of at least one of the user interface
element, or another user interface element sharing a
region of a display of the first presentation device
Petitioner asserts that Murray teaches that user access to a media
player should change the priority. Pet. 63 (citing Ex. 1006 ¶¶ 25 (“[T]he
media players will respond to user interactions and user interactions will be
assigned the highest priority.”), 53; Ex. 1002 ¶ 137). Petitioner maps this
with the claim’s recitation of “a detected user input indication for giving the
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second media player a second presentation focus.” Id. Petitioner further
asserts that Murray teaches a change in presentation focus based on a
releasing of a first presentation focus in connection with the first media
player, based on a ranking of media streams, and a change in an attribute of
the user interface element (e.g., pressing a play or stop button). Id. at 63–64
(citing Ex. 1006 ¶ 60; Ex. 1002 ¶¶ 138–139). Patent Owner does not
address this feature. We find that, based on the arguments and evidence
presented by Petitioner, summarized above, Petitioner persuasively shows
that the combination of Marano and Murray teaches or suggests the recited
feature.
k. Reason to Combine
Petitioner, relying on the testimony of Dr. Bederson, reasons, inter
alia, that Marano’s system is running multiple resources simultaneously,
thereby creating the potential for media player conflict and, because of this,
it would have been obvious to utilize Murray’s media player prioritizing
technique in Marano’s system to avoid the possible interference. Pet. 35–38
(citing Ex. 1002 ¶¶ 75–80). Petitioner further argues:
[I]t would have been obvious to supplement information
already stored by Marano by adding an indication of priority, as
suggested by Murray. (Ex. 1002, ¶81). As discussed above in
§III.B.1, Marano obviously maintains an association between
each executing resource and its assigned presentation device(s).
Because Marano associates at least one presentation device with
each resource (which can be a media player), and Murray
associates a priority with each media player, it would have been
obvious to associate each resource with one or more
presentation devices (as Marano already teaches) and a priority
for each associated output device (as Murray renders obvious).
(Ex. 1002, ¶81).
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Pet. 38–39 (citing Ex. 1002 ¶¶ 80–84). Petitioner refers to the combination
of Marano’s information regarding resource-to-presentation-device
association with Murray’s priority for associated output as “combined
information.” Id. at 39. According to Petitioner, “[t]he combined
information would have provided the advantage expressly described in
Murray, namely avoiding interference between media players, while still
maintaining the advantage of Marano—the ability to use multiple output
devices.” Id. at 39 (citing Ex. 1002 ¶¶ 80, 84).
Petitioner, relying on the testimony of Dr. Bederson, additionally
argues that, “[b]ecause the window management service is the software
responsible for coordinating between resources and output devices in
Marano, it would have been obvious to have it perform this function in the
combined system, by storing and using the combined information.” Id.
at 39–40 (citing Ex. 1002 ¶¶ 85–86).
Petitioner also argues that “it would have been obvious to use
Murray’s detect-and-pause functionality to avoid conflicts.” Id. at 48 (citing
Ex. 1002 ¶ 101). Petitioner reasons, based in part on Murray’s teaching of
setting recent user interaction as the highest priority, that a user expects a
media player to play upon pressing the “play” button, and, therefore, it
would have been obvious to have the system monitor that button and to play
the media without interference from other media players. Id. at 48–50
(citing Ex. 1002 ¶¶ 77, 101–104, 123).
Petitioner also persuasively argues that there would have been a
reasonable expectation of success in combining the references’ teachings as
proposed. Id. at 50–51; contra PO Resp. 4 (Patent Owner arguing, without
elaboration or any persuasive explanation, that Petitioner failed to show a
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reasonable expectation of success). Petitioner relies on Dr. Bederson’s
testimony and other evidence for the propositions that the art was relatively
predicable and that the pertinent systems were well-known at the relevant
timeframe. Id. (citing Ex. 1002 ¶ 105; Ex. 1017 ¶¶ 595–596; Ex. 1020, 3–7,
17).
Patent Owner, in its Response, argued that a person of ordinary skill
in the art “would not have been motivated to modify the system of Marano
with Murray.” PO Resp. 28. In support for that proposition, Patent Owner
cited to expert testimony that has since been withdrawn by Patent Owner.
See id. (citing Ex. 2002); id. at 3 (identifying Ex. 2002 as a rebuttal expert
report filed in a district court case); Paper 11 at 2 (Joint Stipulation To
Expunge Testimony of Dr. Aviel Rubin). Patent Owner, in its Sur-Reply,
does not appear to continue to dispute Petitioner’s reasoning to combine the
references’ teachings (see, e.g., PO Sur-Reply 2 (Table of Contents)), but we
nonetheless address the arguments in Patent Owner’s Response in the
interest of completeness.
Patent Owner argued that Petitioner’s reasoning to combine is based
on “[Dr. Bederson’s] unsupported statement that ‘Marano allows any
resource to be associated with, and therefore output to or present on, any
available output device.’” PO Resp. 33 (quoting Ex. 1002 ¶ 59). Patent
Owner alleged that “[t]his is false and is a mischaracterization of Marano.”
Id. Patent Owner’s arguments appear to be premised on the assertion that
the claimed “media stream” requires an audio component and that Marano
does not disclose the handling of audio data output. See, e.g., id. at 35
(“[N]o support is provided by Petitioner to show with specificity how, for
example, audio data output from a media player (Resource 204a-n of
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Mobile Computing Device 102) would be handled by the Window
Management Service 206 and presented either by the External Display
Device 202a-n or Mobile Computing Device 102.” (emphasis added)); cf.
Pet. Reply 6 (“[Patent Owner] Cypress Lake may also be arguing that
Marano’s teachings regarding audio would discourage the combination with
Murray. Such an argument would fail at the outset, because neither
Murray’s system, nor the motivation behind the combination, requires
audio.”).
To the extent that our understanding is correct and Patent Owner’s
argument is premised on a requirement of audio handling, the argument is
not persuasive because, for the reasons given above in the claim construction
discussion, the term “media stream” does not require an audio component or
the handling thereof. Additionally, Patent Owner, in the Sur-Reply, backs
away from its earlier position and states that “Patent Owner does not dispute
that Marano discloses handling of audio output.” PO Sur-Reply 11.
Patent Owner also argues, “Dr. Bederson bases his opinions on
personal beliefs and mischaracterizations of the prior art . . . [and t]hus, his
declaration cannot establish a reason to modify Marano in the manner
Petitioner proposes.” PO Resp. 29 (citing Ex. 1002 ¶¶ 54–104; In re Am.
Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (concerning
the lack of factual corroboration for opinions)). To the extent that Patent
Owner argues that the testimony of Dr. Bederson regarding a reason to
modify Marano is conclusory, we do not find this to be persuasive. Patent
Owner merely cites fifty-one paragraphs in Dr. Bederson’s declaration as
support for the proposition of conclusory testimony and does not elaborate
on the assertion that Dr. Bederson’s expert opinion is based on “personal
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beliefs.” Id. at 27 (citing Ex. 1002 ¶¶ 54–104). Those cited fifty-one
paragraphs contain citations to other evidence in the record and include
developed analysis, and are not merely conclusory opinion as Patent Owner
may be implying. See, e.g., Ex. 1002 ¶ 55–67 (describing the teachings of
Marano that underlie the opinions concerning the obviousness of the claimed
subject matter).
As to the “mischaracterizations” argument, Patent Owner implicitly
asks us to accept Patent Owner’s characterization of the references over that
of Petitioner’s expert. PO Resp. 29–38. Patent Owner argues that Marano
should be considered to describe five different inventions and then focuses
on certain embodiments that purportedly fail to support Dr. Bederson’s
opinion. See id. at 12–21, 29–38. For example, Patent Owner admits that
“Marano discloses that a ‘resource’ may be an application,” but appears to
argue that an ordinary artisan would have read Marano’s disclosure very
narrowly, arguing that “the specification and Figures of Marano make clear
that the Invention A is directed to, for example, a calendar 420, file
explorer 422, and e-mail 424.” Id. at 16–17 (citing Ex. 1003 ¶¶ 93, 113,
Fig. 4C). Patent Owner also supports its arguments with an unpersuasive
hypothetical situation that Patent Owner admits is “illogical but also a
technological impossibility” and one that “[o]bviously, no [person of
ordinary skill in the art] would assume . . . that Marano disclosed and
enabled.” Id. at 32–33 (arguing that “running Oracle’s most advanced
database on the cellular phone client 102n” is not enabled).
Dr. Bederson’s purportedly unsupported opinion—that “Marano
allows any resource to be associated with, and therefore output to or present
on, any available output device”—is preceded by support. See Ex. 1002
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¶ 59. Dr. Bederson discusses Marano’s disclosure and includes the
quotation therefrom that states:
In many embodiments, the mobile computing device 102
transmits the output data associated with certain of the plurality
of resources 204 to the native display 201 [of mobile computing
device 102] and transmits the output data associated with other
of the plurality of resources 204 to the external display devices
202a-n.”
Id. (quoting Ex. 1003 ¶ 91) (bolding omitted). We find Dr. Bederson’s
opinion to be sufficiently supported and that Marano teaches one of ordinary
skill in the art that the several resources may be output to any available
output device. We find Dr. Bederson’s testimony to be credible and not
outweighed by Patent Owner’s unpersuasive attorney argument, which, in
any event, is not evidence.
Petitioner has provided adequate reasoning as to why one of ordinary
skill in the art would have modified Marano’s windows management system
by incorporating Murray’s prioritization technique and that this combination
yields the claimed subject matter of claim 14, and Petitioner has provided
adequate evidence to show that a person of ordinary skill in the art would
have had a reasonable expectation of success in doing so.
l. Conclusion as to Independent Claim 14
Based on the foregoing, Petitioner has established that independent
claim 14 is unpatentable over the combination of Marano and Murray.

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4. The Alleged Obviousness of Claim 24 in View of Marano and
Murray
As Petitioner notes, independent claim 24 pertains to a scenario where
there is access to two media players and where the first media player is
associated with both presentation devices, as depicted in the diagram below.

Pet. 13–14 (citing 1002 ¶ 40); see PO Sur-Reply 8 (same or similar); see,
e.g., Ex. 1001, 35:40–51 (claim 24 reciting: “in response to the detection of
the selection of the at least one first input control presented with the first
media player and if the first presentation device is to be utilized for
presentation, allow the first media stream to be presented via the first
presentation device . . . and if the second presentation device is to be utilized
for presentation, allow the first media stream to be presented via the second
presentation device”). The diagram above, depicting a scenario where there
is access to two media players and where the first media player is associated
with both presentation devices, shows arrows from the First Media Player
and directed to both Presentation Devices.
Petitioner asserts, and we agree, that independent claim 24 contains
many recitations the same as or similar to those of independent claim 14.
See Pet. 64–68. Petitioner argues that those limitations are taught or
suggested for reasons provided earlier in the context of the analysis of
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claim 14. Id. Petitioner elaborates where it identifies differences. Petitioner
identifies teachings in the prior art references that teach or suggest all the
limitations of independent claim 24, and provides persuasive reasoning as to
why the claimed subject matter would have been obvious to one of ordinary
skill in the art. Pet. 35–50, 64–68. Petitioner also supports its contentions
for these claims with the testimony of Dr. Bederson. Ex. 1002 ¶¶ 103, 115–
119, 189–198.
The parties’ dispute regarding claim 24 pertains to the following
limitations:
[24i] in response to the detection of the selection of the at
least one first input control presented with the first media player
and if the first presentation device is to be utilized for
presentation, allow the first media stream to be presented via
the first presentation device;
[24j] in response to the detection of the selection of the at
least one first input control presented with the first media player
and if the second presentation device is to be utilized for
presentation, allow the first media stream to be presented via
the second presentation device.
Ex. 1001, 35:40–51 (identified by Petitioner (Pet. 66–67) as elements [24i]
and [24j]; see PO Resp. 35–36 (quoting this claim language in arguing that
Marano teaches something different). In other words, when, for example,
the play button (an input control) on the first media player is pressed, the
system allows the first media stream to be presented by the first presentation
device if that first presentation device is to be utilized, and allows that same
first media stream to be presented by the second presentation device if that
second presentation device is to be utilized.
In its Sur-Reply, Patent Owner clarifies that its contentions pertain to
the second part of the quoted matter above, limitation [24j], arguing that,
“Marano fails to disclose Patent Owner’s claimed technique wherein [sic]
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‘allow the first media stream to be presented via the second presentation
device,’ in the context claimed in claim 24.” PO Sur-Reply 19.
For the first part, limitation [24i], Petitioner refers to its earlier
contentions regarding limitation [14h], which similarly calls for presenting a
first media stream via the first presentation device in response to the
detection of an input control presented with the first media player. We again
find Petitioner’s contentions persuasive for the reasons discussed above in
the context of limitation [14h]. Petitioner notes that limitation [24i], unlike
limitation [14h], contains the conditional recitation “if the first presentation
device is to be utilized for presentation,” and “allow[ing]” a media stream to
be presented. Pet. 66–67. Petitioner persuasively argues that these features
would have been obvious. Id. (citing Ex. 1002 ¶ 194).
For the second part, limitation [24j], Petitioner notes that this
limitation is similar to the immediately-preceding one except that this is
directed to presenting on the second presentation device, rather than the first,
if the second presentation device is to be utilized. Id. at 67. Petitioner
persuasively argues that this would have been obvious to a person of
ordinary skill in the art because, in the proposed combination, “the user can
configure any resource to output to any presentation device, and outputting
to the second presentation device specifically was obvious. Id. (referring to
arguments in section III.C.3 of the Petition; citing Ex. 1002 ¶¶ 195–196).
Patent Owner’s arguments pertain to the audio capability of the
recited second presentation device. Patent Owner affirmatively states that it
“does not dispute that Marano discloses handling of audio output,” but
argues that Marano does not disclose or enable the first media stream being
allowed to be presented via the second presentation device. PO
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Sur-Reply 11, 14, 19; see also PO Resp. 5–6, 35–38. We understand
Patent Owner to argue that Marano discloses only the recitation of
limitation [24i]—involving the first media stream presented via the first
presentation device—but not the capability of presenting audio via the
second presentation device. See PO Sur-Reply 11, 14, 17–19. According to
Patent Owner, Marano only discloses speakers or a headphone jack, i.e.
audio presentation capability, on Mobile Computing Device 102 (mapped to
the claimed first presentation device), but that External Display Device 202
(a second presentation device) merely has a monitor with no speaker. Id. at
18–19 (quoting Ex. 1003 ¶ 263); see also PO Resp. 5–6, 35–36. Thus,
argues Patent Owner, that second presentation device of Marano “cannot
play or present a media stream, in the context claimed.” PO Sur-Reply 19.
Based on this argument, Patent Owner further argues that Petitioner has
failed to “show[] how either Marano or Murray, individually or in
combination, would teach handling of audio output data associated with
multiple resources.” PO Resp. 38 (emphasis added).
Patent Owner’s arguments are not persuasive as they are premised on
the contention that the recited “media stream” requires an audio component.
As discussed above in the context of claim construction, the term “media
stream” does not require audio or, as Patent Owner urges, the handling of
audio output or the displaying of multimedia streams.
Based on the arguments and evidence presented by Petitioner,
summarized above, and after consideration of Patent Owner’s arguments in
opposition, we determine that Petitioner has provided adequate reasoning as
to why one of ordinary skill in the art would have modified Marano’s
windows management system by incorporating Murray’s prioritization
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technique and that this combination yields the claimed subject matter of
claim 24—including the recited associated relationships of the first media
stream being allowed to be presented via the first and second presentation
devices, respectively, when so indicated and in response to the detection of
the selection of an input control presented with the first media player. We
also determine that Petitioner has provided adequate evidence to show that a
person of ordinary skill in the art would have had a reasonable expectation
of success in doing so. See Pet. 50–51 (citing Ex. 1002 ¶ 105).
Petitioner has established that independent claim 24 is unpatentable
over the combination of Marano and Murray.

5. The Alleged Obviousness of Claims 15–22, 25, 27, 28, and 30
Over Marano and Murray
Petitioner also contends that claims 15–22, 25, 27, 28, and 30 would
have been obvious based on the same combination of prior art. These
challenged claims all depend directly or indirectly from independent
claim 14 or independent claim 24. Petitioner identifies teachings in the prior
art references that teach or suggest the limitations of these dependent claims,
and provides persuasive reasoning as to why the claimed subject matter
would have been obvious to one of ordinary skill in the art. Pet. 69–80.
Petitioner also supports its contentions for these claims with the testimony of
Dr. Bederson. Ex. 1002 ¶¶ 178–208. Patent Owner does not present any
arguments for these dependent claims other than what we have already
considered with respect to independent claims 14 and 24.
We have considered the evidence and arguments of record and
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 15–22, 25, 27, 28, and 30 would have been obvious
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based on Marano and Murray for the reasons discussed in the Petition as
supported by the testimony of Dr. Bederson.

6. The Alleged Obviousness of Claim 26 Over Marano and
Murray
Claim 26 depends from claim 25, which depends from independent
claim 24. Petitioner contends that claim 26 would have been obvious based
on the same combination of prior art discussed above. Pet. 70–72. Patent
Owner asserts that claim 26 contains “temporal” limitations (PO Resp. 44–
45) and argues that Marano and Murray fail to disclose those limitations (id.
at 42–47).
Claim 26 describes the media player/presentation device relationship
as “a second scenario” where there is “presentation of the first media stream
via only the second presentation device utilizing the first media player while
presenting the second media stream via only the first presentation device
utilizing the second media player.” Ex. 1001, 36:22–23, 36:40–44. The
parties visually describe this relationship with the diagram shown below.

Pet. 72; see also PO Resp. 42 (same or similar). The diagram above depicts
the First Media Player presenting on the Second Presentation Device and the
Second Media Player presenting on the First Presentation Device.
Like independent claims 14 and 24, dependent claim 26 calls for a
device having processor(s) that execute certain instructions. See Ex. 1001,
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33:5–10 (independent claim 14), 35:18–23 (independent claim 24), 36:1–3
(preamble of dependent claim 25), 36:22–24 (preamble of dependent claim
26). Claim 26 recites, in pertinent part, the following such instructions.
detect, while the first media stream is being presented via
the second presentation device utilizing the first media player, a
selection of the at least one second input control presented with
the second media player; and
in response to the detection of the selection of the at least
one second input control presented with the second media
player while the first media stream is being presented via the
second presentation device utilizing the first media player,
perform the change in the presentation focus, by: allowing
continuation of the presentation of the first media stream via
only the second presentation device utilizing the first media
player while presenting the second media stream via only the
first presentation device utilizing the second media player.
Ex. 1001, 36:30–44 (emphasis added). In other words, claim 26 calls
for: 1) detecting an input control (e.g., pressing “play”8) on the second media
player while the first media player is presenting the first media stream on the
second presentation device, and 2) in response to that input detection,
allowing the first media stream presentation to continue during presentation
of the second media stream from the second media player to the first
presentation device—i.e. the crossed-arrow scenario depicted above.
Petitioner, relying on the testimony of Dr. Bederson, persuasively
argues that the crossed-arrow scenario (two player/presenter pairs) would
have been obvious in the proposed combination, which involves managing

8 Figure 7 of the ’558 patent depicts “[a]pplication windows 704 [that]
include respective command bars 706 with input controls for receiving user
input to change the operational state of the respective media players
represented,” with those command bars including “Play,” “Stop,” “Reverse,”
and “FForward.” Ex. 1001, 17:48–63, Fig. 7.
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multiple players and presenters. Pet. 70–72 (addressing claims 16 and 26
together). In support, Petitioner points to Murray’s prioritization method for
controlling multiple media players so as to avoid interference from each
other and points to Murray’s teaching that, “in some embodiments other
media players may play other media at the same time.” Id. (quoting
Ex. 1006 ¶ 51; citing Ex. 1006 ¶¶ 30, 49, 62; Ex. 1002 ¶ 180). Petitioner
maintains that, “[w]here a different presentation device is used for each
media player, it would have been obvious to allow both media players to
play, for example where the presentation devices are in separate rooms,
connected to headphones, or where the audio would not interfere.” Id. at 71
(citing Ex. 1002 ¶ 180).
Patent Owner argues that Petitioner’s two-room, two-player
hypothetical situation is not suggested by Murray because “Murray merely
discloses simultaneous playback in the context of a problem being solved by
pausing one of the players (to avoid such undesired simultaneous
playback).” PO Resp. 44. Patent Owner further argues that “[t]here is not
even a suggestion [in Murray] of tackling the problem with simultaneous
playback via different presentation devices.” Id. Patent Owner’s argument,
as we understand it, is that Murray does not suggest the crossed-arrow
relationship between player/presenter pairs. This argument is not persuasive
as it fails to address Petitioner’s proposed combination of two references’
teachings, appears to require an explicit disclosure of the particularly
claimed relationship, fails to address (while characterizing Murray’s
teaching as limited to pausing a player to avoid simultaneous playback)
Murray’s explicit statement that “other media players may play other media
at the same time,” and ignores the ordinary creativity that the ordinary
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artisan would bring to bear. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”); see also Pet. Reply 25–27 (Petitioner reiterating that
the ground is based on the combination, not one reference in isolation).
Patent Owner then attacks Marano, arguing “while Petitioner’s cites to
Marano [to] address simultaneous playback via different presentation
devices, they simply do NOT rise to the level of specificity of the ‘temporal’
limitations.” PO Resp. 44. Patent Owner presents two diagrams,
reproduced below, as demonstrative of its argument regarding the
purportedly limited disclose of Marano.

Id. at 46. The demonstrative diagrams above depict Patent Owner’s
interpretation of timelines showing the relative times when two players are
playing in Marano. Patent Owner then argues that “disclosing, as in
Marano, that a first player plays and a second player plays, as displayed
pictorially, fails to teach the specific limitations of Claim 26, consistent with
[the crossed-arrow player/presenter relationship].” Id. at 46–47. Patent
Owner does not elaborate on this argument in the Response or in its Sur-
Reply after Petitioner replied to this argument, Pet. Reply 22–27. We fail to
understand the basis for Patent Owner’s argument that the “temporal”
limitations are missing, particularly where Patent Owner’s own
demonstratives above depict two players playing simultaneously. To the
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extent that Patent Owner is arguing that Marano alone fails to explicitly
disclose simultaneously streaming two streams to two presentation devices,
this argument is unpersuasive for the same reasons given in the context of
Patent Owner’s attack on Murray alone.
Petitioner has demonstrated via persuasive argument and evidence,
including credible expert opinion, that all of the limitations of claim 26 are
disclosed and suggested by the combination of Marano and Murray, and that
the claimed subject matter would have been obvious to a person of ordinary
skill in the art at the time of the invention. Pet. 41–50, 70–72; see also Pet.
Reply 22–27.
E. Patent Owner’s Appointments Clause Argument
In its Sur-Reply Brief, Patent Owner “asserts that this proceeding
violates the appointments clause of the U.S. Constitution.” PO
Sur-Reply 19. Specifically, Patent Owner argues that the Administrative
Patent Judges (APJs) are improperly appointed principal officers and that the
decision of the United States Court of Appeals for the Federal Circuit in
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) was
an erroneous and “ineffective attempt to cure the identified constitutional
violation.” Id. at 19–20. Patent Owner further argues that “the Arthrex
panel did not go far enough in resolving the constitutional infirmity of the
APJs,” that “the only remedy is to declare the entire system constitutionally
flawed and let Congress fix it,” and, “[t]hus, the only proper remedy at this
point is that every ruling from institution forward be addressed de novo by
APJs appointed in a Constitutional manner, which at present is not possible,
making the only real proper remedy the vacating of this entire proceeding
including the institution decision.” Id. at 20–21.
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We decline to consider Patent Owner’s constitutional challenge as the
issue has been addressed by the Federal Circuit in Arthrex, Inc. v. Smith &
Nephew, Inc., 941 F.3d 1320, 1328 (Fed. Cir. 2019).
III. CONCLUSION9
Petitioner has shown by a preponderance of the evidence that
claims 14–22, 24–28, and 30 of the ’558 patent would have been obvious
over Marano and Murray.
In summary:
IV. ORDER
For the foregoing reasons, it is
ORDERED that claims 14–22, 24–28, and 30 of the ’558 patent have
been proven to be unpatentable;

9 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims
35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
14–22,
24–28, 30
103(a) Marano, Murray 14–22, 24–28, 30
Overall
Outcome
14–22, 24–28, 30
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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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PETITIONER:
Matthew Smith
smith@smithbaluch.com

Andrew Baluch
baluch@smithbaluch.com

PATENT OWNER:
Gregory Gonsalves
gonsalves@gonsalveslawfirm.com

George Gordon
andrew@agordonlawfirm.com