Virentem Ventures, LLC d/b/a Enounce

Patent Trials and Appeals Board

Mar 5, 2021

IPR2019-01247 (P.T.A.B. Mar. 5, 2021)

Trials@uspto.gov Paper 34
Entered: March 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,
v.
VIRENTEM VENTURES, LLC,
Patent Owner.

IPR2019-01247
Patent 7,043,433 B2

Before MEREDITH C. PETRAVICK, BRYAN F. MOORE, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
MOORE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

I. INTRODUCTION
A. Background and Summary
Google LLC (“Petitioner”) filed a Petition (“Pet.,” Paper 1) pursuant
to 35 U.S.C. § 311 to institute an inter partes review of claims 1–4 and 7–9
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of U.S. Patent No. 7,043,433 B2 (“the ’433 patent,” Ex. 1001) pursuant to
35 U.S.C. § 311 et seq. The Petition is supported by the Declaration of Dan
Schonfeld, Ph.D. (Ex. 1002). Virentem Ventures, LLC (“Patent Owner”)
filed a Preliminary Response (“Prelim. Resp.,” Paper 12). On March 9,
2020, we instituted trial. Paper 14 (“Inst. Dec.”). Patent Owner filed a
Response. Paper 24 (“PO Resp.”). Petitioner filed a Reply. Paper 27
(“Reply”). Patent Owner filed a Sur-Reply. Paper 29 (“Sur-Reply”). An
oral argument was held on December 4, 2020, and a transcript was entered
into the record. Paper 33 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1–4 and 7–9 of the ’433 patent are unpatentable.
B. Real Parties in Interest
Petitioner names Google LLC and YouTube LLC as the real parties-
in-interest. Pet. 1.
C. Related Matters
The parties advise us that the ’433 patent is asserted against a real
party in interest in Virentem Ventures, LLC v. YouTube, LLC, 1:18-cv-917
(D. Del.) (“the related litigation”). Pet. 1; Paper 4, 1.
D. The ’433 Patent
The ’433 patent relates to the “creation and presentation of media
works to audiences.” Ex. 1001, 1:11–14. Specifically, to “creation and
presentation of media works in accordance with audience affinity and/or
aptitude and to determinations of audience affinity and/or aptitude.” Id. at
1:14–18.
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E. Illustrative Claims
Challenged claims 1, 3, 7, 8, and 9 are independent claims.
Challenged claim 2 depends directly from claim 1 and claim 4 depends
directly from claim 3. Claim 1, reproduced below, is illustrative.
1. A method for inferring audience affinity or aptitude with
regard to content or properties of portions of a media work which
comprises:
presenting the media work to an audience;
obtaining user input regarding presentation rates for
the portions of the media work;
correlating the content or properties of the portions
with the presentation rates; and
associating audience affinity or aptitude with the
presentation rates for the correlated content or properties.
Ex. 1001, 70:44–54.
F. Evidence
Petitioner relies on the following references. Pet. 8–75.
Name Reference Exhibit
Rochkind US 5,848,130, filed Dec. 31, 1996, issued Dec.
8, 1998
1005
Walker US 5,802,533, filed Aug. 7, 1996, issued Sept.
1, 1998
1006
Bhadkamkar US 5,893,062, filed Dec. 5, 1996, issued Apr. 6,
1999
1007
Ottesen US 5,778,135, filed Dec. 30, 1994, issued July
7, 1998
1008
Mauldin US 5,664,227, filed Oct. 14, 1994 issued Sept.
2, 1997
1009
Iggulden US 5,696,866, filed Sept. 12, 1994, issued Dec.
9, 1997
1013

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G. Prior Art and Asserted Grounds
Petitioner contends that claims 1–4 and 7–9 would have been
unpatentable on the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
3, 4, 9 102(a) Rochkind
9 103(a) Mauldin, Bhadkamkar
1, 7 103(a) Walker, Bhadkamkar
2 103(a) Walker, Bhadkamkar, Iggulden
8 102(a) Ottesen

II. ANALYSIS
A. Legal Standards
A claim is anticipated if a single prior art reference either expressly or
inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
be arranged or combined in the same way as in the claim, “the reference
need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)) (emphasis omitted).
A patent claim is unpatentable under 35 U.S.C. § 103 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
(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)
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the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
B. Level of Ordinary Skill in the Art
Petitioner contends a person of ordinary skill in the art at the time of
invention would have had
either (a) a Master’s or doctoral degree in computer science,
electrical engineering, or a similar discipline; or (b) a Bachelor’s
degree in computer science, electrical engineering, or a similar
discipline and at least two years of work experience in content
presentation systems, or a related area.
Pet. 4–5 (citing Ex. 1002 ¶¶ 19–20.). Patent Owner does not dispute this
contention. See generally PO Resp. We adopt Petitioner’s articulation of
the level of skill and determine that the level of ordinary skill in the art is
also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
C. Claim Construction
Because the Petition was filed after November 13, 2018, we construe
the challenged claims by applying “the standard used in federal courts, in
other words, the claim construction standard that would be used to construe
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the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].”1
Further, “[a]ny prior claim construction determination concerning a term of
the claim in a civil action, or a proceeding before the International Trade
Commission . . . that is timely made of record in [the inter partes review]
proceeding will be considered.”2 Id. at 51,340.
Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303,
1312–19 (Fed. Cir. 2005) (en banc), claim terms 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, in light of the language of the
claims, the specification, and the prosecution history of record. See Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
There is a “heavy presumption,” however, that a claim term carries its
ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding.
See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

1 See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,343 (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
2 The District Court presiding over the litigation between the parties
involving the ’433 patent issued an order construing certain claim terms
(Ex. 2011), which we have considered.
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1. “aptitude”
Petitioner offers a construction for the term “aptitude,” which appears
in the phrase “associating audience affinity or aptitude with the presentation
rates for the correlated content or properties” in claim 1, “associating the
audience affinity or aptitude associated with the detected content or
properties with a presentation rate for the portion” in claim 3, and
“correlating the presentation rates with the aptitude for the content or
properties of the portions” in claim 7 of the ’433 patent. Pet. 6–7; Ex. 1001,
70:53–54, 70:62–64, 71:30–31. Petitioner proposes the term means
“comprehension.” Pet. 7. Petitioner contends
[t]his construction is consistent with the specification of the ’433
patent, which states that “[t]he Audience (listener) input serves
as a proxy for the Audience’s . . . aptitude for (this may also be
referred to herein as ability to comprehend) the [media work] . . .
and will be referred to herein as . . . Audience Aptitude” and that
“an Audience member . . . might want to slow down some portion
of the [media work] . . . if the Audience member . . . was having
difficulty comprehending the portion . . . .” (Id., 16:15-28
(emphasis added); see also id., 5:29-32, 6:20-24, 7:23-27, 22:41-
45, 23:65-67, 61:28-29, 67:58-60, 67:66 (“aptitude
(comprehension rates)”), 68:31-32 (“aptitude (comprehension
rate)”), 69:26-27 (“aptitude (comprehension rate)”); Ex. 1002, ¶
47.).

Pet. 7 (emphasis omitted).
Patent Owner argues that “aptitude” means “level of comprehension,
familiarity, or proficiency.” PO Resp. 15. Patent Owner cites to portions of
the Specification that associate aptitude with familiarity and proficiency. Id.
(citing Ex. 1001, 6:20–24, 7:23–27, 61:17–39, Fig. 21; Ex. 2016 ¶¶ 31–33).
Patent Owner does not argue that its broader construction
distinguishes a claim limitation from the asserted prior art. See PO Resp.
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15–16. Given the parties agreement at least to the term “comprehension,”
we determine that “aptitude” means at least “comprehension.”
2. “presentation rate” and “time-scale modification”
We analyze the terms “presentation rate” and “time-scale
modification” (also referred to as “TSM”) together. The term “presentation
rate” is recited in challenged claims 1 and 7. Ex. 1001, 70:44–67, 71:25–
72:15. “Time-scale modification” is not recited in any claim of the ’433
patent. Id. at 70:44–72:30. However, Patent Owner argues that the term
“time-scale modification” is incorporated in all the claims by virtue of the
definition of “presentation rate.” PO Resp. 17; Dec. to Inst., 7–8; Ex. 2011,
2; Ex. 2016 ¶¶ 28, 44. Patent Owner contends that “presentation rate”
means “the speed at which media is played back in a time[-]scale
modification system” and that “time-scale modification” means “speeding
up and slowing down the perceived rate of speech while substantially
preserving both intelligibility and the perceived pitch for audio and audio-
visual media.” Id. 17–26. Petitioner argues that neither of Patent Owner’s
proposed constructions should be adopted. Reply 4–7. Petitioner also
contends, without explanation, that if “time-scale modification” is construed
it should mean “playback rate modification.” Reply 4.
Patent Owner cites the Specification for support of this construction.
PO Resp. 17. Specifically, Patent Owner argues:
The agreed-upon construction aligns with the ’433
specification, which recognizes that the ’433 Patent is directed to
the field of Time-Scale Modification (“TSM”) and consistently
uses the term “presentation rate” to describe the rate of media
playback when TSM is employed, or in other words, the TSM
rate (which is synonymous with presentation rate). See, e.g.,
EX1001, 17:3-5, 18:35, 19:26-27, 19:37-38, 21:14, 22:23, 68:30-
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31, FIG. 1-4, 6, 8-12, 22-30; EX2011, 11, 16; see also EX2016,
¶¶45, 59.
Id. As shown above, Patent Owner cites several places in the Specification
for this proposition. In fact, the Specification recites “PR (TSM rate)” 70
times and “PR (TSM rate and playback rate)” 56 times. See generally, Ex.
1001.
Equating the terms using a parenthetical can be done only when it is
consistent with the use of these terms throughout the Specification. See
Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1364–
65 (Fed. Cir. 2001) (determining that a parenthetical is not definitional
because of other evidence in the specification and the record).
Although the Specification associates presentation rate with TSM rate,
the Specification also explicitly defines “presentation rate” broadly as
“information that can be used to obtain a rate at which a Media Work
(‘MW’) is presented to an Audience. The information may be an identifier
of a source of the rate which can be obtained using Media Work
Communication Technology (‘MWCT’).” Ex. 1001, 11:26–31.
Additionally, Patent Owner’s expert admits that there is an “important”
difference between TSM rate and presentation rate. Ex. 2016 ¶ 59. He
testifies “A presentation rate or playback rate can include playing at rate 1 or
normal, while a TSM rate involves speeding up or slowing down the audio
or audio-visual work using Time-Scale Modification.” Id. This cuts against
Patent Owner’s argument and is consistent with the broad definition of
presentation rate in the Specification.
Thus, as confirmed by Patent Owner’s declarant, the Specification has
a broader definition of presentation rate than TSM rate. Ex. 1001, 11:26–31;
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Ex. 2016 ¶ 59. For this reason, we do not equate the term “presentation
rate” with the term “TSM rate.”
As stated above, Patent Owner requests that we explicitly construe the
term “time-scale modification.” PO Resp. 17–26. This term does not appear
in any of the challenged claims. In fact Patent Owner’s declarant testifies
“the ’433 Patent is not about any specific techniques used to do Time-Scale
Modification of media itself.” Ex. 2016 ¶ 16.
As an initial matter, that “we do not ordinarily construe words that are
not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334
(Fed. Cir. 2009); see also Aro Mfg. Co. v. Convertible Top Replacement
Co., 365 U.S. 336, 339 (1961) (“[T]he claims made in the patent are the sole
measure of the grant.”). Nevertheless, we can consider Patent Owner’s
contentions and construe “time-scale modification” if necessary. Advanced
Fiber Techs. Trust v. J & L Fiber Servs., Inc., 674 F.3d 1365, 1373 (Fed.Cir.
2012) (finding that a court may construe a term found only in the
construction, and not in the claims, if the correct construction of a claim
term necessitates it). In performing this so-called “derivative construction,”
the Court must apply “established claim construction principles,” just as if it
was interpreting claim language in the first instance with the ultimate goal of
elucidating the proper meaning of the actual claim terms. See Advanced
Fiber Techs., 674 F.3d at 1374.
With regard to “time-scale modification,” Patent Owner proposes a
construction that it proposed in the District Court and that was rejected by
the District Court. PO Resp. 17; Ex. 2011, 8.3 The District Court construed

3 Patent Owner notes that the District Court granted it leave to renew a
motion for reconsideration of the court’s construction of “time-scale
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“time-scale modification/time-scale modified” as meaning “speeding up or
slowing down the playback rate.” Ex. 2011, 8. Patent Owner argues TSM
should be construed to mean “speeding up or slowing down the playback
rate of audio or audio-visual media, while maintaining pitch and
intelligibility.” PO Resp. 17. Patent Owner argues the District Court’s
construction “is an incomplete definition.” Id. at 18. Patent Owner does not
explain sufficiently why we should adopt the District Court’s construction of
“presentation rate” and at the same time incorporate into the challenged
claims a definition of “time-scale modification” that the District Court
rejected. By incorporating a definition of “time-scale modification” that was
rejected by the District Court into the challenged claims by adopting the
District Court’s construction of “presentation rate,” we would be construing
the claims in a manner inconsistent with the District Court.4
Petitioner’s position on construction of “presentation rate” is
inconsistent with the “agreed-upon”5 position it took before the District
Court. In this proceeding, Petitioner argues, “[Patent Owner’s] construction
improperly incorporates limitations by requiring playback to occur ‘in a
timescale modification system.’ Nothing in the record supports reading
‘timescale modification system’ into the claims.” Reply 2. Despite the

modification” such that the construction is not yet final. PO Resp. 18 n.2
(citing Ex. 2033).
4 Patent Owner suggests that the District Court’s claim construction is not
controlling. PO Sur-Reply 13 (“The Delaware district court has already
agreed that its claim construction may need to be revisited to arrive at the
correct construction following the IPR proceedings, recognizing that the
Board may reach a different conclusion.”) (citing Ex. 2033, 1–2).
5 Petitioner assert there was a lack of dispute rather than an agreement on the
meaning of “presentation rate” and “time-scale modification.” Reply 1.
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inconsistencies in Petitioner’s position, we agree with Petitioner that “time-
scale modification” should not be read into the challenged claims through
construction of “presentation rate.”
We determine that “presentation rate” should be interpreted consistent
with its definition in the Specification and according to its ordinary and
customary meaning of “the speed of presentation.” We believe this meaning
is consistent with the portion of the District Court’s construction of
“presentation rate” as “the speed at which media is played back” and the
Specification’s definition of “presentation rate” as “information that can be
used to obtain a rate at which a Media Work (‘MW’) is presented to an
Audience.” As cited previously, there is a “heavy presumption” that a claim
term has its ordinary and customary meaning. CCS Fitness, 288 F.3d at
1366. We have not been presented with sufficient evidence to overcome that
heavy presumption. Patent Owner relies only on the association of TSM rate
and presentation rate in the Specification and on the agreement of the parties
in District Court. PO Resp. 17. Based on our independent analysis of the
’433 patent and its file history, we do not discern sufficient support for
incorporating “in a time-scale modification system” into the meaning of
“presentation rate” as recited in the claims of the ’433 patent or otherwise
limiting the construction of “presentation rate” from its ordinary and
customary meaning.
Thus, we construe the term “presentation rate” differently than the
District Court, because the records in the District Court case and in this
proceeding relating to construction of “presentation rate” are different.6 In

6 In related IPRs such as IPR2019-01245, the Patent Owner failed to argue
the relation between TSM rate and presentation rate in the way it does here
and the Specification in IPR2019-01245 explicitly stated “Although the
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the District Court proceeding, there was a construction of “presentation rate”
that was agreed to by the parties. See Ex. 2004, 109:3–110:10. In this
proceeding, there is a dispute between the parties as to the construction of
“presentation rate.” Compare PO Resp. 17, with Reply 1–2. However, our
conclusion that the challenged claims of the ’433 patent would have been
unpatentable in view of the asserted art would not be different under either
our construction or the District Court’s construction of “presentation rate,”
as explained below.
Having determined that the proper construction of “presentation rate”
in the challenged claims of the ’433 patent does not include “in a time-scale
modification system,” we nonetheless construe “time-scale modification” in
light of Petitioner’s agreement before the District Court to the construction
of “presentation rate” as “the speed at which media is played back in a time-
scale modification system.” We reject Patent Owner’s proposed
construction of “time-scale modification system,” because, as explained
below, we discern no basis for limiting the claims of the ’433 patent to

detailed description used the terms playback rate and TSM rate, and the
terms playback and playback apparatus, these terms should be understood
to include any type of presentation rate (i.e., a rate of presentation of
information) and any type of presentation apparatus. As such, these terms
are to be understood as being used in the broadest sense.” IPR2019-01245,
(Paper 41) Final Written Dec. 20 (quoting Ex. 1001, 42:60–66). As such,
there are different arguments and different specifications regarding TSM rate
in this IPR. For example, in related IPR IPR2019-01239 and IPR2019-
01241, the term at issue was “default presentation rate,” and the “default
rate” was defined in the Specification of the challenged patent as the normal
rate of play. IPR2019-01239, (Paper 39) Final Written Dec. 19, IPR2019-
01241, (Paper 38) Final Written Dec. 21–22, IPR2019-01243, (Paper 39)
Final Written Dec. 18–19. Nevertheless, for the reasons described in this
decision, we determine it is proper that we arrive at the same construction in
this IPR as the related IPRs.
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“speeding up and slowing down the perceived rate of speech while
substantially preserving both intelligibility and the perceived pitch for audio
and audio-visual media” through recitation of “presentation rate” as
requested by Patent Owner. See PO Resp. 17–26.
Below we examine the intrinsic and extrinsic evidence with regard to
“time-scale modification.”
Intrinsic Evidence - Specification
Patent Owner argues the ’433 Patent identifies the field as “creation
and presentation of media works to audiences including, without limitation,
audio and audio-visual works.” PO Resp. 18 (quoting Ex. 1001, 1:12–14)
(emphasis omitted). Patent Owner further notes “[t]he specification
generally uses the phrase ‘Time-Scale Modification’ (and variations thereof,
such as ‘Time-Scale Modified’) as a capitalized term. See, e.g., EX1001,
1:22, 14:42-43, 17:4-5, 17:47, 18:26-27, 18:37, 18:50, 27:62, 28:37, 28:42,
28:53, 39:61, 39:66, 41:14.” Id. at 18–19. Patent Owner does not argue the
significance of it being a capitalized term but suggests that this infers a
definition of the term. Thus, to the extent Patent Owner suggests
capitalization infers a definitional statement, Patent Owner’s argument is
unpersuasive because Patent Owner does not cite or explain any authority in
support of its proposition that a patentee’s capitalization of a term in a
specification indicates an intent to define it. See e.g. Barkan Wireless
Access Techs., L.P. v. Cellco P’ship, 748 F. App’x 987, 991 (Fed. Cir. 2018)
(“We also cannot conclude ‘Access Point’s’ capitalization necessarily
designates a definition.”) (unpublished).
Specification Focus on Audio
Patent Owner argues that the first introduction of TSM in the
Specification recites that “[p]resently known methods for Time-Scale
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Modification (‘TSM’) enable digitally recorded audio to be modified so that
a perceived articulation rate of spoken passages, i.e., a speaking rate, can be
modified dynamically during playback.” PO Resp. 19 (quoting Ex. 1001,
1:22–25) (emphasis omitted). Patent Owner also points out “[t]he
specification further explains that in a LD-TSM application, ‘a listener can
control the speaking rate during playback of a previously recorded
speaker.’” Id. (quoting Ex. 1001, 1:29–33) (emphasis omitted). In that
application, according to Patent Owner, ‘“the use of the TSM
method…enables the sped-up or slowed-down speech or audio to be
presented intelligibly at the increased or decreased playback rates,’ so that ‘a
listener can readily comprehend’ the content.” Id. (quoting Ex. 1001, 1:36–
42, citing 1:22–40:4) (emphasis omitted). Patent Owner argues that the term
intelligibility is “typically associated with speech,” citing Petitioner’s expert,
and thus, the ’433 Patent’s references to ‘“intelligibility’ would have
indicated to a POSITA that the Specification was referring to TSM of works
including audio, that is, audio or audio-visual works.” Id. at 20 (citing Ex.
2015, 107:7–108:9; Ex. 2016 ¶¶ 50–53).
Patent Owner also argues the ’433 Specification’s specific
embodiments relate to media that includes audio. Id. at 20–21 (citing Ex.
1001, 1:51–55, 1:62–63; Ex. 2016 ¶ 54). As explained supra, Patent Owner
argues the Specification consistently recites that media works include audio.
Id. at 21 (citing Ex. 2016 ¶¶ 34–7, 54, 55). Patent Owner also notes that
specific embodiments explain how to sync a video stream to audio when the
audio is time-scale modified. Id. at 21–22 (citing Ex. 1001, 17:65–18:67).
Additionally, Patent Owner argues that “[t]hroughout the specification,
components of the invention are repeatedly described as ‘TSM’
components,” tying TSM to those audio embodiments. Id. at 22.
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Patent Owner also argues “[t]he ’433 Patent identifies the field as
‘creation and presentation of media works to audiences including, without
limitation, audio and audio-visual works.’” Id. at 18 (quoting Ex. 1001,
1:12–14). The quoted language is permissive rather than limiting, however,
stating that the field “includ[es], without limitation” audio and audio visual.
Patent Owner also argues an advantage of the invention depends on
TSM being limited to increasing intelligibility because “the specification
recognizes that listener interest in a given portion of a media work cannot be
accurately determined if the listener cannot understand the audio or the
audio is otherwise unintelligible.” Id. at 22–23 (citing Ex. 1001, 1:62–2:10;
Ex. 2016 ¶ 58). Nevertheless, the Federal Circuit has explained that “[t]he
fact that a patent asserts that an invention achieves several objectives does
not require that each of the claims be construed as limited to structures that
are capable of achieving all of the objectives.” Liebel–Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004).
Although Patent Owner shows that embodiments and advantages of
the invention are directed to audio, Patent Owner has not shown that the
claims were intended to be so limited. In fact, Petitioner responds that the
Specification discloses an example of presenting email (text-only) messages.
Reply 3 (Ex. 1001, 54:51–55:3).7 Thus, the Specification does not
consistently limit TSM to audio only.
The ’769 Patent
Patent Owner also relies on the ’769 patent which is incorporated by
reference in the ’433 patent.8 PO Resp. 23. Patent Owner argues the ’769

7 This point is discussed further, below, with respect to the term “Media
Work.”
8 U.S. Patent No. 5,175,769 (Ex. 2005, “Hejna”).
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patent “makes clear that TSM requires preservation of pitch and
intelligibility.” Id. Patent Owner relies on quotes from the ’769
Specification stating that that TSM refers to “reproduction of the signal at a
wide variety of playback rates without an accompanying change in local
periodicity” and that “to preserve intelligibility, no phoneme should be
removed completely.” Id. at 23–24 (quoting Ex. 2005, 1:5–10; 1:27–33,
1:44–62). Based on this quote, Patent Owner argues “the disclosed TSM
method would be the method of performing TSM relevant to the ’433
Patent . . . [thus,] a POSITA considering the ’433 Patent would have
understood that its inventor defined TSM, as used in the ’433 Patent, as
requiring preservation of pitch and intelligibility.” Id. at 24.
Incorporated patents are “effectively part of the host [patents] as if
[they] were explicitly contained therein.” Telemac Cellular Corp. v. Topp
Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001) (citations
omitted); see Ultradent Prods., Inc. v. Life–Like Cosmetics, Inc., 127 F.3d
1065, 1069 (Fed. Cir. 1997) (citing Manual of Patent Examining Procedure
§ 608.01(p) (6th ed.1996)) (explaining that, unless indicated otherwise,
incorporation by reference of a patent renders “the entire contents” of that
patent's disclosure a part of the host patent); see also Harari v. Lee, 656 F.3d
1331, 1335–36 (Fed.Cir.2011). As a result, the disclaimers and definitions of
the incorporated patents are a part of the asserted patents.
Here, however, the ’769 patent does not have a clear disclaimer
because the ‘769 patent actually defines the term more broadly stating “time
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scale modification (‘TSM’), i.e., changing the rate of reproduction, of a
signal.” Reply 5 (quoting Ex. 2005, 1:6–13).9
Patent Owner’s description of the history of TSM actually cuts against
its argument that the ’769 patent limits the invention to preserving pitch.
For example, Patent Owner argues “the study of TSM dates back to at least
the 1940’s, and in more modern digital signal processing as described in the
’769 Patent, TSM methods operate by inserting or deleting segments of a
digitally sampled speech signal in a manner that preserves the local pitch
and intelligibility.” PO. Resp. 23. Patent Owner’s argument does not suggest
the TSM is defined as preserving pitch but, rather, suggests that more
modern specific methods in the ’769 patent do so.
Finally, the District Court in the related litigation disagreed that the
’769 patent’s references to pitch served to limit the construction of TSM to
preserving intelligibility and pitch. Ex. 2011, 9. In its claim construction
ruling, the District Court explains
[t]he court in California [in another litigation] agreed with
the plaintiff in that case and did not read pitch into the meaning
of the general term “time-scale modification” and construed the
term to mean “speeding up or slowing down the playback rate.”
The plaintiff in the California case stated that it “proposed a clear
definition [i.e., the definition Defendants here propose] drawn
directly from the patent specification. . . . In fact the specification
[of the ’769 patent] very clearly uses the term ‘time-scale
modification’ to refer only to the speeding up or slowing down
playback of a signal.”[6] The court in California concluded that

9 A patentee’s use of “i.e.,” in the intrinsic record, however, is often
definitional. Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334
(Fed. Cir. 2009) (“[U]se of ‘i.e.’ signals an intent to define the word to
which it refers.”); see also Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324,
1330 (Fed. Cir. 2003) (holding that a patentee “explicitly defined” a term by
using “i.e.” followed by an explanatory phrase).
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that construction was supported by the use of the term in the
claims and the specification.[7]
I find that Court’s reasoning persuasive. In addition, I find
that the construction of time-scale modification that does not
require preservation of intelligibility and pitch is supported by
the intrinsic evidence of the asserted patents here.

Id. (bracketed material in original). We agree with the District Court. The
Specification does not support limiting the construction of TSM to
preserving intelligibility and pitch.
Extrinsic Evidence
“[E]xtrinsic evidence may sometimes illuminate a well
understood technical meaning.” Immunex Corp. v. Sanofi-Aventis U.S. LLC,
977 F.3d 1212, 1221 (Fed. Cir. 2020). Patent Owner also argues that
publications cited on the face of the ’769 patent define TSM. PO Resp. 25.
These publications also describe specific methods of TSM. A first
publication states “[i]n time—scale modification, we wish to modify the
perceived rate of speech while preserving the formant structure (for
intelligibility) and the perceived pitch (for naturalness).” Ex. 2006, 1. That
publication also recites, however, “[i]n this paper, we discuss an earlier
algorithm for time-scale modification (TSM).” Id. A second publication
recites “[c]hanging the speed of the speech signal without changing the
voice quality is known as time-scale modification, or TSM.” Ex. 2007, 1.
That publication also recites “In this paper, we apply the synchronized-
overlap-add (SOLA) method of TSM.” Id. In other words, these
publications indicate they are describing a particular method of TSM.
Patent Owner also points to several other publications that allegedly
support a finding that “TSM would have been understood to involve the
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speeding up or slowing down of digital multi-media content in a manner that
preserves the pitch of the audio, such that it remains understandable and
perceptible to the user.” PO. Resp. 25 (citing Ex. 2006, 1; Ex. 2007, 1; Ex.
2022; Ex. 2027, 12; Ex. 2028, 2; Ex. 2029, 2; Ex. 2030, 4; Ex. 2031, 8–9;
Ex. 2016 ¶¶ 65–75). However, we find that they only show, as the first two,
that there are specific methods of time-scale modification that preserve pitch
and intelligibility. We do not find that these publications show a well
understood definition of TSM that excludes methods that do not preserve the
perceived pitch and intelligibility of audio. Additionally, even if these
publications suggest TSM could in some circumstances be understood in
such a way, “we give the intrinsic evidence ‘priority,’ . . . over extrinsic
evidence with which it is ‘inconsistent.’” Immunex Corp., 977 F.3d at 1221.
Conclusion
In sum, as to TSM, the claim language does not contain the term; the
extrinsic evidence presents specific methods of TSM but not a well-
understood definition; and, while the intrinsic evidence provides a view
consistent with Patent Owner’s construction in some embodiments, it also
provides a broad definition of TSM and does not provide an explicit
disavowal of any scope of the claim. We do not discern that this evidence
supports Patent Owner’s claim construction.
As explained above, we do not incorporate TSM into the definition of
“presentation rate.” Additionally, for the reasons above, to the extent TSM
remains relevant to this proceeding, we adopt the District Court’s
construction of TSM to mean “speeding up or slowing down the playback
rate.” PO Resp. 18; Ex. 2011, 8. Accordingly, we do not limit TSM to
playback rate “of audio or audio-visual media, while maintaining pitch and
intelligibility,” as urged by Patent Owner.
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3. “media work”
Patent Owner argues “media work” should be construed as “audio or
audio-visual media.” PO Resp. 26. Patent Owner relies on the following
quote from the Specification:
Media Work: A Media Work (“MW”) may comprise,
without limitation, one or more of text, pictures, audio, for
example, a speech, an audio-visual work, for example, a movie
or instructional video tape.

Ex. 1001, 8:20–24. Patent Owner argues that all the examples of media
work include audio. PO Resp. 26–27. “It is . . . not enough that the
only embodiments, or all of the embodiments, contain a particular
limitation” to import a limitation from the specification into the claims.
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir.
2012). Additionally, the language quoted above that Patent Owner relies on
allows for text to be one of the examples of a media work. Patent Owner
argues that text is mentioned in association with an example that includes
text and speech (id.), but we find that the quotation above is clear that Media
Work includes “one or more” of text, pictures, and audio of which text alone
could be the one. Patent Owner also argues its construction of TSM shows
that a media work must have audio in order to have pitch and intelligibility
to preserve. PO. Resp. 27–28. As explained above, we do not adopt that
construction. Thus, we do not adopt Patent Owner’s construction that media
work is limited to works that include an audio component.
4. “media work content properties”
Patent Owner argues ‘“media work content properties’ must not be
construed as coextensive with ‘content,’ and should instead be construed as
‘properties other than the content of a media work.’” Patent Owner relies on
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the prosecution, in which keyword searches in a text to speech converter
were distinguished because they detected the content not properties of the
content. PO Resp. 29–32 (citing Ex. 1004, 59, 86, 122–23, 152, 163–64; Ex.
2016 ¶ 38). Patent Owner also relies on claim differentiation because claims
3 through 6 recite “detecting [the] content or properties” while claims 8 and
9 recite “detecting media work content properties.” Id. at 31.
Additionally, Patent Owner argues “[a]ll of these examples [of media
work content properties in the specification] involve the results of analyzing
the Media Work (such as how many letters are in a word, how many letters
make up a syllable, grammatical analysis, a count of people or objects in a
frame, aptitude or complexity analysis). They do not merely reflect the
content of the Media Work.” Id. at 31–32.
Petitioner, on the other hand, argues the fact that properties are
different than content is “self-evident” and does not need construction.
Reply 7–8. We agree.
Rather than a dispute on construction, Patent Owner’s argument
regarding obviousness relies on the assertion that examples Petitioner relies
on in Rochkind are similar to examples distinguished in prosecution rather
than explicitly relying on their suggested construction. Sur-Reply 3–6.
Thus, we decline to explicitly construe “media work content properties.”
Rather we discuss this limitation in the analysis below.
5. Other Terms
We conclude that no express claim construction of any other claim
term is necessary to determine whether to institute review of the challenged
claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci.
& Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only
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construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy.’”).
D. Anticipation of Claims by Rochkind – Ground 1
Petitioner argues that claims 3, 4, and 9 are unpatentable under 35
U.S.C. § 102(a) as anticipated by Rochkind. Pet. 2. To support its
contentions, Petitioner provides explanations as to how the prior art
allegedly discloses each claim limitation. Id. at 8–24. Rochkind is
summarized below.
1. Rochkind (Ex. 1005)
Rochkind (Ex. 1005) discloses “a system and method for playing back
a recorded voice message, and, in particular, for playing back a spoken
numeric portion of the message automatically at a rate that is slower than the
rate for playing back the remaining portion of the recorded voice message.”
Ex. 1005, 1:66–2:3.
2. Analysis of Claim 3
a) “A method of utilizing audience affinity or aptitude
associated with content or properties to present a media
work which comprises”
Patent Owner argues that the preamble is limiting. Patent Owner
argues “[t]he preamble provides the antecedent basis for” “the audience
affinity or aptitude,” “the content or properties,” and “the media work” terms
in the body of claim 3. PO Resp. 16 (citing In re Fought, 941 F.3d 1175,
1178 (Fed. Cir. 2019)). For the purpose of this decision, we do not need to
decide whether the preamble is limiting because Petitioner recognizes that
the preamble may be limiting by presenting contentions “[t]o the extent the
preamble of claim 3 is limiting.” Pet. 8.
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Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses a “method of utilizing audience affinity or aptitude
associated with content or properties to present a media work,” as recited in
claim 3. Pet. 9 (citing Ex. 1002 ¶¶ 64–72; Ex. 1005, Abstract, 1:26–29,
1:31–37, 1:39–40, 1:44–48, 1:66–2:3, 2:15–18, 5:15–23, Figs. 2, 2B, 3, 5,
6).
Petitioner relies on Rochkind’s disclosure of an ‘“enhanced
intelligibility mode’ that, when enabled, causes ‘any spoken numbers
detected in messages played back to the user thereafter [to] automatically
be played back at a slower rate than the rest of the message.’” Pet. 9–10
(citing Ex. 1005, 5:15–18; 5:20–23; Ex. 1002 ¶ 68.) According to
Petitioner, “[b]y disclosing a playback technique that results in numeric
content (which Rochkind explains is harder to comprehend than non-
numeric content [see Pet. 8 citing Ex. 1005, 1:31–37]) of a voice message
being played back at a slower rate than non-numeric content, Rochkind
discloses a method of utilizing audience aptitude associated with content
or properties to play back (‘present’) the voice message (‘media work’).”
Id.
b) “detecting the content or properties in a portion of
the media work”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “detecting the content or properties in a portion of
the media work,” as recited in claim 3. Pet. 11–14 (citing Ex. 1002 ¶¶ 73–
75; Ex. 1005, Abstract, 2:5–8, 2:15–18, 3:64–4:6, 4:19–39, 4:41–44, 5:4–8 ,
Figs. 3, 4).
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c) “associating the audience affinity or aptitude
associated with the detected content or properties with a
presentation rate for the portion”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “associating the audience affinity or aptitude
associated with the detected content or properties with a presentation rate for
the portion,” as recited in claim 3. Pet. 14–17 (citing Ex. 1002 ¶¶ 76–79;
Ex. 1005, 4:32–39, 4:64–5:3, 5:15–18, 5:20–23, 6:17–25, Fig. 3, 6).
Patent Owner argues “[t]he antecedent basis for ‘the audience affinity
or aptitude’ is in Element 3(a)’s recitation of ‘utilizing audience affinity or
aptitude associated with content or properties to present a media work.’” PO
Resp. 33. Patent Owner further argues the Petitioner relies only on aptitude
rather than affinity. Id. Thus, according to Patent Owner, Petitioner is
required to show an aptitude associated with content or properties. We
agree.
Patent Owner argues that alleged “aptitude” regarding numeric
content in Rochkind is not “associat[ed] . . . with a presentation rate for the
portion” as recited in claim 3. Id. at 33–38. Patent Owner first argues that
“Rochkind does not disclose assessing aptitude, and relies on generalizations
that do not address aptitude for any given numeric content, such as whether
the number is familiar, already known, or otherwise readily understandable
at normal speed.” Id. at 33 (emphasis omitted). We disagree. The claim
does not recite or require “assessing” aptitude but rather “utilizing” aptitude,
which can include using a previously assessed aptitude as is done in
Rochkind.
Patent Owner further argues that the “alleged ‘audience…aptitude’ is
not ‘associat[ed]…with a presentation rate for the portion.’ Instead, the
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presentation rates are associated with ‘0’s and ‘1’s in Rochkind. And those
‘0’s and ‘1’s correspond only to what position in the media corresponds to
numeric content.” Id. at 34 (emphasis omitted). We disagree. The
presentation rate can be, in this case, slow or fast which Rochkind associates
with “0” or “1” where the “0” is a non-numeric section of the text for which
the audience has a high aptitude and where the “1” is a numeric section of
the text for which the audience has a low aptitude. Pet., 13, 17–18. Patent
Owner appears to argue that associating with a presentation rate requires
some step of storing or creating some unexplained durable association
between content, aptitude, and presentation rate.
Patent Owner argues that because presenting the portion at the rate is
a separate step than associating there must be some association of an
“aptitude” with a “rate” and failure to do so is a failure to give meaning to
all terms in the claim. PO Resp. 36. We disagree. In order for the
Rochkind system to work as described these things must occur: the system
must be configured to play content associated with a 1 or a 0 (Ex. 1005,
5:15–18); content must be identified and associated with a 1 or 0 based on
the property of the content being either numeric or non-numeric (id. at 4:32–
38); and the system must play content associated with a 1 or 0 at a particular
speed (id. at 5:15–18).
The first step – configuring the system to play content associated with
0 at a high rate – for example, is shown in Figure 4. The phrase “This is an
example of a message that includes a spoken number” is associated with 0’s.
Ex. 1005, Fig 4. Patent Owner cites to the Specification at column 7, lines
23–32, for an “example of associating audience affinity or aptitude with a
presentation rate for the relevant content.” PO Resp. 37 (citing Ex. 1001,
7:23–32). An example at that citation relied on by Patent Owner associates
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data such as “onomatopoeia” as a concept with data such as “well-known”
as the aptitude for that concept. Ex. 1001, 7:25–28. We find that the fact
that 0 is a number and “well-known” is a word does not change the fact that
they both represent an aptitude. Both “well-known” and 0 are codes
representing a level of aptitude. Thus, we are not persuaded by this
argument.
Patent Owner also presents the following visual aids. Reproduced
below is Patent Owner’s chart showing the claim language. PO Resp. 36.

Reproduced above is Patent Owner’s chart representing the claim language
“detected content or properties” “associated with” “audience affinity or
aptitude” “associating with,” and “presentation rate for the portion.” Below
Patent Owner presents a chart purporting to represent Rochkind’s system of
assigning “0” or “1” to content based on the property that the content is
numeric or non-numeric and then playing the content either slower or faster.
Id.

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Reproduced above is a chart Patent Owner presents purporting to represent
Rochkind’s system of assigning “0” or “1” to content. We find this chart
misleading at best. “[A]ssigned to” and “played” in the above chart require
some association was also made.
Additionally, Patent Owner argues “Rochkind’s ‘0’s and ‘1’s
correspond only to whether any given position in the media includes
numeric content; the ‘0’s and ‘1’s do not represent aptitude.” PO Resp. 37.
We find that the “0”s and “1”s represent segments of the media in which
numeric content is either present or not present which, because the numeric
character of a word is associated with a listener’s ability to comprehend the
media content (Ex. 1005, 1:31–37), does represent levels of aptitude. Pet. 9;
Ex. 1005, 4:33–41. Those segments representing levels of aptitude are also
associated with presentation rates. Pet. 9; Ex. 1005, 5:16–18 (“any spoken
numbers detected in messages played back to the user thereafter [to]
automatically be played back at a slower rate than the rest of the message.”).
Thus, we are not persuaded by Patent Owner’s argument.
d) “presenting the portion at the presentation rate”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “presenting the portion at the presentation rate,” as
recited in claim 3. Pet. 17–18 (citing Ex. 1002 ¶ 80; Ex. 1005, 5:15–18,
5:20–23, 6:17–25, Fig. 6).
3. Analysis of Claim 4
Claim 4 depends from claim 3. As explained above, Petitioner has
shown that Rochkind discloses all of the limitations of claim 3. Petitioner
also establishes sufficiently by a preponderance of the evidence that
Rothkind discloses “associating includes accepting user input to determine
the presentation rate,” as recited in claim 4. Pet. 18–20 (citing Ex. 1002 ¶¶
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81–83; Ex. 1005, 5:11–15, 5:17–23, 5:37–47, Fig. 5). Patent Owner does
not raise any arguments specific to claim 4.
4. Analysis of Claim 9
a) “A method of presenting a media work which
comprises”
Patent Owner does not argue that the preamble is limiting. For the
purpose of this decision, we do not need to decide whether the preamble is
limiting because Petitioner recognizes that the preamble may be limiting by
presenting sufficient evidence showing the preamble is disclosed in
Rochkind. Pet. 20.
b) “detecting media work content properties in a
portion of the media work”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “detecting media work content properties in a
portion of the media work,” as recited in claim 9. Pet. 20–22 (citing Ex.
1002 ¶¶ 85–86; Ex. 1005, Fig. 4; discussion of claim 3, supra).
For example, Petitioner contends “Rochkind discloses ‘detecting
media work content properties . . .’ because whether numeric information (or
non-numeric information) is present or not in a voice message is a property
of the content of the voice message, which is a ‘media work’ as discussed
above for the preamble of claims 3 and 9.” Pet. 21. Additionally, as to
claim 9, Petitioner contends “Rochkind discloses detecting media work
content properties . . . because the property of being numeric (or non-
numeric) content is detected.” Pet. 22.
By contrast, in association with claim 3’s recitation of “content or
properties,” Petitioner contends that Rochkind “discloses detecting non-
numeric content (which can be mapped to ‘the content or properties’) where
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numeric content is not present.” Pet. 11. Petitioner contends “in addition to
determining the relative position of spoken numbers within the voice
message, Rochkind’s system and process also determines the complement of
such positions (i.e., where numeric information is not present). (Ex. 1002,
¶75.) In Figure 4, Rochkind explicitly shows the detected non-numeric
content with zeros and shows the detected numeric content with ones.” Pet.
13.
Patent Owner argues that the Petition cannot use the same numeric
and non-numeric content as the claimed “content” for claim 3 and as the
“content property” for claim 9. PO Resp. 39–40. We disagree. The spoken
words which are numeric or non-numeric can be considered “content” as
claimed. As to claim 3, Petitioner contends that Rochkind detects the “non-
numeric content” and the “spoken numbers,” this is sufficient to refer to
“content.” Pet. 13. As to claim 9, on the other hand, Petitioner points to
“whether numeric information (or nonnumeric information) is present or not
in a voice message is a property.” Pet. 21.
Patent Owner also suggests that the examples from the Specification,
i.e. “syllables spoken, letters in a syllable, number of people or objects in a
video frame, complexity of content, grammatical structure, rate of
occurrence” etc. are not properties of content in the way that the presence of
numeric or non-numeric information relates to content. PO Resp. 40. We
disagree. For example, syllables in a spoken word is a property of the words
containing those syllables just as the numeric character of a word is a
property of a word.
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c) “associating a presentation rate of the portion
with the detected media work content properties”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “associating a presentation rate of the portion with
the detected media work content properties,” as recited in claim 9. Pet. 22
(citing Ex. 1002 ¶ 87; Ex. 1005, 4:32–39, 5:15–18, 5:20–23, 6:17–25, Fig.
3).
Patent Owner makes the same argument regarding the term “content
properties” for this limitation as it did for the limitation above. Thus, for the
same reasons as above, we are not persuaded by that argument. See PO
Resp. 40.
d) “presenting the portion at the presentation rate”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “presenting the portion at the presentation rate,” as
recited in claim 9. Pet. 23 (citing Ex. 1002 ¶ 88; discussion of claim 3,
supra).
e) “wherein the media work content properties
comprise indicia of actions of objects”
Petitioner establishes sufficiently by a preponderance of the evidence
that Rochkind discloses “wherein the media work content properties
comprise indicia of actions of objects,” as recited in claim 9. Pet. 23–24
(citing Ex. 1002 ¶ 89; discussion of claim 3, supra).
For example, Petitioner contends:
Rochkind discloses detecting whether given content contains
numeric as opposed to non-numeric information at various time
instants (“media work content properties”). (Supra Section
IX.A.3(b); see also supra Section IX.A.1(b) . . . ) Because
Rochkind’s content is speech content of a voice message,
Rochkind’s detections of whether the content is numeric/non-
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numeric at various time instants (“the media work content
properties”) comprise indicia of whether the speaker (i.e., person
speaking the voice message) spoke a number or something other
than a number at those times. (Ex. 1002, ¶89.) A POSITA would
have understood that in the context of the ’433 patent a person is
an example of an object and that instances of a person speaking
a number or something other than a number constitute actions of
objects. (Id.) A POSITA would further have understood that
because Rochkind discloses a voice message system and process
without regard to any specific speaker, Rochkind’s process is
applicable to multiple speakers. (Id.) As such, the detections of
whether content is numeric/non-numeric at various time instants
(“the media work content properties”) comprise indicia of
actions of objects (plural). (Id.).
Pet. 23–24. In other words, Petitioner relies on the actions of a person
speaking.
5. Summary for Ground 1
Having reviewed the record, we determine that the information
presented establishes by a preponderance of the evidence that Petitioner
would prevail in showing that claims 3, 4, and 9 are unpatentable under 35
U.S.C. § 102(a) as anticipated by Rochkind.
E. Obviousness of Claim 9 over Mauldin and Bhadkamkar –
Ground 2
Petitioner argues that claim 9 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over Mauldin and Bhadkamkar. Pet. 3. To support its
contentions, Petitioner provides explanations as to how the prior art
allegedly teaches each claim limitation. Id. at 24–37.
Because we find that claim 9 is unpatentable as anticipated by
Rochkind, we do not reach the issue of whether it is also obvious over
Mauldin and Bhadkamkar.
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F. Obviousness of Claims 1 and 7 over Walker and Bhadkamkar –
Ground 3
Petitioner argues that claims 1 and 7 are unpatentable under 35 U.S.C.
§ 103 as obvious over Walker and Bhadkamkar. Pet. 3. To support its
contentions, Petitioner provides explanations as to how the prior art
allegedly discloses each claim limitation. Id. at 37–59.
Walker and Bhadkamkar are summarized below.
1. Walker (Ex. 1006)
Walker (Ex. 1006) is directed to a “presentation of text for improved
human reading” by using attributes of text, such as “paragraphs, sentences,
words, and punctuation.” Ex. 1006, Abstract, 1:4–7, 9:56–58. Walker
teaches presenting text one sentence at a time, broken up based on sentence
structure, to “create a system of meaningful visual cues” and where the eyes
need to move a shorter distance from phrase to phrase. Id. at 2:29–58.
Walker also varies the rate at which its sentences are presented, and
can alter the amount of time for which text is displayed, and the time interval
between sentences. Id. at 7:40–53. For example, Walker may increase the
amount of time between sentences in order to indicate a new paragraph. Id.
“The sentences advance at a rate using a rule previously selected by the
reader,” where “[t]he formula is a function of the text type, number or
words, educational level, and number of syllables present in the line.” (Ex.
1006, 3:42–45; 7:44–48, 10:25–29.
A reader may manually advance text, such as by mouse click, or the
text advancement may be controlled by reader-specified parameters. Id. at
15:10–22. Advancement can take into account text properties, such as text
type, number of words, number of syllables, and difficulty of words. Id. at
2:8–9, 3:43–46, 5:27–36.
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2. Bhadkamkar (Ex. 1007)
Bhadkamkar (Ex. 1007) “relates to the display of audio and video data
and, in particular, to variation of the apparent display rate at which the audio
and video data is displayed.” Ex. 1007, Abstract, 1:6–8. Bhadkamkar
further discloses that “it may be desirable to slow the apparent display rate
so that the display can be more carefully scrutinized, or because the content
of the display can be better digested at a slower rate.” Id. at 1:20–23.
Bhadkamkar further describes varying the playback rate of audio data, e.g.,
based on an analysis of whether an audio segment contains a “particular
speaking voice or voices.” Id. at 10:17–19.
3. Motivation to Combine
Petitioner contends that “[t]o the extent that Walker’s disclosure of
correlating the content or properties of sentences with the presentation time
intervals does not explicitly disclose correlating the content or properties of
the portions with the presentation rates . . . it would have been obvious in
view of Walker and Bhadkamkar to implement this feature.” Pet. 46.
Petitioner also contends “Walker in combination with Bhadkamkar
discloses or suggests” associating audience affinity or aptitude with the
presentation rates for the correlated content or properties. Id. at 47.
Patent Owner argues that Petitioner has not shown sufficient
motivation to combine Walker and Bhadkamkar. PO Resp. 56–63. As
explained below, we disagree. Petitioner articulates sufficient reasons for
combining the teachings of Walker and Bhadkamkar. Pet. at 41–44, 46–47,
48–51.
As an initial matter, Petitioner also contends “a POSITA would have
known that a presentation rate is merely the reciprocal of a presentation time
duration,” and that “it would have been a matter of simple arithmetic
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convenience to decide whether to correlate with one mathematical quantity
or with the reciprocal of that mathematical quantity.” Pet. 46–47. Patent
Owner argues that in the context of the limitation of “correlating the content
or properties of the portions with the presentation rates,” recited in claim 1,
Petitioner does not explain why one of ordinary skill would associate display
times with presentation rates as opposed to simply explaining that it could be
done. PO Resp. 60. We disagree with Patent Owner’s argument because
Walker explicitly relates rates to duration so no other motivation to do so
need be shown. See Pet. at 46. As Petitioner contends, “Walker describes
its technique in terms of both a rate and a duration because the relationship
between the two is simple. (Pet. at 46; Ex. 1006, 7:40-42.).” Reply 22–23.
As to motivation to combine, Petitioner argues “Bhadkamkar is in a
similar technical field as Walker, e.g., because both references relate to
presenting video (Walker’s displayed text can be considered to be video) and
address a similar problem (e.g., determining presentation rate for content).”
Pet. 42 (citing Ex. 1002 ¶ 118.). Patent Owner argues there are differences
between Walker’s text–based system and Bhadkamkar’s system for
synchronizing audio and video at an altered playback speed. PO Resp. 56.
Specifically, Patent Owner argues that, despite Petitioner’s contention that
they are in the same technical field, Bhadkamkar is concerned with the
“specific problem” of audio distortion when adjusting the playback rate and
Walker’s text based system does not address that issue at all. Id. at 57.
Despite Patent Owner’s focus on the problem solved by Walker and
Bhadkamkar, the motivation to combine inquiry focuses on whether one of
ordinary skill would have been motivated to combine the teachings of both
references as a whole, not whether the problems solved by the prior art are
the same. See Bosch Auto. Serv. Sols., LLC v. Matal, 878 F.3d 1027, 1036
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(Fed. Cir. 2017), as amended on reh’g in part (Mar. 15, 2018) (citing EWP
Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect.”) ). Here, although the inventions of Walker and Bhadkamkar are
different and may address different problems, both inventions can
manipulate the rate of presentation of material. See Pet. 42 (citing Ex. 1002
¶ 118.)
Patent Owner argues that combining Bhadkamkar’s system to slow
the presentation rate would not be compatible with Walker’s system that
increases the presentation rate “a little faster than the reader’s comfortable
rate to increase comprehension.” PO. Resp. 59 (citing Ex. 1006, 3:45–48)
(emphasis omitted). Patent Owner further argues, “Petitioner does not
explain why a [person of ordinary skill in the art] would have overlooked
Walker’s teaching that the opposite approach (presenting material at a faster
speed) should be used to increase comprehension.” Id.10 Patent Owner also
argues Walker’s disclosure of increasing the speed applies to the “specific
situation” relied on by Petitioner regarding comprehension. Id.

10 Patent Owner does not explicitly argue that this is a teaching away and we
determine that this situation would not meet that standard. A teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”). Merely teaching an alternative or equivalent method does not
teach away from the use of a claimed method. See In re Mouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012) (citations omitted); In re Dunn, 349 F.2d 433,
438 (CCPA 1965).
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Nevertheless, we determine that even if Petitioner relies on a specific
teaching of Walker, the motivation to combine may be found in the broader
teaching of the reference. Bosch Auto. Serv. Sols., LLC, 878 F.3d at 1036
(“That Dixit does not disclose a universal RTMS activation tool (which
would make Dixit an anticipatory reference) or provide an express
motivation to combine different means for activating RTMS sensors does
not render its teachings irrelevant.”).
Consistent with that proposition, Petitioner contends
A POSITA would have had reason to consider the disclosure of
Bhadkamkar and would have recognized that Bhadkamkar’s
disclosure regarding using a slower display rate (and hence a
longer display time) for enabling better digestion (e.g.,
understanding or comprehension) of content would have been
relevant to implementing Walker’s process, given that Walker
discloses considering “the time needed to read a sentence” (Ex.
1006, 15:30-31; see also id., FIG. 10) and discloses a
“presentation interval [that] may be reader controlled or
automatically determined” (id., 8:39-40). (Ex. 1002, ¶128.)
Pet. 49. In other words, Walker takes into account reader comprehension as
it relates to displaying content. In fact, as Petitioner further contends,
“Walker discloses or at least suggests inferring that a reader has relatively
low aptitude (e.g., low fluency or low comprehension) regarding a sentence
that requires a relative long time for the reader to read (e.g., as determined
by measuring how long the reader caused the sentence to be displayed,
which is disclosed in Walker, see Ex. 1006, 15:25-33). (Ex. 1002, ¶117.)”
Id. at 41. Thus, we agree with Petitioner that Walker does not simply
suggest increasing the duration but in the context of the entire discussion in
Walker, Walker suggests adjusting the display time up and down based on
comprehension. Pet. 38–41; Reply 20–21 (“The foregoing quote from
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Walker merely relates to making the advancement rate close to the reader’s
comfortable rate, as opposed to much faster than that”). Thus, although
Patent Owner presents a quote in which Walker increases the presentation
rate, Walker considers the reader’s comprehension in determining how long
to display a sentence and teaches that display time can be user controlled.
Patent Owner also argues that Petitioner’s explicit stated rationale for
combining (i.e, “determine presentation rates”) is deficient because Walker
and Bhadkamkar are changing the rate of different things (i.e., text vs.
audio) and, as discussed above, because Walker suggests speeding not
slowing the rate specifically based on comprehension. PO Resp. 60. Based
on this argument, Patent Owner suggests Petitioner has shown that the
references could be combined but not why they would be combined. Id. We
disagree.
The Specification is clear the invention is broad and relates to text
and/or audio. Ex. 1001, 8:20–24. As to the differences between text and
audio presentations, “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference.” Facebook, Inc. v. Windy City Innovations, LLC, 973
F.3d 1321, 1343 (Fed. Cir. 2020) (citations omitted).
As to Walker’s suggestion to speed up the presentation, Walker also
has extensive disclosure regarding how comprehension relates to display
times. Pet. 39–40. Thus, given the finite choice of slowing the speed of
presentation as suggested in Bhadkamkar or increasing the speed of
presentation as suggested by the single quote in Walker, it would have been
obvious from the extensive discussion of comprehension in Walker to
combine the references. See Procter & Gamble Co. v. Teva Pharm. USA,
Inc., 566 F.3d 989, 996 (Fed. Cir. 2009) (“When a person
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of ordinary skill is faced with ‘a finite number of identified, predictable
solutions’ to a problem and pursues ‘the known options within his or her
technical grasp,’ the resulting discovery ‘is likely the product not of
innovation but of ordinary skill.’”). Thus, we are not persuaded by Patent
Owner’s argument regarding Petitioner’s explicit stated rationale for
combining.
Finally, Patent Owner argues Petitioner has not addressed the
reasonable expectation of success for the combination because of the
“fundamental differences” between the two references. PO. Resp. 66.
Consistent with the discussion above, we disagree that the references have
“fundamental differences” that would frustrate a reasonable expectation of
success. We determine Petitioner’s statement, supported by its declarant,
that the combination would have been a mere combination of known
elements and technologies, according to known methods, to achieve
predictable results provides a showing of a reasonable expectation of success
regarding the combination. See Pet., 43, 51; Ex. 1002, ¶¶120, 130.
Thus, for the reasons above, on the current record, we are persuaded
by Petitioner’s arguments regarding the motivation to combine Bhadkamkar
with Walker.
4. Analysis of Claim 1
a) “A method for inferring audience affinity or
aptitude with regard to content or properties of portions
of a media work which comprises”
Patent Owner does not argue that the preamble is limiting. For the
purpose of this decision, we do not need to decide whether the preamble is
limiting because Petitioner recognizes that the preamble may be limiting by
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presenting sufficient evidence the cited art teaches the preamble. Pet. 37–
44.
b) “presenting the media work to an audience”
Petitioner establishes sufficiently by a preponderance of the evidence
that Walker teaches “presenting the media work to an audience,” as recited
in claim 1. Pet. 44 (citing Ex. 1002 ¶ 121; Ex. 1006, Abstract, 1:5–7, 2:29–
39).
c) “obtaining user input regarding presentation rates
for the portions of the media work”
Petitioner establishes sufficiently by a preponderance of the evidence
that Walker teaches “obtaining user input regarding presentation rates for the
portions of the media work,” as recited in claim 1. Pet. 44 (citing Ex. 1002 ¶
122; Ex. 1006, 3:49–52, 15:23–25).
Petitioner argues the presentation of text sentences is a media work
such that Walker teaches slowing down and speeding up of the playback
rate. Pet. 37, 44. Specifically, Petitioner contends “Walker discloses, for
example, that ‘[t]he reader is able to easily interact with the reading
system, holding difficult sentences on the screen longer, and speeding up
or slowing down the presentation.’” Pet. 44 (citing Ex. 1006, 3:49–52.).
Petitioner relies on only Walker for the limitations in claims 1 and 7
of “obtaining user input regarding presentation rates for the portions of
the media work.” Id. Patent Owner argues, under its construction of
presentation rate as preserving pitch and media work as limited to audio
works, that Walker cannot meet those limitations. Given our
construction, we are not persuaded by these arguments that are not
commensurate with the proper scope of the claims.
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d) “correlating the content or properties of the
portions with the presentation rates”
Petitioner establishes sufficiently by a preponderance of the evidence
that the combination of Walker and Bhadkamkar teaches “correlating the
content or properties of the portions with the presentation rates,” as recited
in claim 1. Pet. 37–47 (citing Ex. 1002 ¶¶ 113–120, 123–125; Ex. 1006,
Abstract, 1:5–7; 2:29–30, 3:12–13, 3:42–52, 7:40–48, 8:38–39, 8:61–63,
10:25–29, 12:29–39, 15:23–35, Figs. 2, 10; Ex. 1007, 1:7–9, 1:20–23,
10:66–11:01).
e) “associating audience affinity or aptitude with the
presentation rates for the correlated content or
properties.”
Petitioner establishes sufficiently by a preponderance of the evidence
that the combination of Walker and Bhadkamkar teaches “associating
audience affinity or aptitude with the presentation rates for the correlated
content or properties,” as recited in claim 1. Pet. 47–51 (citing Ex. 1002 ¶¶
126–130; Ex. 1006, Abstract, 1:5–7; 2:29–30, 3:12–13, 3:42–52, 7:40–48,
8:38–40, 8:61–63, 10:25–29, 12:29–39, 15:23–38, Figs. 2,10; Ex. 1007,
1:7–9, 1:20–23, 10:66–11:01).
5. Analysis of Claim 7
a) “A method of testing aptitude of an audience for
content or properties of portions of a media work which
comprises”
Patent Owner does not argue that the preamble is limiting. For the
purpose of this decision, we do not need to decide whether the preamble is
limiting because Petitioner recognizes that the preamble may be limiting by
presenting sufficient evidence the cited art teaches the preamble. Pet. 51–
55.
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b) “presenting the media to an audience”
Petitioner establishes sufficiently by a preponderance of the evidence
that Walker teaches “presenting the media to an audience,” as recited in
claim 7. Pet. 56; Ex. 1002 ¶ 138; discussion of claim 1.
c) “obtaining user input regarding presentation rates
for the portions of the media work”
Petitioner establishes sufficiently by a preponderance of the evidence
that Walker teaches “obtaining user input regarding presentation rates for the
portions of the media work,” as recited in claim 7. Pet. 56 (citing Ex. 1002
¶ 139; discussion of claim 1).
As explained above, we are not persuaded by Patent Owner’s
argument that Walker does not teach speeding up or slowing down the
playback rate of a media work. See discussion of claim 1; PO Resp. 56–
63.
d) “correlating the presentation rates with the
aptitude for the content or properties of the portions.”
Petitioner establishes sufficiently by a preponderance of the evidence
that the combination of Walker and Bhadkamkar teaches “correlating the
presentation rates with the aptitude for the content or properties of the
portions,” as recited in claim 7. Pet. 51–58 (citing Ex. 1002 ¶¶ 131–137,
140–142; Ex. 1006, 1:5–7, 1:15–20, 3:42–52., 7:40–48, 8:61–63, 10:66–
11:01, 15:23–35, Fig. 10; Ex. 1007, 1:20–23).
6. Summary for Ground 3
Having reviewed the record, we determine that the information
presented establishes by a preponderance of the evidence that claim 1 and 7
are unpatentable under 35 U.S.C. § 103 as obvious over Walker and
Bhadkamkar.
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G. Obviousness of Claim 2 over Walker, Bhadkamkar, and
Iggulden – Ground 4
Petitioner argues that claim 2 is unpatentable under 35 U.S.C. § 103
as obvious over Walker, Bhadkamkar, and Iggulden. Pet. 3. To support its
contentions, Petitioner provides explanations as to how the prior art
allegedly discloses each claim limitation. Id. at 59–64.
Iggulden is summarized below.
1. Iggulden (Ex. 1013)
Iggulden (Ex. 1013) “relates to the field of video recording and
playback systems, and particularly to a method and apparatus for selectively
omitting certain program content during playback of a recorded video
signal.” Ex. 1013, 1:14–17. Iggulden discloses skipping over commercials.
For example, Iggulden discloses that a user of its process and system “can
press [a] SKIP button, which causes device 10/10' to immediately generate a
blue video screen, mute the audio, and forward scan to the start of the next
program segment, thereby skipping over the current or next commercial
group” and that “[t]he skipping process will automatically stop at the end of
the next commercial group.” Ex. 1013, 11:13–22, Abstract.
2. Motivation to Combine
Petitioner contends that “[t]o the extent Walker and Bhadkamkar do
not explicitly disclose that the presentation rates include a rate which causes
a portion to be skipped, it would have been obvious in view of Iggulden to
configure the combined Walker-Bhadkamkar process (discussed above for
claim 1) to implement this feature.” Pet. 60.
Petitioner relies on the Ottesen reference to show knowledge of one of
ordinary skill in the art regarding a motivation to skip content in educational
materials. Petitioner contends, however, “Petitioner is citing Ottesen (Ex.
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1008) only to demonstrate knowledge of a POSITA, and does not rely on
Ottesen as a reference in this ground.” Pet. 62, n. 5 (emphasis omitted).
Specifically, Petitioner contends:
Ottesen describes presenting program material such as
“instructional videos, or other viewing material” to a viewer
(person viewing the program material) (Ex. 1008, 3:59-61),
similar to Walker’s “presentation of text for improved human
reading” (Ex. 1006, Abstract). (See also Ex. 1006, 1:5-7; Ex.
1002, ¶148.)[5]
Ottesen discusses “editing in terms of discarding segments
containing objectionable material,” where “objectionable
material can include . . . subject matter too difficult and/or too
easy for a student’s skill level (e.g., outside of the viewer’s skill
level); subject matter outside of the student’s area of study;
completed segments in a course of study; [and] skill levels
outside of a user’s skill level.” (Ex. 1008, 4:1-7, 4:16-17.)
Ottesen’s “discarding of one or more segments can be
accomplished by editing them out, skipping them during
playback, deleting them, . . . or by using some other technique
to ensure that they are not presented to the viewer.” (Id., 4:17-22
(emphasis added).) Thus, Ottesen demonstrates that skipping
content during playback, like in Iggulden, was known in the
educational context, like in Walker, and thus shows that there
was motivation to combine the teachings of these references as
described above. (Ex. 1002, ¶148.)
Pet. 62–63. Petitioner further contends that the combination would be
“useful and desirable” because the concept was “known and useful,” the
combined system would be more “user[ ]friendly,” and straightforward to
implement and a mere combination of known elements and technologies,
according to known methods, to achieve predictable results. Pet. 63.
Petitioner’s citation to Ottesen shows that skipping content was known as
useful in an educational context such as Walker.
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Patent Owner argues that Petitioner has not shown sufficient
motivation to combine Walker, Bhadkamkar, and Iggulden. PO Resp. 65–
69. We disagree. On the present record, Petitioner articulates sufficient
reasons for combining the teachings of Walker, Bhadkamkar, and Iggulden.
Pet. 59–64.
Patent Owner argues, regardless of Ottesen, a person of ordinary skill
in the art “considering Walker would have recognized that skipping,
omitting, or otherwise removing text would undermine this stated objective
of Walker, because it would alter ‘the literal meaning of the text’ and reduce
comprehension.” PO Resp. 66. Patent Owner relies on citations to Walker
that emphasize “completeness” of a presentation. Id. (citing Ex. 1006, 2:59–
64; 3:56–6). Patent Owner contrasts this objective (as well as Bhadkamkar’s
objective explained below) with Iggulden’s objective and argues they are
incompatible. Id. at 67. For example, Patent Owner argues “neither Walker
or Bhadkamkar is applicable to the issues addressed by Iggulden, which
involved shortcomings of existing VCR commercial-skipping systems, such
as misclassification of non-commercial content as commercials, loss of non-
commercial content due to technical disadvantages of those systems, and
physical wear-and-tear on the videocassettes themselves. See, e.g., EX1013,
1:56-65, 2:8-14, 2:29-36; see also EX2016, ¶156.” Id.
The motivation to combine references need not be explicit. Motorola
v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997) (“[T]here
is no requirement that the prior art contain an express suggestion to combine
known elements to achieve the claimed invention.”). It is not correct, as
Patent Owner suggests, “that a person of ordinary skill attempting to solve a
problem will be led only to those elements of prior art designed to solve the
same problem.” KSR, 550 U.S. at 1742. To the contrary, the Court in KSR
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explained, “familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle. . . . A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. An ordinarily skilled artisan may be motivated to pursue
the desirable properties taught by one prior art reference even if that means
foregoing the benefits taught by another prior art reference. See In re
Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see also Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.”).
The suggestion in Ottesen to use skipping in educational materials
such as Walker is reasonable even though Walker and Iggulden may have
different purposes. Thus, we are not persuaded by Patent Owner’s
argument.
Patent Owner also argues:
[N]either Walker or Bhadkamkar is applicable to the issues
addressed by Iggulden, which involved shortcomings of existing
VCR commercial-skipping systems, such as misclassification of
non-commercial content as commercials, loss of non-
commercial content due to technical disadvantages of those
systems, and physical wear-and-tear on the videocassettes
themselves. See, e.g., EX1013, 1:56-65, 2:8-14, 2:29-36; see also
EX2016, ¶156.
Further, a POSITA would have recognized that Iggulden’s
VCR-based commercial skipping could negatively impact the
synchronization issues sought to be solved by Bhadkamkar.
Petitioner does not address these incompatibilities or explain
why a POSITA would nonetheless have been motivated to make
its alleged combination.

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PO Resp. 67. In other words, Patent Owner argues that the technical
differences between the implementation of a commercial skipping VCR
system and a system for synchronizing audio and video would weigh against
finding a motivation to combine. Id. We disagree. “The test for
obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference.”
Facebook, Inc., 973 F.3d at 1343 (citations omitted). Additionally, the
claims do not recite limitations specific to VCRs or other media that would
suggest concepts from various media could not be combined.
For example, Patent Owner argues “a POSITA would have recognized
that these skips could result in misalignment or loss of synchronization—
exacerbating the problems Bhadkamkar was trying to solve.” PO Resp. 67.
However, Bhadkamkar is used by Petitioner for the limitations of
“associating aptitude with [] presentation rates” and “inferring the reader’s
aptitude” not for a specific showing of how to align or synchronize audio.
Pet. 41. Thus, we are not persuaded by this argument.
Patent Owner also argues, despite the Petitioner’s reliance on Ottesen,
“Petitioner does not address the inconsistencies between the references
discussed above, and therefore does not provide the Board with sufficient
evidence to demonstrate that a POSITA would have incorporated skipping
or omitting content into Walker, despite Walker’s express teachings to the
contrary.” PO Resp. 67–68. For the same reasons above, we are not
persuaded by this argument.
Thus, for the reasons above, on the current record, we are persuaded
by Petitioner’s arguments regarding the motivation to combine Walker,
Bhadkamkar and Iggulden.
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3. Analysis of Claim 2
a) “The method of claim 1 wherein the presentation
rates include a rate which causes a portion to be
skipped”
Petitioner contends Walker teaches “presenting the media work to an
audience,” as recited in claim 2. Petitioner contends “Walker further
discloses taking into account ‘phrase difficulty’ (Ex. 1006, 12:30) and
‘educational level’ of sentences (Id., 7:45, 10:28, FIG. 2 []) when presenting
text, and thus discloses or at least suggests skipping sentences that are too
difficult for the reader or that are not matched to the reader in terms of
educational level. (Ex. 1002, ¶ 144.).” Pet. 59.
Petitioner also relies on Iggulden to teach a rate in which content is
skipped. Iggulden discloses skipping over commercials when playing back
video content. Pet. 61 (citing Ex. 1013, 1:14–17).
Patent Owner argues, under its construction of presentation rate as
preserving pitch and media work as limited to audio works, that Walker
cannot meet those limitations and Iggulden does not make up for this
deficiency. Given our construction, we are not persuaded by these
arguments that are not commensurate with the proper scope of the claims.
4. Summary for Ground 4
Having reviewed the record, we determine that the information
presented establishes by a preponderance of the evidence that claim 2 is
unpatentable under 35 U.S.C. § 103 as obvious over Walker, Bhadkamkar,
and Iggulden.
H. Anticipation of Claim 8 by Ottesen – Ground 5
Petitioner contends that claim 8 is unpatentable under 35 U.S.C.
§ 102(a) as anticipated by Ottesen. Pet. 3. To support its contentions,
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Petitioner provides explanations as to how the prior art allegedly discloses
each claim limitation. Id. at 64–74. Ottesen is summarized below.
1. Ottesen (Ex. 1008)
Ottesen discloses a method of presenting program material, such as
“movies, video programs, video games, instructional videos, or other
viewing material,” and of editing undesirable segments. Ex. 1008, Abstract,
3:17–19, 3:28–32, 3:59–61; 8:5–6, Fig. 5.
2. Analysis of Claim 8
a) “A method of presenting a media work which
comprises”
Patent Owner does not argue that the preamble is limiting. For the
purpose of this decision, we do not need to decide whether the preamble is
limiting because Petitioner recognizes that the preamble may be limiting by
presenting sufficient evidence that Ottesen discloses the preamble. Pet. 64–
65.
b) “detecting media work content properties in a
portion of the media work”
Petitioner establishes sufficiently by a preponderance of the evidence
that Ottesen discloses “detecting media work content properties in a portion
of the media work,” as recited in claim 8. Pet. 65–70 (citing Ex. 1002 ¶¶
152–159; Ex. 1008, Abstract, 3:33–36, 3:42–51, 3:62–67, 4:16–22, 5:45–
46, 5:23–28; 5:29–46, 5:61–65, 6:6–15, 7:20–22, 7:56–65, Figs. 3, 4, 5).
c) “associating a presentation rate of the portion
with the detected media work content properties;”
Petitioner establishes sufficiently by a preponderance of the evidence
that Ottesen discloses “associating a presentation rate of the portion with the
detected media work content properties,” as recited in claim 8. Pet. 70–73
(citing Ex. 1002 ¶¶ 160–163; Ex. 1008, Abstract, 2:25–36, 4:16–19, 6:58–
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7:4, 8:5–6, 8:8–9, Figs. 3, 5). For example, Petitioner relies on “Ottesen’s
process us[ing] the detected ratings to make a binary decision of whether
or not to play a given segment.” Pet. 72–73 (citing Ex. 1008, Abstract,
2:25–36, 8:8–9, Fig. 5). Thus, Petitioner reads “presentation rate” on a
presentation with material skipped that is faster than a presentation
without skipping.11 As explained above, this is consistent with claim 2
and an associated portion of the Specification specifically recites wherein
the presentation rates include “a rate which causes a portion to be skipped.”
Ex. 1001, 33:30–35 (“In this embodiment of the present invention, a PR
(TSM rate) of ‘infinity’ (or some other indicium that will be similarly
translated) directs the presentation (playback) system to skip sections of an
MW (an audio or audio-visual work) whose concept has a corresponding PR
(TSM rate) of infinity”); 70:55–56.
Patent Owner argues, under its construction of presentation rate that
requires preserving pitch, Ottesen cannot meet those limitations. PO Resp.
41–42. Given our construction, we are not persuaded by these arguments
that are not commensurate with the proper scope of the claims.
Nevertheless, Patent Owner also makes arguments that are relevant
under our construction of presentation rate as “the speed at which media is
played back.” Patent Owner argues that material that is skipped in Ottesen
is played at a normal rate thus, the rate remains the same whether or not
material is skipped. PO Resp. 44–45. Patent Owner argues that this is
consistent with the limitation in claim 2 of “wherein the presentation rates

11 Petitioner also relies on Patent Owner’s statements in a chart in the
District Court record. See Pet. 73. We do not rely on such statements.
Thus, Patent Owner’s arguments that such reliance would be improper are
moot. PO Resp. 43.
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include a rate which causes a portion to be skipped.” Id. at 45. According to
Patent Owner, the Specification treats skipping and increasing speed as
distinct, i.e. “This embodiment operates under the assumption that material
familiar to the candidate would preferably be presented at an increased PR,
or skipped.” Id. at 45–46 (citing Ex. 1001, 61:29–32).
We disagree. This argument rests on excluding a preferred
embodiment from the claims, which is disfavored. On–Line Techs. v.
Bodenseewerk Perkin–Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004)
(a construction that “excludes a preferred embodiment . . . ‘is rarely, if ever,
correct’”). Claim 2 explicitly recites that skipping is a “rate,” so any
construction that would exclude skipping would necessarily be incorrect.
Additionally, as explained above, the Specification also recites that skipping
is a “presentation rate,” i.e. a rate “of infinity.” Ex. 1001, 33:30–35. For
those reasons, we are not persuaded by Patent Owner’s argument.
d) “presenting the portion at the presentation rate”
Petitioner establishes sufficiently by a preponderance of the evidence
that Ottesen discloses “presenting the portion at the presentation rate,” as
recited in claim 8. Pet. 73 (citing Ex. 1002 ¶ 164; Ex. 1008, 2:25–36, 8:8–9,
Fig. 5).
e) “wherein the presentation rates provide a
substantially uniform rate of content presentation”
Petitioner establishes sufficiently by a preponderance of the evidence
that Ottesen discloses “wherein the presentation rates provide a substantially
uniform rate of content presentation,” as recited in claim 8. Pet. 74 (citing
Ex. 1002 ¶ 165; Ex. 1008, 2:25–36, 8:8–9, Fig. 5).
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3. Summary for Ground 5
Having reviewed the record, we determine that the information
presented establishes by a preponderance of the evidence that claim 8 is
unpatentable under 35 U.S.C. § 102(a) as anticipated by Ottesen.
III. CONCLUSION
For the foregoing reasons, we determine Petitioner has established by
a preponderance of the evidence the unpatentability of claims 1–4, and 7–9
of the ’433 patent.12
IV. ORDER
Accordingly, it is
ORDERED that claims 1–4, 7–9 of U.S. Patent No. 7,043,433 B2 are
unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.
In summary:
Claim(s) 35 U.S.C. §
Reference(s)/
Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
3, 4, 9 103(a) Rochkind 3, 4, 9
9 103(a) Mauldin, Bhadkamkar Moot Moot

12 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).
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Patent 7,043,433 B2
53
Claim(s) 35 U.S.C. §
Reference(s)/
Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1, 7 103(a) Walker, Bhadkamkar 1, 7

2
103(a) Walker,
Bhadkamkar,
Iggulden
2

8 103(a) Ottesen 8
Overall
Outcome
1–4, 7–9

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Patent 7,043,433 B2
54
PETITIONER:
Naveen Modi
Joseph Palys
Daniel Zeilberger
Arvind Jairam
Jason Heidemann
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
danielzeilberger@paulhastings.com
arvindjairam@paulhastings.com
jasonheidemann@paulhastings.com

PATENT OWNER:

Lauren Robinson
Christina Finn
BUNSOW DE MORY LLP
Irobinson@bdiplaw.com
crinn@bdiplaw.com