Petition for Inter Partes Review of U.S. Patent No....

Petition for Inter Partes Review of U.S. Patent No. 6,199,076

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In the Inter Partes Review of: Trial Number:

U.S. Patent No. 6,199,076 Panel: To Be Assigned

Filed: Oct. 2, 1996

Issued: Mar. 6, 2001

Inventor(s): Logan et al.

Assignee: Personal Audio LLC

Title: Audio Program Player Including a Dynamic Program Selection Controller

Mail Stop Inter Partes Review Commissioners for Patents P.O. Box 1450 Alexandria, VA 22313-1450

PETITION FOR INTER PARTES REVIEW UNDER

35 U.S.C. § 311 AND 37 C.F.R. § 42.100


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TABLE OF CONTENTS

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ......................... 1

A. 37 C.F.R. § 42.8(b)(1): Real Party-In-Interest .............................................. 1

B. 37 C.F.R. § 42.8(b)(2): Related Matters ....................................................... 1

C. 37 C.F.R. § 42.8(b)(3) and (4): Counsel and Service Information ............... 1

D. Payment of Fees – 37 C.F.R. § 42.103 .......................................................... 2

II. SUMMARY OF THE ’076 PATENT .............................................................. 2

A. Brief Description of the Alleged Invention of the ’076 Patent ..................... 2

B. Summary of the Prosecution History of the ’076 Patent .............................. 2

C. Summary of Litigation History ..................................................................... 4

D. IPR Proceeding (IPR2015-00494) ................................................................ 4

III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ........................... 5

A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 5

B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief

Requested ................................................................................................................ 5

1. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested ................... 5

2. 37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Ground(s) on

Which the Challenge Is Based ............................................................................. 5

3. Claim Construction 37 C.F.R. § 42.104(b)(3) .............................................. 6

IV. THERE IS A REASONABLE LIKELIHOOD THAT ONE OR MORE

CLAIMS OF THE ’076 PATENT IS UNPATENTABLE UNDER 37 C.F.R. §

42.104(b)(4) and (5). ...............................................................................................23

A. Person Of Ordinary Skill in the Art (POSITA) ...........................................23

B. Summary of Prior Art ..................................................................................23

1. U.S. Patent Application Pub. No. 2002/0177914 to Tim Chase (“Chase”) 23

2. Loeb, S., “Architecting Personalized Delivery of Multimedia Information",

Communications of the ACM, December 1992, Vol. 35, No. 12 ("Loeb”) ......27

3. U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”) .................28

C. Ground 1 – Claims 1 and 4-6 are obvious under 35 U.S.C. 103(a) over

Chase in view of Loeb ..........................................................................................28

1. Claim 1 ........................................................................................................29

2. Claim 4 ........................................................................................................42


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3. Claim 5 ........................................................................................................43

4. Claim 6 ........................................................................................................43

D. Ground 2 – Claims 2-3 and 14-15 Are Obvious Under 35 U.S.C. 103(a)

over Chase in view of Loeb in view of Inazawa ..................................................44

1. Claim 2 ........................................................................................................44

2. Claim 3 ........................................................................................................51

3. Claim 14 ......................................................................................................56

4. Claim 15 ......................................................................................................59

V. RELIEF REQUESTED ...................................................................................60


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EXHIBIT LIST

Exh. No. Description

1001 U.S. Patent No. 6,199,076 to Logan, et al. (“’076 Patent”).

1002 Declaration of Martin Walker.

1003 Publicly Available File History of U.S. Patent No. 6,199,076 (“’076 File

History”)

1004 U.S. Unpublished Patent Application No. 08/705,797 to Tim Chase (“Chase

Parent”)

1005 U.S. Patent Application Publication No. 2002/0177914 to Tim Chase

(“Chase”)

1006 U.S. Provisional Patent Application No. 60/003,164 to Tim Chase (“Chase

Provisional”)

1007 U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”)

1008 Loeb, S., "Architecting Personalized Delivery of Multimedia Information",

Communications of the ACM, December 1992, Vol. 35, No. 12 ("Loeb”)

1009 Order Construing Claim Terms of United States Patent Nos. 6,199,076 and

7,509,178, Personal Audio, LLC v. Apple, Inc. et al, case 9:09-cv-00111-

RC, Eastern District of Texas, Document 258, filed 12/21/10.


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1010 Order Denying Defendant’s Motion for Summary Judgment of

Indefiniteness, Personal Audio, LLC v. Apple, Inc. et al, case 9:09-cv-

00111-RC, Eastern District of Texas, Document 292, filed 1/31/11.

1011 Order Granting in Part and Denying in Part Plaintiff’s Motion for

Reconsideration of Order Denying Defendant’s Motion for Summary

Judgment of Indefiniteness, Personal Audio, LLC v. Apple, Inc. et al, case

9:09-cv-00111-RC, Eastern District of Texas, Document 358, filed 5/18/11.

1012 Order Re: Apple’s Motions for JMOL, Personal Audio, LLC v. Apple, Inc.

et al, case 9:09-cv-00111-RC, Eastern District of Texas, Document 512,

filed 8/19/11.

1013 Ron Person, Special Edition, Using Windows 95, QUE, 1995 (“Person”).

1014 Publicly Available File History of Reexamination Control No. 90/011,579

1015 Appendices A-E to U.S. Provisional Patent Application No. 60/003,164 to

Tim Chase (“Chase Software Appendices”)

1016 Exhibit A to Joint Claim Construction and Prehearing Statement, Personal

Audio, LLC v. Acer America, et al., Case No. 1:14-cv-8-RC, Eastern

District of Texas, Document 192, filed 2/13/15.

1017 Publicly Available File History of Reexamination Control No. 95/001,295

of U.S. Patent No. 7,509,178.


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Lenovo (United States) Inc., Lenovo Holding Company, Inc., Lenovo Group

Ltd., Google Inc., and Barnes & Noble, Inc., (collectively referred hereinafter as

“Petitioner”), respectfully request Inter Partes review ("IPR") of claims 1-6 and

14-15 of U.S. Patent No. 6,199,076 ("the ’076 Patent") pursuant to 35 U.S.C. § 311

and 37 C.F.R. § 42.100.

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)

A. 37 C.F.R. § 42.8(b)(1): Real Party-In-Interest

Real parties-in-interest for Petitioner are Lenovo (United States) Inc.,

Lenovo Holding Company, Inc., Lenovo Group Ltd., Google Inc., and Barnes &

Noble, Inc.

B. 37 C.F.R. § 42.8(b)(2): Related Matters

Patent Owner, Personal Audio LLC (“Personal Audio”), has asserted the

’076 Patent in Personal Audio v. Acer America, et al., Case No. 1:14-cv-8-RC and

Personal Audio LLC v. Fuhu, Inc., Case No. 1:13-cv-513-RC, both in the United

States District Court for the Eastern District of Texas. These cases may affect, or

be affected by, a decision in this proceeding. The ’076 Patent is currently subject to

another IPR proceeding (IPR2015-00494) that may affect, or be affected by, a

decision in this proceeding (Petitioner is not a real party-in-interest or privy with

respect to this other IPR proceeding).

C. 37 C.F.R. § 42.8(b)(3) and (4): Counsel and Service Information


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Petitioner designates Daniel M. De Vos, Reg. No. 37,813, as Lead Counsel,

and Matthew N. Nicholson, Reg. No. 62,889 as Backup Counsel, both available at

1279 Oakmead Parkway, Sunnyvale, CA 94085 (T: 408-720-8300; F: 408-720-

8383), or electronically by email at [email protected].

D. Payment of Fees – 37 C.F.R. § 42.103

The undersigned authorizes Deposit Account No. 022666 be charged: 1) the

$23,000 fee set forth in 37 C.F.R. § 42.15(a) for this Petition for IPR that requests

review of eight (8) claims ($9,000 for the IPR Request fee and $14,000 for the IPR

Post Institution fee); and 2) any additional fees that may be due with this Petition.

II. SUMMARY OF THE ’076 PATENT

A. Brief Description of the Alleged Invention of the ’076 Patent

The ’076 Patent is directed to an audio program player that will play a

sequence of audio program segments or files and accept commands from the user

to skip forward or backward in the sequence. An “audio player device” (which

may be a computer that includes a CPU, display, mouse, keyboard, etc.) connects

to a server to download “audio program segments.” A “sequencing file” defines

the sequence of the audio program segments (the order in which the segments will

be played or what segment comes next when the user issues a command to skip

forward or backward in the sequence).

B. Summary of the Prosecution History of the ’076 Patent


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The application leading to the ’076 Patent was filed on 10/2/96. A final

rejection in view of US Patents 5,153,759 and 5,810,600 was issued on 1/4/01. In

response, the Patent Owner filed an appeal brief arguing that while the references

disclosed program segments, they did not disclose a separate file of data for

establishing the scheduled playback sequence or skipping to the beginning of the

next program segment in the sequence. Ex. 1003 at 26-34. This argument was

apparently persuasive as the reasons for allowance states that the prior art of record

failed to teach, suggest, or render obvious “‘receiving and storing a file of data

establishing a sequence in which said program segments are scheduled …

continuously reproducing said program segments in the order established…’

coupled with ‘a first command indicative of a request to skip…discontinuing the

reproduction of the currently playing program segment and instead continuing the

reproduction at the beginning…’” Ex. 1003 at 25.

An ex parte reexamination of claims 1-3 and 14-15 of the ’076 patent was

instituted (Control No. 90/011,579, Exhibit 1014) in conjunction with a previous

litigation (the “Apple litigation”). Subsequent to the ex parte reexam filing, the

claims were construed by the court in the Apple litigation including several

“means-plus-function” limitations. The reexam examiners adopted the court’s

claim construction and as a result confirmed the claims because they found the


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cited art lacked equivalent structure for the “specific algorithm steps” of the ’076

Patent. Ex. 1014 at 8-18 and 134-143.

An inter partes reexamination of a related patent (7,509,178) was also

instituted (Control No. 95/001,295, Exhibit 1017) in conjunction with the Apple

litigation. All claims remained rejected through the Action Closing Prosecution

(3/7/2011) (Ex. 1017 at 2104-2161) and the Right of Appeal Notice (10/5/2011)

(Ex. 1017 at 314-358). The inter partes reexamination was subsequently

terminated under 35 U.S.C. 317(b) on 2/22/12 (Ex. 1017 at 1-6) responsive to the

Apple litigation’s dismissal (detailed below), even though the PTO was rejecting

all claims.

C. Summary of Litigation History

The ’076 Patent has been asserted multiple times in the District Court for the

Eastern District of Texas, including Personal Audio, LLC v. Apple Inc. et al., Civil

Action No. 9:09-CV-111 on 6/25/2009 (the Apple litigation). Apple asserted that

various claims of the ’076 were invalid, and on 7/8/2011 the jury rejected Apple’s

invalidity arguments. Apple filed for appeal on 10/20/2011, but then jointly filed a

notice to dismiss (12/27/2011) due to settlement which was granted (1/5/2012).

D. IPR Proceeding (IPR2015-00494)

An IPR petition challenging claims 1-17 of the ’076 Patent was filed by

Microsoft Corp. on December 24, 2014 (IPR2015-00494). Petitioner is not a real


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party-in-interest or privy with respect to that proceeding. The grounds raised in this

request are not redundant to the grounds raised in IPR2015-00494.

III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104

A. Grounds for Standing Under 37 C.F.R. § 42.104(a)

Petitioner hereby certifies that the ’076 Patent is available for IPR and the

Petitioner is not barred or estopped from requesting IPR of claims 1-6 and 14-15

on the grounds identified herein. Petitioner does not own the ’076 Patent, has not

previously initiated a civil action challenging the validity of any claims of the ’076

Patent, and is submitting this petition less than one year after Petitioner was first

served with a complaint alleging infringement of the ’076 Patent. The estoppel

provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR.

B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief

Requested

1. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested

Petitioner requests IPR of claims 1-6 and 14-15 of the ’076 Patent.

2. 37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Ground(s) on

Which the Challenge Is Based

IPR of claims 1-6 and 14-15 on the grounds set forth in the table below:

Ground Proposed Statutory Rejections for the ’076 Patent

1 Claims 1 and 4-6 are obvious under 35 U.S.C. 103(a) over Chase in

view of Loeb.


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2 Claims 2-3 and 14-15 are obvious under 35 U.S.C. 103(a) over Chase

in view of Loeb and further in view of Inazawa.

3. Claim Construction 37 C.F.R. § 42.104(b)(3)

In an IPR, claim terms in an unexpired patent are given their broadest

reasonable construction in light of the specification of the patent in which they

appear. 37 C.F.R. § 42.100(b). However, since courts use the narrower

construction standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)

and several claim terms were construed under that standard during the Apple

litigation, out of an abundance of caution the Petitioner is showing that the prior art

teaches the narrower claim construction adopted in the Apple litigation. Although

Petitioner is proposing the same construction of these terms as construed in the

Apple litigation, Petitioner understands that the district court may construe the

terms differently in the co-pending litigation.

The claim construction from the Apple litigation is spread across four

documents (cited as Exhibits 1009, 1010, 1011, and 1012 to the instant petition).

Exhibit 1012 includes a summary of the claim construction. Exhibit 1011 includes

changes to previous claim constructions shown via strikethrough and underline.

Any terms not included in this section are given their broadest reasonable

interpretation (BRI). The claim constructions below are made only for the


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purposes of this IPR, and Petitioner reserves the right to present different

constructions in the related litigation.

a) “player” (claims 1-4)

The BRI of “player” is “a device that reproduces sound from digital audio

content.” Ex. 1009 at 9-16; see also Ex. 1001 at 4:28-35, 7:41-44, and 7:61-63.

The BRI of “player” includes a desktop or laptop computer, a personal device for

an individual listener, and can be used by a radio DJ since the specification

describes several different possibilities for the player such as “‘a conventional

laptop or desktop personal computer’,” “‘numerous other information storage,

processing and communications schemes may be substituted for the preferred

Internet server and PC client player architecture shown in FIG. 1’,” “ ‘notebook

computers and PDAs’,” and “‘portable computers of the type which may be used

in a car or on public transportation.’” Ex. 1009 at 9-16 citing the ’076 Patent (Ex.

1001) at 4:28-35, 7:41-44, 7:49-57, and 7:61-63. In fact, the district court found in

the Apple litigation that there is no place identified in the specification or

prosecution history where the inventors “explicitly limited their invention to use by

a single listener or expressly disclaimed the use of their invention by a radio DJ.”

Ex. 1009 at 16.

b) “file of data establishing a sequence” (claims 1 and 14)


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The BRI of the term “file of data establishing a sequence” is “a file of data

that identifies the order in which audio program segments are to be played and that

may contain information about the sequence of events that occur during playback.”

Ex. 1009 at 18-20, which quotes the ’076 patent (Ex. 1001) at 8:39-41, 8:54-55,

and 12:7-10.

c) “selected audio program segments” (claim 1)

The BRI of the term “selected audio program segments” is “audio program

segments that have been chosen by or for a user.” Ex. 1009 at 42-44 and 48, citing

the ’076 Patent (Ex. 1001) at 6:41-48, 6:61-68, 8:20-23, 8:39-44, 8:50-51, 9:12-15,

9:31-33, and 18:21-28.

d) “means for storing…” (claim 1)

Claim 1 recites “means for storing a plurality of program segments, each of

said program segments having a beginning and an end,” which should be

construed under § 112, ¶ 6. The function is “storing a plurality of program

segments.” Ex. 1009 at 48-49. The structure corresponding to the “storing”

function can be the following and equivalents thereof: (1) “A data storage system

consisting of both high speed RAM storage and a persistent mass storage device,

such as a magnetic disk memory; or [2] A replaceable media, such as an optical

disk cartridge.” Ex. 1009 at 49-51, citing the ’076 Patent (Ex. 1001) at 4:36-38 and

7:63-65).


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e) “means for receiving and storing …” (claim 1)

Claim 1 recites “means for receiving and storing a file of data establishing a

sequence,” which should be construed under § 112, ¶ 6. The function is “receiving

and storing a file of data establishing a sequence.” Ex. 1009 at 22-23.

The structure for the “receiving” function can be the following structures

and equivalents thereof:

1. A conventional high speed data modem and modem dial up

driver software for connecting via conventional dial up

telephone SLIP or PPP TCP/IP series data communication

link to an Internet service provider which provides access

to the Internet; [Ex. 1001 at 5:35-36, 5:40-48, cited by Ex.

1009 at 25]

2. An ISDN or cable modern link for connecting to an Internet

service provider which provides access to the Internet; [Ex.

1001 at 10:4-5, cited by Ex. 1009 at 25]

3. Cellular radio, cellular phone, or satellite links; [Ex. 1001

at 7:44-47, cited by Ex. 1009 at 25]

4. A radio or infrared link for connecting to a local

communications server computer linked to the Internet;

[Ex. 1001 at 7:50-52, cited by Ex. 1009 at 25]

5. A place in which a replaceable media, such as an optical

disk cartridge, may be inserted into the player; or [Ex. 1001

at 7:63-66, cited by Ex. 1009 at 25]

6. A direct link implemented using the Cellular Digital Packet

Data (CDPD) service for providing access to the Internet


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using the TCP/IP protocol. [Ex. 1001 at 7:67-8:2, cited by

Ex. 1009 at 25]

Ex. 1009 at 25-28, and 30.

The structure for the “storing” function can be the following corresponding

structures and equivalents thereof:

1. A data storage system consisting of both high speed RAM

storage and a persistent mass storage device, such as a

magnetic disk memory; or [Ex. 1001 at 4:36-38, cited by

Ex. 1009 at 28]

2. A replaceable media, such as an optical disk cartridge. [Ex.

1001 at 7:63-65, cited by Ex. 1009 at 28]

Ex. 1009 at 28-30.

f) “means for accepting…” (claim 1) and “input means for

accepting…” (claim 14)

Claim 1 recites “means for accepting control commands from a user of said

player” and claim 14 recites “input means for accepting control commands from a

user,” which should both be construed under § 112, ¶ 6. The function for these

terms is “accepting control commands” or “accepting control commands from a

user.” Ex. 1010 at 8. The structure for the “accepting” function can be the

following and equivalents thereof:

1. A microphone, sound card, and conventional speech

recognition software; [Ex. 1001 at 4:42-44, cited by Ex.

1010 at 15]


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2. A keyboard; [Ex. 1001 at 13:49-51, cited by Ex. 1010 at

9]

3. A pointing device such as a mouse, trackball, or touch

pad; or [Ex. 1001 at 5:26-29 and 14:26-29, cited by Ex.

1010 at 9]

4. A hand controller connected by a infrared link to the

player computer. [Ex. 1001 at 14:27-29, cited by Ex. 1010

at 9]

Ex. 1010 at 8-16.

g) “means for continuously reproducing…” (claim 1)

Claim 1 recites “means for continuously reproducing said program segments

in the order established by said sequence in the absence of a control command,”

which should be construed under § 112, ¶ 6. The function of this term is

“continuously reproducing said program segments in the order established by said

sequence in the absence of a control command.” Ex. 1010 at 16. The corresponding

structure is the following structure and equivalents thereof:

A sound card that includes a digital to analog converter;

headphones or one or more speakers; and a general purpose

computer programmed to perform the algorithm that is illustrated

in the flow chart of Figure 3 at items 233, 235, 237, 239, and 261

and more fully described at column 12, line 16 to column 13, line

11 and column 34, line 28 to column 35, line 44.

Specifically, this algorithm includes the following steps:


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(1) beginning playback with the program segment

identified by the ProgramID contained in the

Selection_Record specified by the CurrentPlay variable;

(2) when the currently playing program segment

concludes, incrementing the CurrentPlay variable by one

and fetching and playing the program segment identified

by the ProgramID contained in the next Selection_Record

in the sequencing file;

(3) repeating step (2) until the last Selection_Record in

the sequencing file is reached, which resets the

CurrentPlay variable to "1" to begin the playing sequence

again with the first Selection_Record in the sequencing

file.

Ex. 1012 at 66-67. See also, Ex. 1010 at 16-22, modified by Ex.

1011 at 11-12.

h) “means for detecting a first command…” (claim 1)

Claim 1 recites “means for detecting a first command indicative of a request

to skip forward,” which should be construed under § 112, ¶ 6. The function of this

term is “detecting a first command indicative of a request to skip forward.” Ex.

1010 at 23. The corresponding structure is the following and equivalents thereof:

A general purpose computer programmed to perform the

algorithm that is illustrated in the flow chart of Figure 3 at items

261, 262, and 275. Specifically, this algorithm includes the

following steps:


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(1) determining whether input from the means for

accepting control commands is a command using an "if-

then-else" programming construct; and

(2) if the input is a command, using a "branch"

programming construct to select one of the player's

available commands, which include a "Skip" command, for

execution.

Ex. 1010 at 23-26.

i) “means responsive to said first command…”

Claim 1 recites “means responsive to said first command for discontinuing

the reproduction of the currently playing program segment and instead continuing

the reproduction at the beginning of a program segment which follows said

currently playing program in said sequence,” which should be construed under §

112, ¶ 6. The function of this term is “in response to a ‘Skip’ command,

discontinuing the reproduction of the currently playing program segment and

instead continuing the reproduction at the beginning of a program segment which

follows said currently playing program in said sequence.” Ex. 1010 at 30. The

corresponding structure is the following and equivalents thereof:



269 and 235 and more fully described at column 15, lines 21 to 25

and column 34, line 28 to column 35, line 48. Specifically, this

algorithm includes the following steps:


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(1) scanning forward in the sequencing file to locate the

next Selection_Record of the appropriate LocType;

(2) resetting the CurrentPlay variable to the record number

of that Selection_Record; and

(3) fetching and playing the program segment identified

by the ProgramID contained in the new Selection_Record.

Ex. 1010 at 28-31, modified by Ex. 1011 at 11-13.

j) “means for detecting a second command…” (claim 2)

Claim 2 recites “means for detecting a second command indicative of a

request to skip backward,” which should be construed under § 112, ¶ 6. The

function of this term is “detecting a second command indicative of a request to

skip backward.” Ex. 1010 at 23. The corresponding structure is the following and

equivalents thereof:



261, 262, and 278. Specifically, this algorithm includes the

following steps:

(1) determining whether input from the means for

accepting control commands is a command using an “if-

then-else” programming construct; and

(2) if the input is a command, using a “branch”

programming construct to select one of the player’s

available commands, which include a “Back” command,

for execution.


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Ex. 1010 at 23-26.

k) “means responsive to a single one of said second commands…”

(claim 2)

Claim 2 recites “means responsive to a single one of said second commands

for discontinuing the reproduction of the currently playing program segment and

instead continuing the reproduction at the beginning of said currently playing

program,” which should be construed under § 112, ¶ 6. The function for this term

is “in response to a single ‘Back’ command, discontinuing the reproduction of the

currently playing program segment and instead continuing the reproduction at the

beginning of said currently playing program.” Ex. 1010 at 27. The corresponding

structure is the following structure and equivalents thereof:



269 and 235 and more fully described at column 15, lines 49 to

59. Specifically, this algorithm includes the following steps:

(1) if the currently playing program segment has played for

a predetermined amount of time, resetting the playback

position to the beginning of the program segment; and

(2) playing the program segment from its beginning.

Ex. 1012 at 68-69. See also, Ex. 1010 at 28-31, modified by Ex.

1011 at 11 and 13.

l) “means responsive to the detection of two consecutive…”

(claim 3)


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Claim 3 recites “means responsive to the detection of two consecutive ones

of said second commands for discontinuing the reproduction of the currently

playing program segment and instead continuing the reproduction at the beginning

of a program segment which precedes the currently playing program segment,”

which should be construed under § 112, ¶ 6. The function for this term is “in

response to two consecutive ‘Back’ commands, discontinuing the reproduction of

the currently playing program segment and instead continuing the reproduction at

the beginning of a program segment which precedes the currently playing program

segment.” Ex. 1010 at 27. The corresponding structure is the following and

equivalents thereof:



269, 235, 261, 262, and 278 and more fully described at column

15, lines 49 to 59 and column 34, line 28 to column 35, line 53.


(1) in response to a first "Back" command, if the currently

playing program segment has played for a predetermined

amount of time, resetting the playback position to the

beginning of the program segment and playing the

program segment from its beginning;

(2) in response to a second "Back" command, if the

currently playing program segment has not yet played for

said predetermined amount of time, scanning backward in


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the sequencing file to locate the previous

Selection_Record of the appropriate LocType;





Ex. 1012 at 69. See also, Ex. 1010 at 28-32, modified by Ex. 1011

at 11 and 14.

m) “editing means for modifying said data…” (claim 5)

Claim 5 recites “editing means for modifying said data establishing said

sequence.” This term was not previously construed in the Apple litigation. In co-

pending litigation, Personal Audio has proposed the following construction: “A

player client programmed to: 1. Add a program segment; and/or 2. Delete a

program segment; and/or 3. Assign a new or different order to a given program

segment; and Update the order for the program segments in the serialized

sequence” and cites the ’076 Patent at 1:6-9; 1:64-2:3; 2:44-3:27; 5:47-59; 6:62-

9:38; 9:51-10:6; 10:44-54; 12:21-40; 17:5-14; 18:60-19:15; 30:39-54; Figs. 1 and

2, and Claims 5 and 6. Ex. 1016 at 22. Petitioner submits that there is not

corresponding structure provided in the ’076 Patent and thus this claim is invalid

under § 112. However, for the purposes of this IPR, if this element is found to meet

the requirements of § 112, ¶ 6, the function is “modifying said data establishing

said sequence” and the structure is “A player client programmed to: 1. Add a


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program segment; and/or 2. Delete a program segment; and/or 3. Assign a new or

different order to a given program segment; and Update the order for the program

segments in the serialized sequence.”

n) “means for reordering the sequence…” (claim 6)

Claim 6 recites “wherein said editing means includes means for reordering

the sequence established by said data.” This term was not previously construed in

the Apple litigation. In co-pending litigation, Personal Audio has proposed the

following construction: “A player client programmed to: 1. Assign a new or

different order to a given program segment; and 2. Update the order for the

program segments in the serialized sequence” and cites the ’076 Patent at 1:6-9;

1:64-2:3; 2:44-3:27; 5:47-59; 6:62-9:38; 9:51-10:6; 10:44-54; 12:21-40; 17:5-14;

18:60-19:15; 30:39-54; Figs. 1 and 2, and Claims 5 and 6. Ex. 1016 at 22-23.

Petitioner submits that there is not corresponding structure provided in the ’076

Patent and thus this claim is invalid under § 112. However, for the purposes of this

IPR, if this element is found to meet the requirements of § 112, ¶ 6, the function is

“reordering the sequence established by said data” and the structure is “A player

client programmed to: 1. Assign a new or different order to a given program

segment; and 2. Update the order for the program segments in the serialized

sequence.”

o) “output means…” (claim 14)


19

Claim 14 recites “output means for producing audible sounds in response to

analog audio signals,” which should be construed under § 112, ¶ 6. The function

for this term is “producing audible sounds in response to analog audio signals.” Ex.

1009 at 51. The corresponding structure “can be the following structures and

equivalents thereof: 1. One or more speakers; or 2. Headphones.” Ex. 1009 at 52.

See also, Ex. 1001 at 5:24-25.

p) “processing means for translating…” (claim 14)

Claim 14 recites “processing means for translating said digitally recorded

audio program segments into analog audio signals delivered to said output means

for reproducing said recorded program segments in a form audible to said user,”

which should be construed under § 112, ¶ 6. The function for this term is

“translating said digitally recorded audio program segments into analog audio

signals delivered to said output means for reproducing said recorded program

segments in a form audible to said user” and the corresponding structure is the

following structure and equivalents thereof: “A sound card that includes a digital to

analog converter and directs the converted analog audio signals to headphones or

one or more speakers.” Ex. 1010 at 34-35; see Ex. 1001 at 4:41-46; and 4:51-63.

q) “processing means responsive to a first one…” (claim 14)

Claim 14 recites “processing means responsive to a first one of said control

commands for discontinuing the translation of the currently playing program


20

segment and instead continuing the translation at the beginning of the next

program segment in said sequence,” which should be construed under § 112, ¶ 6.

The function for this term is “in response to a ‘Skip’ command, discontinuing the

translation of the currently playing program segment and instead continuing the

translation at the beginning of the next program segment in said sequence." Ex.

1010 at 27. The corresponding structure is the following structure and equivalents

thereof:



269 and 235 and more fully described at column 15, lines 21 to 25

and column 34, line 28 to column 35, line 48. Specifically, this

algorithm includes the following steps:

(1) scanning forward in the sequencing file to locate the

next Selection_Record of the appropriate LocType;





Ex. 1012 at 70-71. See also, Ex. 1010 at 28-30; and 32-33,

modified by Ex. 1011 at 11, 14-15.

r) “processing means responsive to a second one…” (claim 14)

Claim 14 recites “processing means responsive to a second one of said

control command for discontinuing the translation of the currently playing


21

program and instead continuing the translation at the beginning of said currently

playing program,” which should be construed under § 112, ¶ 6. The function for

this term is “in response to a 'Back' command, discontinuing the translation of the

currently playing program and instead continuing the translation at the beginning

of said currently playing program.” Ex. 1010 at 27. The corresponding structure

is:



269, and 235 and more fully described at column 15, lines 49 to

59. Specifically, this algorithm includes the following steps:

(1) if the currently playing program segment has played

for a predetermined amount of time, resetting the playback

position to the beginning of the program segment; and

(2) playing the program segment from its beginning.

Ex. 1012 at 71. See also, Ex. 1010 at 28-30 and 33, modified by

Ex. 1011 at 11 and 15.

s) “means responsive to two consecutive…” (claim 15)

Claim 15 recites “means responsive to two consecutive ones of said second

control commands for discontinuing the translation of the currently playing

program and instead continuing the translation at the beginning of a program

segment which precedes said currently playing program in said sequence,” which

should be construed under § 112, ¶ 6. The function for this term is “in response to


22

two consecutive ‘Back’ commands, discontinuing the translation of the currently

playing program and instead continuing the translation at the beginning of a

program segment which precedes said currently playing program in said

sequence.” Ex. 1010 at 28. The corresponding structure is:

The structure corresponding to the claimed function is the

following structure and equivalents thereof:



269, 235, 261, 262, and 278 and more fully described at column

15, lines 49 to 59 and column 34, line 28 to column 35, line 53.


(1) in response to a first "Back" command, if the currently

playing program segment has played for a predetermined

amount of time, resetting the playback position to the

beginning of the program segment and playing the program

segment from its beginning;

(2) in response to a second "Back" command, if the

currently playing program segment is near its beginning,

scanning backward in the sequencing file to locate the

previous Selection_Record of the appropriate LocType;



(4) fetching and playing the program segment identified by

the ProgramID contained in the new Selection_Record.


23

Ex. 1012 at 71-71. See also, Ex. 1010 at 28-30 and 33-34,

modified by Ex. 1011 at 11, 16.

IV. THERE IS A REASONABLE LIKELIHOOD THAT ONE OR MORE

CLAIMS OF THE ’076 PATENT IS UNPATENTABLE UNDER 37

C.F.R. § 42.104(b)(4) and (5).

A. Person Of Ordinary Skill in the Art (POSITA)

A POSITA is an individual with the equivalent of a four-year degree from an

accredited institution (usually denoted as a B.S. degree) in either computer science

or electrical engineering and approximately two to three years of programming

experience. Additional graduate education might substitute for experience, while

significant experience in the field of computer programming might substitute for

formal education. Ex. 1002, Walker Decl. at ¶ 16. A POSITA would have had

knowledge of the literature concerning audio player software and hardware such

as, for instance, the Windows 95 CD Player application featuring familiar play,

pause stop and track selection buttons that perform the same functions found in

standalone players. See e.g., Ex. 1013 at 1019-1022; Ex. 1002, Walker Decl. at ¶¶

16 and 25-27.

B. Summary of Prior Art

1. U.S. Patent Application Pub. No. 2002/0177914 to Tim Chase (“Chase”)

Chase (Ex. 1005) published on 11/28/2002. Chase is a continuation of U.S.

Unpublished Patent Application No. 08/705,797 to Tim Chase (“Chase Parent”)

filed 8/30/1996 (Ex. 1004) and claims priority to U.S. Provisional Patent


24

Application No. 60/003,164 to Tim Chase (“Chase Provisional”) filed 9/1/1995

(Ex. 1006), both of which are incorporated by reference in Chase. Apart from the

claims, the content of Chase and the Chase Parent are the same. Chase and the

Chase Parent also expressly incorporate by reference all software appendices filed

with the Chase Provisional application, including software appendices A-E entitled

“DAX Source,” “Driver Source,” “DAC DSP Source,” “Jock Box Terminal Source

Code,” and “DMS Source” respectively (“Chase Software Appendices”). Ex. 1005

at ¶¶ 0001-0002 and 0004; and Ex. 1004 at 3-4. Chase was not relied on during any

previous examination of the ’076 Patent and is not cumulative or redundant of any

previously presented prior art.

Chase, including the content of the Chase Software Appendices, is prior art

under 35 USC § 102(e) at least as of Chase Parent’s filing date of 8/30/1996.

Chase and the Chase Parent expressly incorporate by reference the Chase Software

Appendices (Ex. 1015), and therefore the content of the Chase Software

Appendices are effectively part of Chase. See Advanced Display Sys. v. Kent State

University, 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“[i]ncorporation by reference

provides a method for integrating material from various documents into a host

document – a patent or printed publication in an anticipation determination - by

citing such material in a manner that makes clear that the material is effectively

part of the host document as if it were explicitly contained therein”); Ultradent


25

Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997)

(“the rules of practice” permit “incorporation of prior art by reference”). In an

anticipation context under pre-AIA 102(b), the Federal Circuit recognized that

“invalidity by anticipation requires that the four corners of a single, prior art

document describe every element of the claimed invention” and “[m]aterial not

explicitly contained in the single, prior art document may still be considered for

purposes of anticipation if that material is incorporated by reference into the

document.” See Advanced Display Sys., Inc., 212 F.3d at 1282. Since pre-AIA

section 102(b) requires either a patent or a printed publication (both printed

documents), under the principle of Advanced Display, the material incorporated by

reference into the patent or printed publication is to be considered to be part of that

patent or printed publication. Thus, the content of the Chase Software Appendices

is “effectively part of [Chase and Chase Parent] as if it were explicitly contained

therein” and therefore is part of the publication of Chase. Moreover, the Chase

Software Appendices are printed documents, indexed by the Chase Provisional

application number, stored at the USPTO and are available to anyone in the public

upon request and payment of the fee set forth in 37 CFR § 1.19(a). Since the

content of the Chase Software Appendices is common to Chase, the Chase Parent

and the Chase Provisional (through the incorporation by reference in Chase and the

Chase Parent), Chase (including the content of the Chase Software Appendices) is


26

prior art under 35 USC § 102(e) at least as of Chase Parent’s filing date of

8/30/1996 (the Chase Software Appendices also qualify as of the Chase

Provisional filing date of 9/1/1995). See In re Giacomini, 612 F.3d 1380, 1384-85

(Fed. Cir. 2010) (patent applied in § 102(e)(2) rejection was prior art as of filing

date of corresponding provisional application for commonly disclosed subject

matter); Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008).

Chase (including the content of the Chase Software Appendices) also falls

within the purview of § 311(b) for the same reasons expressed above concerning

qualification under 102(e): a) the content of the Chase Software Appendices being

effectively part of the Chase printed publication as if it were explicitly contained

therein; and/or b) the Chase Software Appendices being printed documents,

indexed by the Chase Provisional application number (which is indexed by the

Chase Parent’s publication number which incorporates the Chase Provisional and

the Chase Software Appendices), stored at the USPTO, and are available to anyone

in the public upon request and payment of the fee set forth in 37 CFR 1.19(a).

Chase discloses a system for playback of audio files that includes an

affiliate terminal, which itself includes an affiliate controller that receives and

stores audio files (containing audio segments) and play list files among other data.

Ex. 1005 at ¶¶ 0040, 0042, and 0065-66. The play list identifies the order in which

the audio segments will be played without intervention. Ex. 1005 at ¶¶ 0201 and


27

0184. The affiliate terminal can include a remote control terminal with control

keys that enable a user to navigate playback of the audio files; this navigation

includes selecting a segment from the play list, starting and stopping playback,

starting playback of the next segment, and fast forwarding/rewinding through the

current segment or to a next/previous segment. Ex. 1005 at ¶¶ 0067, 0184-186,

and Fig. 5. Playback of the audio segments is sequentially based on the playlist

when there is no intervention through the remote control terminal. Ex. 1005 at ¶

0184. Chase discloses software code that continuously plays the segments in the

play list based on the order of segments in the play list. Ex. 1005 at ¶¶ 0001-0002

and 0004, incorporating by reference the Chase Software Appendices (Ex. 1015) at

pgs. 68, 143, 405, 415, 573-574, and 702-703. The disclosed software code

advances to the next or previous song on the playlist. Id.

2. Loeb, S., “Architecting Personalized Delivery of Multimedia

Information", Communications of the ACM, December 1992, Vol. 35,

No. 12 ("Loeb”)

Loeb (Ex. 1008) was published in December 1992 in the “Communications

of the ACM” magazine (volume 35, Issue 12) and therefore was made available to

the extent that a person of ordinary skill in the subject matter, exercising

reasonable diligence, could locate it, and is thus prior art to the ’076 Patent under

35 USC § 102(b). See Ex. 1002, Walker Decl. at ¶ 75. Loeb discloses a

“personalized music system” where audio programs are selected based on program


28

preference data or program selections from a listener such that the playback

session is personalized to the preferences of the listener. Ex. 1008 at pgs. 6-7. The

list of selected audio programs and the audio programs themselves are transmitted

across a network to the listener’s terminal. Ex. 1008 at Fig. 1; pg. 7 (top of left

column); and pg. 8 (left and middle column). The listener’s terminal includes a

user interface that allows listeners to control playback of the selected audio

programs including starting/stopping and skipping through the selected audio

programs. Ex. 1008 at Fig. 3; pg. 6-7 (starting at lower right column of pg. 6); and

pg. 9 (lower left column and upper middle column).

3. U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”)

Inazawa (Ex. 1007) issued 3/7/89 and is thus prior art under 35 U.S.C. §

102(b). Inazawa discloses a user interface on a disc player for skipping through

audio programs. The user interface includes a key (“program selecting key 11”) to

skip to the beginning of the currently playing audio program or to the beginning of

a preceding program based on when the key is manipulated. Ex. 1007 at 3:50-62,

4:38-5:2, and 6:30-7:31. Inazawa also discloses a key (“program selecting key

10”) to control skipping forward to the next audio program. Ex. 1007 at 3:42-49

and 5:6-54. Inazawa was not relied on during any previous examination of the ’076

Patent and is not cumulative or redundant of any previously presented prior art.

C. Ground 1 – Claims 1 and 4-6 are obvious under 35 U.S.C. 103(a) over

Chase in view of Loeb


29

Claims 1 and 4-6 are obvious over Chase in view of Loeb. Chase and Loeb

are analogous art to the ’076 Patent, each directed to audio players. Each reference

discloses “an audio program player which automatically plays a predetermined

schedule of audio program segments and which further includes simple controls”

(’076 Patent at 2:6-9) to allow the user to listen to audio segments and navigate

forward and backward within the schedule.

1. Claim 1

- [1-pre] “A player for reproducing selected audio program segments

comprising, in combination”

Petitioner does not believe that the preamble is limiting. Regardless, Chase

discloses an affiliate terminal that includes an affiliate controller that receives

audio files, play list files, and commands (Ex. 1005 at ¶¶ 0065-66 and 0040),

outputs audio signals that allow a user to listen to audio segments or audio

programs (Ex. 1005 at ¶ 0067), and includes the ability for a user to select desired

audio segments and programs for listening. Ex. 1005 at ¶ 0067. The affiliate

terminal includes the ability for a user to select desired audio segments and

programs for listening. Ex. 1005 at ¶ 0067. The affiliate terminal includes a remote

control terminal that includes control keys to enable a user to select a program

from a playlist, start and stop playback, start play of the next segment, fast

forward/rewind through the current segment or to a next/previous segment. Ex.

1005 at ¶¶ 0067, 0184-1086, and Fig. 5.


30

- [1a] “means for storing a plurality of program segments, each of

said program segments having a beginning and an end”

Chase discloses the affiliate terminal including a data storage system to store

incoming audio files (that contain program segments) such as a hard disk, memory,

and a frame buffer. Ex. 1005 at ¶¶ 0042, 0066, and 0071-73. Each audio segment

has a beginning and an end. Ex. 1005 at ¶ 0046: “Each cart file…also includes

beginning…and ending data frame numbers…into the corresponding audio file.

The beginning and ending data frame numbers identify the starting and ending

points of the corresponding audio segments.”

- [1b] “means for receiving and storing a file of data establishing a

sequence in which said program segments are scheduled to be

reproduced by said player”

Chase discloses an affiliate terminal having an antenna for receiving live

data packets, data files, and envelopes from a satellite. Ex. 1005 at ¶ 0065. The

envelope may include a play list. Ex. 1005 at ¶¶ 0023 and 0041. The play list

identifies the order in which the audio segments are to be played. Ex. 1005 at ¶

0201 (“Normally the Affiliate terminal will play sequences of audio under the

control of a play list. Play lists are ordered sequence of audio events”) and ¶ 0184

(“Generally… the playback of audio segments from within a program are

sequential based on the play list.”). The affiliate terminal stores incoming data that

includes the play list on a data storage system such as a hard disk, memory, and

data buffer. Ex. 1005 at ¶¶ 0066, 0071-73, and 0202.


31

- [1c] “means for accepting control commands from a user of said

player”

Chase discloses that the affiliate terminal’s remote control terminal includes

control keys to enable a user to select a program from a playlist, start and stop

playback, start play of the next segment, fast forward/rewind through the current

segment or to a next/previous segment. Ex. 1005 at ¶¶ 0067, 0184-1086, and Fig.

5. Petitioner considers the user of Chase (which may be a radio DJ) to meet this

limitation regarding a user because, as discussed above, the district court in the

Apple litigation found that there is no place identified in the ’076 Patent’s

specification or prosecution history where the inventors “explicitly limited their

invention to use by a single listener or expressly disclaimed the use of their

invention by a radio DJ.” Ex. 1009 at 16. However, out of an abundance of

caution concerning the claim term “user of said player,” Loeb teaches a

“personalized music system in which songs are played at a listener’s workstation,

using its built-in audio capability” and the “listener’s terminal must have audio and

graphics output capabilities.” Ex. 1008 at pgs. 6 and 9.

A POSITA would have been motivated to modify Chase’s affiliate

terminal/remote terminal to have features of the “listener’s workstation” of Loeb.

For instance, a POSITA would be motivated to combine Chase and Loeb so as to

allow for a personalized selection of a list of songs to be delivered across a

network to a player with audio output (e.g., a headset) and have a simple, high


32

level user interface that allows listeners to control playback of the songs, including

starting/stopping the songs at any time and stepping forward and backward through

the list of songs; such a user interface “induces nearly instant acceptance and

allows people to use the LyricTime prototype with almost no preparation.” Ex.

1008 at pgs. 6-7; Fig. 3; and pg. 9 (lower left column to upper middle column). A

POSITA would have a reasonable expectation of success considering the ubiquity

of user interfaces for listening to audio. Ex. 1002, Walker Decl. at ¶¶ 26, 74-76,

80-85, and 87. Also, Chase and Loeb could have been combined by a POSITA

using known methods (using common programming techniques) to yield a

predictable result, namely a terminal/workstation for a listener with aspects of

Loeb’s user interface. Ex. 1002, Walker Decl. at ¶¶ 80-85 and 87.

- [1d] “means for continuously reproducing said program segments

in the order established by said sequence in the absence of a control

command”

Chase discloses that the affiliate terminal plays programs in a play list based

on the order in the play list in the absence of a control command. Ex. 1005 at ¶

0184 (“Generally, without intervention by the remote control terminal 58, the

playback of audio segments from within a program are sequential based on the

play list.”). In this regard, Chase discloses that the affiliate terminal may be

implemented on a personal computer running a conventional operating system,

such as Windows 95 and include a sound card that includes a digital to analog


33

converter. Ex. 1005 at ¶¶ 0066, 0071-0072, 0080-0083; and Figs. 6-7. Further,

Chase discloses software code that continuously plays the segments in the play list

based on the order in the play list and meets the construed 112 ¶ 6 structure of this

limitation. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference the

Chase Software Appendices. With respect to the first step of the algorithm

detailed above in section III(B)(3)(g), the “CMD_PLY” command is processed by

the ProcessCommands() function that plays the current audio element. Ex. 1005 at

¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 68 and 573-574.

The ProcessCommands() function invokes the Play() method of the Player class

which in turn invokes the Play() method of the rPlayer class. Ex. 1005 at ¶¶ 0001-

0002 and 0004, incorporating by reference Ex. 1015 at 415 and 574. The Play()

method of the rPlayer class “cue[s] up the track and start[s] the decoder playing,”

including cueing the track specified by the “CurElement” variable (equivalent to

“CurrentPlay” in the construed 112 ¶ 6 structure) and invoking the Play() method

of the decoder class to start the decoder playing. Ex. 1005 at ¶¶ 0001-0002 and

0004, incorporating by reference Ex. 1015 at 405. Specifically, the Play() method

of the decoder class invokes the DecoderPlay method of the AudioCard class. Ex.

1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 143. The

DecoderPlay method issues commands to the hardware by invoking the

DeviceIoControl method. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by


34

reference Ex. 1015 at 702-703. The possible commands, listed in the DaxCodes.h

file (Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at

855), include the command ccDecoderPlay. The DecoderPlay method sends the

ccDecoderPlay command to the hardware through the DeviceIoControl function,

which causes the player to play the cued element. Ex. 1005 at ¶¶ 0001-0002 and

0004, incorporating by reference Ex. 1015 at 702-703.

With respect to the second step of the algorithm detailed above in section

III(B)(3)(g), Chase discloses that when an audio segment completes playing, the

next segment plays. The Player generates an event, when the currently playing

program segment concludes, that is handled by the Event() method of the rPlayer

class. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at

408-409. The Event function stops the player by invoking the Stop() method. Ex.

1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 409. Then

this Event function finds the next element to play using the FindNextElement

function and passes the parameter FORWARD to the FindNextElement function.

Id. This causes the FindNextElement function to return the next audio segment on

the list. The FindNextElement function increments the element pointer “st” (which

is set as “CurElement”) to find the pointer to the next element and returns the

pointer to the Event function. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating

by reference Ex. 1015 at 402-403 and 409. This returned pointer to the next


35

segment is in turn passed by the Event function as (tp) to the function

SetCurrentElement. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by

reference Ex. 1015 at 409. The SetCurrentElement identifies a pointer to the next

item on the list and invokes the CueElement function. Ex. 1005 at ¶¶ 0001-0002

and 0004, incorporating by reference Ex. 1015 at 401-402 and 409. The

CueElement function configures the player to start playing the selected segment.

Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 407-

408. For instance, the CueElement function calls the Decoder::CueCart method,

which in turn calls the GetAudioFile function to get the name of the cart (which in

turn calls the GetFileName function to get the name of the file), and calls the

PhysicalCue function to physically cue the audio. Ex. 1005 at ¶¶ 0001-0002 and

0004, incorporating by reference Ex. 1015 at 145-146; and 50. The PhysicalCue

function calls the Cue function, which in turn calls the LoadSegment function,

which in turn invokes the DeviceIoControl method passing the command

ccLoadSegmentInfo to load the next segment for playback. Ex. 1005 at ¶¶ 0001-

0002 and 0004, incorporating by reference Ex. 1015 at 146-147, 150, and 707-708.

With respect to the third step of the algorithm detailed above in section

III(B)(3)(g), Chase discloses that when the last segment on the list finishes playing,

an event is generated which is handled as described above by the rPlayer::Event()

method. When at the end of the list, the FindNextElement function is not able to


36

find the next element. Accordingly, the FindNextElement function returns null to

the Event method. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference

Ex. 1015 at 403. The null return is detected by the Event method and the

SetCurrentElement method is invoked instead with the pointer “StartedAt.” Ex.

1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 409. As

before, the SetCurrentElement identifies a pointer to the element identified with

the StartedAt variable (instead of the next element) and invokes the CueElement

function. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015

at 401-402, 409, and 414. The CueElement function configures the player to start

playing as detailed above. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by

reference Ex. 1015 at 407-408 and 144-146. Accordingly, the decoder will begin

again at the beginning of the list.

- [1e] “means for detecting a first command indicative of a request to

skip forward”

A command to skip forward was well known at the time of the alleged

invention. For example, Personal Audio admitted that: “[i]t is to be understood

that applicant does not claim that all of the functions set forth in the dependent

claims are patentable per se. Plainly, for example, conventional CD players allow

the user to skip forward to the beginning of the next track on the disk or to skip

backward to proceeding tracks…” Ex. 1003 at 52 (emphasis added).


37

Chase discloses detecting a command to skip forward that allows a user to

override the normal sequence of the audio segments by selecting audio programs

out of sequence. Ex. 1005 at ¶ 0184. The affiliate terminal includes sensor inputs

that monitor for play back requests including a request “that the DAC 52 start play

of the next segment queued in the DAC 52, … fast forward/rewind through the

current segment or to a next/previous segment.” Ex. 1005 at ¶ 0186. In addition,

Loeb teaches a personalized music system that has an interface for allowing a

listener to control playback of songs including skipping through a list of selected

songs. Ex. 1008 at pg. 6 (lower right column); Fig. 3; pg. 7: (“The… interface

contains buttons for controlling the playing of songs. These buttons allow the

listener to step backward and forward through the list of selected songs…”) and

pg. 9: (“…[users] provided more implicit (skipping or replaying songs) than

explicit feedback”).

Although Loeb discloses the functionality of detecting a command indicative

of a request to skip forward, Loeb does not explicitly disclose structure in the form

of an algorithm as discussed in section III(B)(3)(h), which utilizes fundamental

programming constructs such as “if-then-else” and “branch” programming

constructs. Chase, however, discloses structure in the form of the affiliate terminal

implemented on a personal computer (running a conventional operating system

such as Windows 95) and software code that detects commands from users. Ex.


38

1005 at ¶¶ 0066; and 0001-0002 and 0004, incorporating by reference the Chase

Software Appendices. The disclosed software code teaches the function

ProcessCommands() that “process[es] requests from the connected user.” Ex. 1005

at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 571. The

ProcessCommands() function calls the GetCommand function. Ex. 1005 at ¶¶

0001-0002 and 0004, incorporating by reference Ex. 1015 at 572. The

GetCommand function “reads in a given command from the user and parses it.”

Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 781.

The GetCommand function reads a buffer and determines, using an “if-then-else”

programming construct, whether data read from the buffer matches a command in

the table CmdTable and returns a code for the command if found. Ex. 1005 at ¶¶

0001-0002 and 0004, incorporating by reference Ex. 1015 at 779-781. If the

GetCommand function returns a code for the command, the ProcessCommands()

function uses a “branch” programming construct (a switch statement) to select an

available command such as a command “CMD_STP” to stop the playing of an

audio element, a command “CMD_RNE” to read the next audio element, and a

command “CMD_PLY” to play the an audio element. Ex. 1005 at ¶¶ 0001-0002

and 0004, incorporating by reference Ex. 1015 at 571-574.

A person of ordinary skill in the art would have recognized that applying the

known technique of using an “if-then-else” programming construct to determine


39

whether input is a command and a “branch” programming construct to select an

available command, as taught by Chase, to implement the detection of a request to

skip to the next song in the personalized music system taught by Loeb, would have

yielded the predictable result of detecting a request to skip to the next song. Ex.

1002, Walker Decl. at ¶¶ 91-92. This would have been nothing more than the use

of fundamental programming constructs and well within the capabilities of a

person of ordinary skill. Ex. 1002, Walker Decl. at ¶¶ 85 and 91-92.

- [1f] “means responsive to said first command for discontinuing the

reproduction of the currently playing program segment and instead

continuing the reproduction at the beginning of a program segment

which follows said currently playing program in said sequence”

Performing a skip forward command to skip forward to the next song was

well known at the time of the alleged invention. For example, Personal Audio

admitted that: “[i]t is to be understood that applicant does not claim that all of the

functions set forth in the dependent claims are patentable per se. Plainly, for

example, conventional CD players allow the user to skip forward to the beginning

of the next track on the disk or to skip backward to proceeding tracks…” Ex. 1003

at 52 (emphasis added).

Chase discloses an affiliate terminal that discontinues playing the currently

playing program segment and instead plays the program segment that follows the

currently playing program. For example, the remote control terminal allows a user

to override the normal sequence of the audio segments by selecting audio programs


40

out of sequence. Ex. 1005 at ¶ 0184. The user may also request through the

remote control terminal “that the DAC 52 start play of the next segment queued in

the DAC 52, … fast forward/rewind through the current segment or to a

next/previous segment.” Ex. 1005 at ¶ 0186. In addition, Loeb teaches a

personalized music system that has an interface for allowing a listener to control

playback of songs including skipping forward a list of selected songs. Ex. 1008 at

pg. 6 (lower right column); Fig. 3; pg. 7: (“The… interface contains buttons for

controlling the playing of songs. These buttons allow the listener to step backward

and forward through the list of selected songs…”) and pg. 9: (“…[users] provided

more implicit (skipping or replaying songs) than explicit feedback”). For instance,

Figure 3 illustrates an interface that shows the song currently playing (“Aint

Misbehavin – Louis Armstrong”), the previous song (“Elmers Tune – Benny

Goodman”), and the next song in the list (“Gotta Give – Ella Fitzgerald”), and a

button to step forward through the list of selected songs. A person of ordinary skill

would understand Loeb to teach that when the button to step forward through the

list of selected songs is selected while a song is currently playing, the currently

playing song is stopped and the next song on the list is played. Ex. 1002, Walker

Decl. at ¶¶ 75-76. For instance, if the button to step forward is selected while the

song “Aint Misbehavin – Louis Armstrong” is playing, that song will stop playing

and the next song on the list (“Gotta Give – Ella Fitzgerald”) will begin playing.


41

Although Chase and Loeb discloses the functionality of discontinuing the

playback of the currently playing song and instead playing the next song in

response to a command from a user, Chase and Loeb do not explicitly disclose the

exact 112 ¶ 6 construed structure discussed in section III(B)(3)(i). Chase, however,

discloses structure in the form of the affiliate terminal implemented on a personal

computer (running a conventional operating system such as Windows 95) and

software code to advance to the next song. Ex. 1005 at ¶¶ 0066; and 0001-0002

and 0004, incorporating by reference the Chase Software Appendices. The

disclosed software code teaches a function rPlayer:FindNextElement that scans

forward in the play list to find the next playable element including advancing the

element pointer forward until it finds the first playable object (a track, play list, or

cart) and then returns that pointer to the Event function. Ex. 1005 at ¶¶ 0001-0002

and 0004, incorporating by reference Ex. 1015 at 402-403 and 409. The Event

function then passes to the function SetCurrentElement the returned pointer (tp) to

the next segment. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by reference

Ex. 1015 at 409. The SetCurrentElement sets the element corresponding to the

returned pointer (tp) as the current element (“CurElement”) and invokes the

CueElement function. Ex. 1005 at ¶¶ 0001-0002 and 0004, incorporating by

reference Ex. 1015 at 401-402 and 409. The CueElement function configures the

player to start playing as detailed above with respect to claim portion [1d].


42

A POSITA would have recognized that the application of this code (using

common programming techniques) for a player to advance to the next song in the

playlist, as taught by Chase, to implement the functionality of stopping the

reproduction of a currently playing song and beginning playback of the next song

in response to a command, as taught by Chase and Loeb, would have the

predictable result of allowing a user to skip to the next song in a list of selected

songs. Ex. 1002, Walker Decl. at ¶¶ 26, 80-85 and 93-94. Also, a POSITA would

have been motivated to modify Chase’s affiliate terminal/remote terminal to have

features of the “listener’s workstation” of Loeb. For instance, a POSITA would be

motivated to combine Chase and Loeb so as to allow for a player stop the

reproduction of a currently playing song and begin playback of a listener-selected

song (e.g., next song) in response to a command; such a user interface “induces

nearly instant acceptance and allows people to use the LyricTime prototype with

almost no preparation.” Ex. 1008 at pgs. 6-7; Fig. 3; and pg. 9 (lower left column

to upper middle column); see also Ex. 1002, Walker Decl. at ¶¶ 26, 80-85 and 93.

A POSITA would have a reasonable expectation of success considering the

ubiquity of user interfaces for listening to audio. Ex. 1002, Walker Decl. at ¶¶ 26,

75-77, 80-85, and 87.

In light of the above, claim 1 is obvious over Chase in view of Loeb.

2. Claim 4


43

- “A player as set forth in claim 1 wherein said sequence established

by said data forms an endless circular sequence of program

segments”

Chase discloses that the affiliate terminal plays programs in a play list based

on the order in the play list in the absence of a control command, where the

sequence forms an endless circular sequence of program segments, as discussed

with respect to claim [1d]. See also Ex. 1002, Walker Decl. at ¶ 95. Thus, claim 4

is obvious over Chase in view of Loeb.

3. Claim 5

- “A player as set forth in claim 1 including editing means for

modifying said data establishing said sequence”

Chase discloses the remote control terminal of the affiliate terminal includes

the ability for a user to scroll through the play list and select, out of turn, a segment

from the play list, which modifies the sequence of the play list. Ex. 1005 at ¶ 0186.

Chase also discloses the affiliate terminal includes an audio server 180 that may

implement a delete message to delete a cart, rack, or play list, which would update

the order of playback of the play list. Ex. 1005 at ¶ 0195, column 15: (“…DEL

<element><type> - <element> The English name of the element to delete. <type>

The type of the element to delete (e.g., cart, rack, playlist, log).” Thus, claim 5 is

obvious over Chase in view of Loeb.

4. Claim 6

- “A player as set forth in claim 5 wherein said editing means includes

means for reordering the sequence established by said data”


44

Chase discloses the remote control terminal of the affiliate terminal includes

the ability for a user to scroll through the play list and select, out of turn, a segment

from the play list, which modifies the sequence of the play list. Ex. 1005 at ¶ 0186.

Selecting an audio segment to play out of turn assigns a new/different order to that

audio segment and updates the order for all of the segments in the play list. Thus,

claim 6 is obvious over Chase in view of Loeb.

D. Ground 2 – Claims 2-3 and 14-15 Are Obvious Under 35 U.S.C. 103(a)

over Chase in view of Loeb in view of Inazawa

Claims 2-3 are obvious over Chase in view of Loeb and further in view of

Inazawa. Chase and Loeb are analogous art to the ’076 Patent as detailed above

with respect to Ground 1. Inazawa is also analogous art to the ’076 Patent as

Inazawa is directed to a player, like the ’076 Patent. Further, Inazawa discloses the

player with program selection keys to allow a user to navigate forward and

backward between partitions or tracks and to restart a currently playing track. Ex.

1007 at Abstract, 2:11-26, 3:42-62, 4:38-5:54.

1. Claim 2

As described above, Chase and Loeb disclose a user interface by which a

listener can navigate audio program files identified by a playlist (including

skipping forward and back), and the combination of Chase and Loeb makes

obvious the function and structure for a user interface to respond to a “skip forward

program selection command” (see claim [1e]-[1f]). Although the combination of


45

Chase and Loeb fails to disclose the specific manner of navigation in claim 2 in

sufficient detail to meet the construed 112 ¶ 6 interpretation discussed in sections

III(B)(3)(j)-(k), the combination of Chase, Loeb, and Inazawa makes obvious the

limitation.

- [2a] “A player as set forth in claim 1 further comprising means for

detecting a second command indicative of a request to skip

backward, and”

A command to skip backwards was well known at the time of the alleged

invention. For example, Personal Audio admitted that: “[i]t is to be understood that

applicant does not claim that all of the functions set forth in the dependent claims

are patentable per se. Plainly, for example, conventional CD players allow the user

to skip forward to the beginning of the next track on the disk or to skip backward

to proceeding tracks…” Ex. 1003 at 52 (emphasis added).

With regard to the function, the description of Chase and Loeb with regard

to claim [1e] applies here. Ex. 1005 at ¶¶ 0184-0186 and Ex. 1008 at pg. 6 (lower

right column); Fig. 3; pg. 7; and pg. 9; Ex. 1002, Walker Decl. at ¶¶ 74-76, and 80-

85. Inazawa discloses a disc player with: 1) a first key (“program selecting key

10”) to control forward program selection to skip to the beginning of audio

programs following the currently playing audio program; and 2) a second key

(“program selecting key 11”) to control reverse program selection to skip to the

beginning of the currently playing audio program or to the beginning of preceding


46

programs. Ex. 1007 at Fig. 1, 3:43-62, 2:66-3:4, 1:51-59, and 7:32-56. When

reading Inazawa, it should be noted that “reproduced address data Q” represents

address data read from the disc and supplied to a first register 7. Ex. 1007 at 3:25-

36. From this first register 7, the address data QN (the currently playing audio

program has an “address N”) is supplied to an operational circuit block 8. Ex.

1007 at 3:36-42.

When the first or second program selecting key 10 or 11 is manipulated, a

key input signal Ku or Kd is generated and supplied to an operational circuit block

8. Ex. 1007 at Fig. 1 and 3:63-67. The operational circuit block 8 then produces

designated address QX to which the disc player is to skip. Ex. 1007 at Fig. 1 and

3:67-4:37; Ex. 1002, Walker Decl. at ¶ 104.

As for structure, the description of Chase and Loeb with regard to claim [1e]

applies here. Ex. 1005 at ¶¶ 0001-0002, 0004, 0185-0186, incorporating by

reference Ex. 1015 at 571-574 and 779-781; Ex. 1002, Walker Decl. at ¶ 199,

element 2.a. Inazawa discloses a more hardware centric approach to perform a

skip back operation (an operational circuit block 8 that responds to the receipt of

no signals, the Ku signal, or the Kd signal by respectively doing nothing, skipping

forward, and skipping backward (see above discussion)). The software versus

hardware approaches in Chase and Inazawa are a mere design choice, and a


47

POSITA would know how to implement the operation of Inazawa in the context of

the software in Chase. Ex. 1002, Walker Decl. at ¶¶ 107-109.

Rationales to combine are addressed at the end of the next claim limitation.

- [2b] “means responsive to a single one of said second commands for

discontinuing the reproduction of the currently playing program

segment and instead continuing the reproduction at the beginning of

said currently playing program”

With regard to the function, the description of Chase and Loeb with regard

to claim [1f] applies here. Ex. 1005 at ¶¶ 0184-0186 and Ex. 1008 at ¶¶ pg. 6

(lower right column); Fig. 3; pg. 7; and pg. 9; Ex. 1002, Walker Decl. at ¶¶ 74-76,

80-85, and 119 at element 2.b. As discussed above, Inazawa discloses a key

(“program selecting key 11”) to control reverse program selection on a disc player

to skip to the beginning of the currently playing audio program or to the beginning

of preceding programs. Ex. 1007 at 3:50-62, 2:66-3:4, 1:51-59, and 7:32-56.

With regard to the structure, the only occurrence of language close to a

claimed “single one of said second commands” and “two consecutive ones of said

second commands” (see claim 3) is found in the claims. The specification of the

’076 patent instead discloses the use of a time period. Ex. 1001 Figure 3 at items

261, 262, and 278, 15:42-59. Thus, the Court interpreted the claim limitation to

require the time period as discussed in the above claim construction section.

Chase discloses a general purpose computer programmed to perform a skip

back operation that includes scanning backward in the context of a playlist file to


48

find the previous playable element, setting the current element as the found

playable element, and fetching/playing that found playable element (in similar

manner as discussed above concerning claim [1f], but specifying the direction as

“BACKWARD” instead of “FORWARD” in the FindNextElement function).

Thus, the function rPlayer:FindNextElement scans backward in the play list to find

the next playable element including advancing the element pointer backward until

it finds the first playable object (a track, play list, or cart) (a “LocType”) and then

returns that pointer to the Event function, which passes to the function

SetCurrentElement the returned pointer (tp) to the previous segment. Ex. 1005 at

¶¶ 0066, 0001-0002, and 0004, incorporating by reference Ex. 1015 at 50, 144-

147, 150, 401-403, 407-409, and 707-708. The SetCurrentElement sets the

element corresponding to the returned pointer (tp) as the current element

(“CurElement”) and invokes the CueElement function. Ex. 1005 at ¶¶ 0001-0002

and 0004, incorporating by reference Ex. 1015 at 401-402 and 409. The

CueElement function configures the player to start playing as detailed above with

respect to claim portion [1d].

Inazawa discloses a time period started as part of its reverse program

selection mode that is used when determining whether the disc player will skip

back to the beginning of the currently playing audio program or skip back to the

preceding audio program. Ex. 1007 at 3:50-58; 4:38-5:2 and 6:30-7:31. In


49

Inazawa, the currently playing audio program has an “address N” and a preceding

audio program has an “address N-1.” Ex. 1007 at 6:5-8; 6:61-7:20; and 7:32-56.

Upon a manipulation of the program selecting key 11 within the duration t3 (i.e.,

while the audio program is playing within a predetermined time period duration t3),

a skip backward to the beginning of the preceding program at address N-1 (the

“two consecutive ones of said second commands” of claim 3) is performed. Ex.

1007 at 6:61-7:20; 7:31-56; 6:17-60; and Figures 2A-D; Ex. 1002, Walker Decl. at

¶¶ 103-106.

In contrast, upon a manipulation of the program selecting key 11 after the

duration t3 (i.e., after the audio program has been playing a predetermined amount

of time, and equivalent to the construed 112 ¶ 6 structure “if the currently playing

audio segment has played for a predetermined amount of time”), a skip to the

beginning of the current audio program at address N (the beginning of the current

audio program) is performed, playing the audio program therefrom (equivalent to

the construed 112 ¶ 6 structure “resetting the playback position to the beginning of

the program segment; and playing the program segment from its beginning”). Ex.

1007 at 7:21-56; Ex. 1002, Walker Decl. at ¶¶ 103, 106.

Thus, Inazawa discloses a user interface to skip back during playback, to

play from the beginning of the current program, based on a key press after

expiration of a time period. The software versus hardware approaches in Chase


50

and Inazawa are a mere design choice, and a POSITA would know how to

implement the operation of Inazawa in the context of the software in Chase. Ex.

1002, Walker Decl. at ¶ 107.

A POSITA would be motivated to add the features of Inazawa to the

combination of Chase and Loeb to improve the user interface such that the same

control key can be used to control backing up to the beginning of the current audio

program or the beginning of a preceding audio program based on a time period. In

fact, Inazawa’s purpose of providing a user interface for a listener controller audio

playback device is reflected by Inazawa’s title (“DISC PLAYER WITH

PROGRAM SELECTION CONTROL” Ex. 1009 at title), and the expressed

advantage of being able to “quickly and surely search any desired one of the

program information partitions recorded on the disc in both directions forwarding

and reversing the address provided to each program information partition on the

record disc with use of the address information and then reproduce an information

signal from the searched program information partition immediately after the

search thereof is finished.” Ex. 1009 at 1:51-59; Ex. 1002, Walker Decl. at ¶ 108.

A POSITA would have had a reasonable expectation of success considering the

ubiquity of user interfaces for listening to audio. Ex. 1002, Walker Decl. at ¶¶ 27

and 108. Also, Chase, Loeb, and Inazawa could have been combined by a

POSITA using known methods (using common programming techniques) to yield


51

a predictable result, namely the user interface with the skip backward based on a

time period. Ex. 1002, Walker Decl. at ¶ 109. Further, a POSITA could have

taken the known technique from Inazawa to improve the combination of Chase and

Loeb in the same way, and the result would have been predictable (i.e., a user

interface to control skipping back to the beginning of a current audio program or a

preceding audio program). Ex. 1002, Walker Decl. at ¶ 109. Thus, claim 2 is

obvious in view of the combination of Chase, Loeb, and Inazawa.

2. Claim 3

- “A player as set forth in claim 2 further comprising means

responsive to the detection of two consecutive ones of said second

commands for discontinuing the reproduction of the currently

playing program segment and instead continuing the reproduction

at the beginning of a program segment which precedes the currently

playing program segment”

Although the combination of Chase and Loeb fails to disclose the specific

manner of navigation in claim 3 in sufficient detail to meet the construed 112 ¶ 6

interpretation discussed in section III(B)(3)(l), the combination of Chase, Loeb,

and Inazawa makes obvious the limitation.

As discussed above with regard to Claim 2, with regard to the function, the

description of Chase and Loeb with regard to claim [1f] applies here. Ex. 1005 at

¶¶ 0184-0186 and Ex. 1008 at ¶¶ pg. 6 (lower right column); Fig. 3; pg. 7; and pg.

9. Also, as discussed above, Inazawa discloses a key (“program selecting key 11”)

to control reverse program selection on a disc player to skip to the beginning of the


52

currently playing audio program or to the beginning of preceding programs. Ex.

1007 at 3:50-62, 2:66-3:4, 1:51-59, and 7:32-56. When the second program

selecting key 11 is initially manipulated, the key input signal Kd previously

discussed is supplied to not only the operational circuit block 8, but also a key

input signal checker 15. Ex. 1007 at Fig. 1, 3:63-67, and 4:53-55. The

operational circuit block 8 performs the processing operation for the address QN

(derived from the first register 7) and the key input signal so as to produce

designated address QX (the address to which the disc player is to skip ) (Ex. 1007

at Fig. 1, 3:67-4:3, and 4:4-37), while the key input signal checker 15

“discriminates” the initial manipulation from an “additional manipulation” of key

11 (Ex. 1007 at Fig. 1 and 4:53-60). Specifically, responsive to the initial

manipulation, the key input signal checker 15 causes a signal Tc to be received by

the operational circuit block 8 for a time period t3 via a timer 16 and an OR gate

14. Ex. 1007 at Fig. 1, 4:60-5:2, and 6:17-60. A second manipulation of the key

11 during t3 causes a skip backward to the preceding program. Ex. 1007 at 6:61-

5:20. Thus, the operational circuit block 8, key input signal checker 15, time 16,

and OR gate 14 of Inazawa operate to detect two consecutive manipulations of the

second key (“program selecting key 11”) to a request to skip backward to a

preceding program (the claimed “discontinuing the reproduction … and instead


53

continuing the reproduction at the beginning of a program segment which precedes

the currently playing program segment”). Ex. 1002, Walker Decl. at ¶¶ 104-106.

With regard to the structure, as discussed above the only occurrence of

language close to the claimed a “single one of said second commands” (see claim

2) and “two consecutive ones of said second commands” (claim 3) is found in the

claims. The specification of the ’076 patent instead discloses the use of a time

period. Ex. 1001 Figure 3 at items 261, 262, and 278, 15:42-59. Thus, the Court

interpreted the claim limitation to require the time period as discussed in the above

claim construction section.

As discussed above, Chase discloses a general purpose computer

programmed to perform a skip back operation that includes scanning backward in

the context of a playlist file to find the previous playable element, setting the

current element as the found playable element, and fetching/playing that found

playable element (in similar manner as discussed above concerning claim [1f], but

specifying the direction as “BACKWARD” instead of “FORWARD” in the

FindNextElement function. Thus the function rPlayer:FindNextElement scans

backward in the play list to find the next playable element including advancing the

element pointer backward until it finds the first playable object (a track, play list,

or cart) (a “LocType”) and then returns that pointer to the Event function, which

passes to the function SetCurrentElement the returned pointer (tp) to the previous


54

segment. Ex. 1005 at ¶¶ 0066, 0001-0002, and 0004, incorporating by reference

Ex. 1015 at 50, 144-147, 150, 401-403, 407-409, and 707-708. The

SetCurrentElement sets the element corresponding to the returned pointer (tp) as

the current element (“CurElement”) and invokes the CueElement function. Ex.

1005 at ¶¶ 0001-0002 and 0004, incorporating by reference Ex. 1015 at 401-402

and 409. The CueElement function configures the player to start playing as

detailed above with respect to claim portion [1d].

As discussed above, Inazawa discloses a time period started as part of its

reverse program selection mode that is used when determining whether the disc

player will skip back to the beginning of the currently playing audio program or

skip back to the preceding audio program. Ex. 1007 at 3:50-58; 4:38-5:2 and 6:30-

7:31. (When reading Inazawa, it should be noted that the currently playing audio

program has an “address N” and a preceding audio program has an “address N-1.”

Ex. 1007 at 6:5-8; 6:61-7:20; and 7:32-56.) Specifically, Inazawa discloses that

when the program selecting key 11 is initially manipulated (producing the signal

Ts illustrated in Fig. 2A), a reverse program selection mode is entered where: 1) a

timer 16 is started (duration of t1 in Fig. 2B); and 2) a skip to the beginning of the

current audio program (identified at address N) is performed that includes moving

the optical head to the area according to address N (the beginning of the current

audio program) and playing the audio program therefrom. Ex. 1007 at 6:17-60.


55

Upon a manipulation of the program selecting key 11 when the duration t3

has expired (which occurs after the audio program has been playing an amount of

time), a skip to the beginning of the current audio program (identified at address N)

is performed that includes moving the optical head to the area according to address

N (the beginning of the current audio program) and playing the audio program

therefrom. Ex. 1007 at 7:21-56. This manipulation (referred to here as the “first

manipulation) equates to the first of the claimed “two consecutive ones of said

second commands” because it is after the time period caused by the above

discussed initial manipulation and because it operates just as that initial

manipulation did (causes a resetting of the playback position to the beginning of

the program and playing of that program from the beginning (see the “first ‘Back’

command” from the claim construction)). In addition, just as with the initial

manipulation, this first manipulation causes the operational circuit block 8, key

input signal checker 15, time 16, and OR gate 14 operate to detect any additional

manipulation within a newly started time period t3. An additional manipulation

(referred to here as the “second manipulation”) when the duration t2 expires but

before t3 expires (thus while the audio program is playing but before the duration t3

expires), causes a skip backward to the beginning of the preceding program at

address N-1. Ex. 1007 at 6:61-7:20; 7:31-56. Thus, this second manipulation

equates to the second of the claimed “two consecutive ones of said second


56

commands” because it is before the time period has expired and it causes the

preceding program to be played.

Thus, Inazawa discloses a more hardware centric approach (operational

circuit block 8, system controller, 9, key input signal checker 15, timer 16, etc.)

that scans backward in the sequence of the disc to locate the previous track, resets

the address to N-1 (equivalent to “CurrentPlay” in the construed 112 ¶ 6 structure),

and play that program. In essence, choosing a hardware implementation or a

software implementation is merely a design choice, and a POSITA would know

how to implement the operation of Inazawa in the context of the software of Chase.

Ex. 1002, Walker Decl. at ¶ 107.

A POSITA would be motivated to add the features of Inazawa to the

combination of Chase and Loeb for at least the same reason as expressed with

regard to claim 2. Thus, claim 3 is obvious in view of the combination of Chase,

Loeb, and Inazawa.

3. Claim 14

- [14-pre] “A programmed digital computer for reproducing audio

programs, said computer comprising, in combination:”

See analysis for claim [1-pre].

- [14a] “a mass storage device for storing a plurality of digitally

recorded audio program segments, each of said segments having a

beginning and an end”

See analysis for claim [1a].


57

- [14b] “and further receiving and storing a file of data establishing a

sequence in which said program segments are scheduled to be

played”

See analysis for claim [1b].

- [14c] “input means for accepting control commands from a user”

See analysis for claim [1c].

- [14d] “output means for producing audible sounds in response to

analog audio signals”

Chase discloses that the affiliate terminal includes an audition audio headset

59 that allows a user to listen to at least a portion of the audio segments/programs

stored on the memory. Ex. 1005 at ¶ 0067.

- [14e] “processing means for translating said digitally recorded

audio program segments into analog audio signals delivered to said

output means for reproducing said recorded program segments in a

form audible to said user”

Chase discloses the affiliate terminal including a digital audio card (DAC)

52 that includes a digital signal processor (DSP) 104 that includes a digital to

analog converter that outputs the playback of the audio segments as an analog

signal. Ex. 1005 at ¶ 0068. Chase also discloses that the affiliate terminal includes

an audition audio headset 59 that allows a user to listen to at least a portion of the

audio segments/programs stored on the memory. Ex. 1005 at ¶ 0067. Petitioner

considers the user of Chase (which may be a radio DJ) to meet this limitation

regarding a user because, as discussed above, the district court in the Apple

litigation found that there is no place identified in the ’076 Patent’s specification or


58

prosecution history where the inventors “explicitly limited their invention to use by

a single listener or expressly disclaimed the use of their invention by a radio DJ.”

Ex. 1009 at 16. However, out of an abundance of caution concerning the claim

term “user,” Loeb teaches a “personalized music system in which songs are played

at a listener’s workstation, using its built-in audio capability” and the “listener’s

terminal must have audio and graphics output capabilities.” Ex. 1008 at pgs. 6 and

9.

A POSITA would have been motivated to modify Chase’s affiliate terminal

to which the audition audio headset 59 is connected to have features of the

“listener’s workstation” of Loeb. For instance, a POSITA would be motivated to

combine Chase and Loeb so as to allow for a personalized selection of a list of

songs to be delivered across a network to a player with audio output (e.g., a

headset) with a simple, high level user interface that allows listeners to control

playback of the songs, including starting/stopping the songs at any time and

stepping forward and backward through the list of songs; such a user interface

“induces nearly instant acceptance and allows people to use the LyricTime

prototype with almost no preparation.” Ex. 1008 at pgs. 6-7; Fig. 3; and pg. 9

(lower left column to upper middle column). A POSITA would have a reasonable

expectation of success considering the commonality of audio output to a headset

for listening to audio. Ex. 1002, Walker Decl. at ¶ 112. Also, Chase and Loeb


59

could have been combined by a POSITA using known methods (audio output to a

headset was well known) to yield a predictable result, namely a terminal with a

headset for listening to the audio. Ex. 1002, Walker Decl. at ¶ 113.

- [14f] “processing means responsive to a first one of said control

commands for discontinuing the translation of the currently playing

program segment and instead continuing the translation at the

beginning of the next program segment in said sequence, and”

See analysis for claim [1f].

- [14g] “processing means responsive to a second one of said control

command for discontinuing the translation of the currently playing

program and instead continuing the translation at the beginning of

said currently playing program.”

See analysis for claim [2b].

In light of the above, claim 14 is obvious over Chase in view of Loeb and

further in view of Inazawa.

4. Claim 15

- “A programmed digital computer for reproducing audio programs

as set forth in claim 14 further comprising means responsive to two

consecutive ones of said second control commands for discontinuing

the translation of the currently playing program and instead

continuing the translation at the beginning of a program segment

which precedes said currently playing program in said sequence.”

See analysis for claim 3.


60

V. RELIEF REQUESTED

For the foregoing reasons, Inter Partes review of claims 1-6 and 14-15 of

U.S. Patent No. 6,199,076 and cancellation of claims 1-6 and 14-15 of the ’076

Patent is respectfully requested.

Date: March 6, 2015 Respectfully submitted,

/Daniel M. De Vos / Daniel M. De Vos Reg. No. 37,813 Attorney for Petitioner


61

CERTIFICATE OF SERVICE

The undersigned hereby certifies, pursuant to 37 C.F.R. §§ 42.6(e) and

41.105, that a complete copy of the foregoing Petition for Inter Partes Review of

U.S. Patent No. 6,199,076, along with all exhibits and other supporting documents,

are being served via Priority Mail Express (formerly called Express Mail) on

March 6, 2015, upon the patent owner’s attorneys of record for the patent at the

following address:

NIXON & VANDERHYE, PC

901 North Glebe Road, 11th Floor

Arlington VA 22203

/Matthew N. Nicholson / Matthew N. Nicholson Reg. No. 62,889

Petition for Inter Partes Review of U.S. Patent No....

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Transcript of Petition for Inter Partes Review of U.S. Patent No....