By Cheryl Beise, J.D.
The Patent Trial and Appeal Board did not err in finding following inter partes review that the challenged claims of a patent claiming a method for transferring audio and video files to a wireless were invalid as obvious in view of prior art, the U.S. Court of Appeals for the Federal Circuit has ruled (Skky, Inc. v. MindGeek, S.A.R.L., June 7, 2017, Lourie, A.).
Skky, Inc., owns U.S. Patent 7,548,875 (the ’875 patent), entitled "Media delivery platform," which describes a method for delivering audio and visual files to a wireless device. MindGeek, s.a.r.l., MindGeek USA, Inc., and Playboy Enterprises, Inc. (together, "MindGeek") petitioned for inter partes review (pre-AIA) of the ’875 patent. The PTAB granted the request and ultimately concluded that claims 1–3, 5, and 15–23 of the ’875 patent were unpatentable as obvious. Skky appealed.
Claim construction. Skky argued that the Board erred in finding that the "wireless device means" limitation is not a means-plus-function term invoking § 112 ¶6. Skky contended that the presence of "means" in "wireless device means" creates the presumption that § 112 ¶ 6 has been invoked. Skky identified the corresponding function of the "wireless device means" as "to request, wirelessly receive, and process a compressed audio and/or visual file." MindGeek responded that the clause in which "wireless device means" appears denotes structure rather than function and that functionality cannot be imported from the written description.
The court agreed with MindGeek. While use of the word "means" triggers a means-plus-function presumption, the court found that the presumption was overcome in this case because (1) the full term recites structure, not functionality, (2) the claims do not recite a function or functions for the wireless device means to perform, and (3) "wireless device" is "used in common parlance … to designate structure."
Skky additionally argued that term still should be construed to require multiple processors, wherein one is a specialized processor primarily dedicated to processing compressed multimedia data. The court disagreed. Although the written description contains embodiments where the wireless device contains multiple processors, it also includes the software embodiment, in which the wireless device contains a single processor, the court noted. The software embodiment precluded Skky’s argument that "wireless device means" requires a processor (or processors) primarily dedicated to processing the compressed media, according to the court. The patent expressly disclosed that the invention may be practiced using "a conventional cellular phone without the need for additional hardware."
The court also rejected Skky’s assertion that the Board abused its discretion by not striking MindGeek’s reply brief addressing means-plus-function. MindGeek’s reply brief responded to the positions laid out by Skky and the Board and Skky was given the opportunity to respond.
Obviousness. In challenging the Board’s obviousness finding, Skky argued that the Board erred by considering a prior art reference (U.S. Patent No. 7,065,342 to Rolf) cited by the examiner who originally allowed the claims. This argument was without merit, according to the court. Skky cited no authority for the proposition that once an examiner concludes that claims are patentable over a reference, that reference may no longer be considered further in determining a claim’s validity.
Skky next argued that the Board erred in concluding that claim 21 is unpatentable as obvious because Rolf only allows transmission of a full song, not a playable portion of a song as required by the claim. However, the Board properly determined that a song is a playable portion of a full album, and that claim 21 is not limited to transmitting a portion of a song, but also reaches segments of other audio recordings and musical compositions.
Substantial evidence also supported the Board’s finding of a motivation to combine Rolf with two additional references—a publication entitled "MP3: The Definitive Guide" ("MP3 Guide"), which describes attributes of the mp3 audio file format, and a publication entitled "OFDM/FM Frame Synchronization for Mobile Radio Data Communication" ("OFDM/FM"), describing a particular orthogonal frequency-division multiplex (OFDM) format—to arrive at the method in claim 22, which "compris[es] the use of OFDM." Skky argued that Rolf and OFDM/FM disclose different protocols, and that a skilled artisan would not have expected success in combining them. However, OFDM/FM specifically states that it could be retrofitted into existing systems, so combination would have been within the abilities of a skilled artisan, according to the court. The Board also was not required to credit contrary testimony by Skky’s expert.
The Board’s decision was affirmed.
The case is No. 2016-2018.
Attorneys: Ronald James Schutz (Robins Kaplan LLP) for Skky, Inc. Frank M. Gasparo (Venable LLP) for MindGeek, S.A.R.L., MindGeek USA, Inc. and Playboy Enterprises, Inc.
Companies: Skky, Inc.; MindGeek, S.A.R.L.; MindGeek USA, Inc.; Playboy Enterprises, Inc.
MainStory: TopStory Patent FedCirNews
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