from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-01236.
James Schutz, Robins Kaplan LLP, Minneapolis, MN, argued for
appellant. Also represented by Ryan Michael Schultz, Cyrus
Alcorn Morton, Andrew Joseph Kabat.
M. Gasparo, Venable LLP, New York, NY, argued for appellees.
Also represented by Todd M. Nosher; Megan S. Woodworth,
Washington, DC; Tamany Vinson Bentz, Los Angeles, CA.
Lourie, Reyna, and Wallach, Circuit Judges.
Lourie, Circuit Judge.
Inc. ("Skky") appeals from the final written
decision of the United States Patent and Trademark Office
Patent Trial and Appeal Board ("the Board") in an
inter partes review ("IPR") proceeding
concluding that claims 1-3, 5, and 15-23 ("the
challenged claims") of U.S. Patent 7, 548, 875
("the '875 patent") are unpatentable as
obvious. MindGeek, s.a.r.l. v. Skky Inc., IPR
2014-01236, 2016 WL 763036, at *1 (P.T.A.B. Jan. 29, 2016)
("Final Decision"). Because the Board did
not err in its claim construction or in concluding that the
challenged claims are unpatentable, we affirm.
owns the '875 patent, which describes a method for
delivering audio and/or visual files to a wireless device.
See '875 patent, col. 1 l. 61-col. 2 l. 48.
According to the patent, existing devices required music or
video clips to be either factory-installed, or downloaded
through a direct interface with the Internet. Id.
col. 1 ll. 39-42. The patent purports to address this issue
by allowing users to "browse, download, and listen to or
watch sound or image files without the need for hand wired
plug-in devices or a computer connection to the
Internet." Id. col. 3 ll. 56-59.
'875 patent discloses a number of embodiments to achieve
this result. One embodiment is purely software ("the
software embodiment"); for example, the patent indicates
that a cellular phone or other device "may be integrated
with software at the time of manufacturing for implementing
the system of the present invention." Id. col.
5 l. 67-col. 6 l. 2. The patent makes clear that "a
software system may be integrated with the existing hardware
chip of a conventional cellular phone without the need for
additional hardware." Id. col. 14 ll. 22-25. In
other embodiments, a separate accessory unit attached to the
wireless device provides this functionality. See,
e.g., id. col. 14 ll. 16-19.
leading to the '875 patent lasted almost seven years, and
involved myriad rejections over the prior art. In particular,
the Examiner relied upon U.S. Patent 7, 065, 342
("Rolf"), which describes a system and method for
wirelessly transmitting music over a network to a cellular
phone. See Rolf, col. 1 ll. 25-38. The Examiner only
allowed the claims over Rolf after they were amended to
recite a "wireless device means, " which the
Examiner believed to be a means-plus-function term invoking
35 U.S.C. § 112 ¶ 6. See Joint Appendix
("J.A.") 165, 169, 174-75, 202-03. As allowed,
claim 1 recites:
1. A method of wirelessly delivering over the air one or more
digital audio and/or visual files from one or more servers to
one or more wireless device means comprising:
compressing said one or more digital audio and/or visual
files, wherein said audio and/or visual files comprise one or
more full or partial master recordings of songs, musical
scores or musical compositions, videos or video segments,
movies or movie segments, film or [film] segments, one or
more image clips, television shows, human voice, personal
recordings, cartoons, film animation, audio and/or visual
advertising content and combinations thereof, and wherein
said compressing comprises normalizing, sampling and
compressing said digital audio and/or visual files;
storing compressed audio and/or visual files in one or more
storage mediums; and
transmitting to said wireless device means said
compressed audio and/or visual files wirelessly over the air,
with or without an Internet network.
'875 patent, col. 33 ll. 14-32 (emphases added). Claim 21
adds that the "compressed digital and/or visual file is
a segment of a full song, musical composition, or other audio
recording or visual recordings." Id. col. 34
ll. 51-53. Claim 22 adds that the method "compris[es]
the use of OFDM, " id. col. 34 l. 54;
i.e., an orthogonal frequency-division multiplex