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Skky, Inc. v. Mindgeek

United States Court of Appeals, Federal Circuit

June 7, 2017

SKKY, INC., Appellant
v.
MINDGEEK, S.A.R.L., MINDGEEK USA, INC., PLAYBOY ENTERPRISES, INC., Appellees

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-01236.

          Ronald James Schutz, Robins Kaplan LLP, Minneapolis, MN, argued for appellant. Also represented by Ryan Michael Schultz, Cyrus Alcorn Morton, Andrew Joseph Kabat.

          Frank 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.

          Before Lourie, Reyna, and Wallach, Circuit Judges.

          Lourie, Circuit Judge.

         Skky, 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.

         Background

         I. The Patented Technology

         Skky 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.

         The '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.

         Prosecution 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.[1] 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 ...


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