DCT
1:17-cv-01751
Personal Audio LLC v. Google LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Personal Audio, LLC (Texas)
- Defendant: Google, Inc. (Delaware)
- Plaintiff’s Counsel: DiNovo Price Ellwanger & Hardy LLP
- Case Identification: 1:15-cv-350, E.D. Tex., 02/16/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Google is a resident of the district, maintains a regular and established place of business there, and has committed acts of infringement within the district. The complaint also cites judicial economy, as the court has previously presided over five lawsuits involving the same patents.
- Core Dispute: Plaintiff alleges that Defendant’s Google Play Music service, when used on devices like smartphones and tablets, infringes two patents related to personalized audio playback and playlist navigation.
- Technical Context: The technology relates to systems for distributing and playing ordered sequences of digital audio files, a foundational concept for modern podcasting and music streaming services.
- Key Procedural History: The asserted patents have an extensive litigation and administrative review history. Plaintiff previously secured a jury verdict against Apple for infringement of claims of both patents. More recently, Defendant Google successfully challenged several claims of the asserted patents in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). The complaint asserts claims that were either not found unpatentable in the IPRs or were not challenged. Notably, some asserted dependent claims rely on a base claim that was cancelled in the IPRs.
Case Timeline
| Date | Event |
|---|---|
| 1996-10-02 | Priority Date for '076 and '178 Patents |
| 2001-03-06 | U.S. Patent No. 6,199,076 Issued |
| 2009-03-24 | U.S. Patent No. 7,509,178 Issued |
| 2009-06-25 | Personal Audio files suit against Apple Inc. |
| 2011-07-08 | Jury finds Apple infringed '076 Patent and did not find asserted claims invalid |
| 2012-04-XX | Google opens office in Frisco, Texas |
| 2012-09-19 | Plaintiff provides Google with written notice of the Asserted Patents |
| 2015-03-06 | Google files IPR petitions against the Asserted Patents |
| 2016-09-01 | PTAB issues Final Written Decision in IPR for the '076 Patent |
| 2016-09-09 | PTAB issues Final Written Decision in IPR for the '178 Patent |
| 2017-02-16 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,199,076 - "Audio Program Player Including a Dynamic Program Selection Controller"
- Patent Identification: U.S. Patent No. 6,199,076, "Audio Program Player Including a Dynamic Program Selection Controller," issued March 6, 2001.
The Invention Explained
- Problem Addressed: The patent describes the limitations of then-existing audio delivery systems. Broadcast radio offered timely content but was not user-selectable; physical media like CDs were user-selectable but static and ill-suited for evolving information like news. Early "Internet radio" was deemed impractical for mobile use due to its reliance on visual browsers. (’076 Patent, col. 1:11-63).
- The Patented Solution: The invention is a system featuring an audio player that receives a predetermined schedule of audio "segments" (i.e., a playlist). It includes simple controls allowing a listener to navigate the sequence (e.g., skip forward to the next segment, skip backward to replay a segment) without needing a visual display, making it suitable for environments like an automobile. (’076 Patent, Abstract; col. 2:7-27). The system architecture involves a host server distributing content to a client player device, which can download programming and upload usage data. (’076 Patent, Fig. 1).
- Technical Importance: The technology represents an early model for on-demand audio and podcasting, envisioning a system that combines the dynamic content of broadcasting with the user-centric control of personal media players. (Compl. ¶21).
Key Claims at a Glance
- The complaint asserts independent claim 14 and dependent claims 2, 5, 6, and 15. (Compl. ¶68).
- Independent Claim 14 recites a programmed digital computer for reproducing audio programs, comprising:
- A mass storage device for storing audio program segments and a "file of data establishing a sequence."
- Input means for accepting user control commands.
- Output means for producing audible sounds.
- Processing means for translating the digital audio into analog audio signals.
- Processing means responsive to a "first" control command (e.g., skip forward) to discontinue playback of the current segment and begin playback of the next segment in the sequence.
- The complaint asserts dependent claims 2, 5, and 6, which depend from independent claim 1. However, the complaint acknowledges that claim 1 was found unpatentable in an IPR proceeding. (Compl. ¶¶50-51).
U.S. Patent No. 7,509,178 - "Audio Program Distribution and Playback System"
- Patent Identification: U.S. Patent No. 7,509,178, "Audio Program Distribution and Playback System," issued March 24, 2009.
The Invention Explained
- Problem Addressed: As a divisional of the '076 patent, the '178 patent addresses the same technical problems of providing user-navigable, dynamic audio content. (’178 Patent, col. 1:12-65).
- The Patented Solution: The invention describes an audio program player capable of downloading audio program segments along with a "sequencing file" that specifies the playlist order. The player is capable of delivering the audio segments in the specified sequence and allows the user to navigate among them. (’178 Patent, col. 2:7-33; Compl. ¶33).
- Technical Importance: The patent further develops the concept of separating content (audio files) from control data (the sequencing file), an architecture that is fundamental to modern playlist-based music and media services. (Compl. ¶33).
Key Claims at a Glance
- The complaint asserts independent claim 14 and dependent claims 5 and 15. (Compl. ¶68).
- Independent Claim 14 recites an audio program player, comprising:
- A memory unit for storing audio files, "program description data," and a "playback session sequencing file."
- A communications port for downloading content.
- One or more controls for user input.
- A display screen for presenting a visual menu of the audio files.
- An audio playback unit.
- A processor that executes programs to perform control functions, including responding to user commands to select a file from the menu, skip forward, or skip backward within the sequence.
- The complaint asserts dependent claim 5, which depends from independent claim 1. As with the ’076 patent, the complaint acknowledges that claim 1 of the ’178 patent was found unpatentable in an IPR proceeding. (Compl. ¶51).
III. The Accused Instrumentality
Product Identification
- The complaint names Google Play Music, software provided with Google Play, and hardware devices (e.g., smartphones, computers, tablets) that incorporate the software, particularly those running the Android operating system. (Compl. ¶¶53, 55, 57).
Functionality and Market Context
- The accused functionality is the ability of Google Play Music to play sequences of selected audio files (i.e., playlists). (Compl. ¶69). The complaint alleges that users can continuously play a playlist and use controls to skip forward to the next audio file or backward in the sequence. (Compl. ¶69). It further alleges the devices are capable of establishing a data communications link to download audio files and sequencing files. (Compl. ¶70).
- The complaint alleges Google Play Music is offered with the Android operating system and is incorporated across a multitude of devices from various manufacturers. (Compl. ¶¶55, 69).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’076 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a programmed digital computer for reproducing audio programs | Google tablets and phones incorporating Google Play Music. | ¶73 | col. 4:32-35 |
| a mass storage device for storing a plurality of digitally recorded audio program segments... and... a file of data establishing a sequence | The storage on said devices, which the complaint alleges are used to store audio files (i.e. playlists). | ¶69 | col. 4:35-38 |
| input means for accepting control commands from a user | The user interface controls on the devices and within the Google Play Music application used to manage playback. | ¶69 | col. 4:40-44 |
| output means for producing audible sounds | The speakers and headphone ports of the accused devices. | ¶35 | col. 4:45-50 |
| processing means for translating said digitally recorded audio program segments into analog audio signals | The audio processing hardware (e.g., sound card) and software of the accused devices. | ¶35 | col. 4:51-54 |
| 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 | The functionality within Google Play Music that responds to a user command to skip forward by discontinuing the current audio file and beginning playback of the next file in the playlist. | ¶69 | col. 4:55-61 |
’178 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An audio program player for automatically playing a collection of audio program files selected by a listener | Google devices (smartphones, tablets, computers) operating Google Play Music. | ¶¶81, 53 | col. 45:60-63 |
| a memory unit for storing: (a) a plurality of audio program files, (b) program description data... and (c) at least one... playback session sequencing file | The memory of the accused devices, which stores audio files, associated metadata, and user-created playlists. | ¶¶69-70 | col. 46:3-7 |
| a communications port for downloading | The wireless communications port (e.g., Wi-Fi, cellular) on the accused devices used to receive audio files. | ¶70 | col. 46:8-11 |
| one or more controls for accepting input commands from said listener | The user interface of Google Play Music and the physical or on-screen buttons of the accused devices. | ¶69 | col. 46:12-14 |
| a display screen for presenting a visual menu listing | The display screens of the accused smartphones, tablets, and computers. | ¶53 | col. 46:15-18 |
| an audio playback unit for automatically and continuously reproducing said audio program files | The audio hardware and software components of the accused devices that play the audio files in the specified playlist order. | ¶69 | col. 46:19-25 |
| a processor for executing one or more utility programs to perform control functions | The central processing units of the accused devices running the Google Play Music software to manage playback according to user commands (e.g., selecting from a menu, skipping forward, skipping backward). | ¶69 | col. 46:26-33 |
- Identified Points of Contention:
- Legal Question: A primary legal question is whether Plaintiff can maintain an infringement action on dependent claims 2, 5, and 6 of the ’076 patent and claim 5 of the ’178 patent, given that their independent base claim (claim 1 in both patents) was cancelled by the PTAB in IPR proceedings.
- Scope Questions: The infringement analysis may turn on whether terms from the 1996-era patents can be construed to read on modern technology. For example, does a cloud-based or dynamically generated playlist in Google Play Music meet the definition of a "file of data establishing a sequence" (’076 patent) or a "playback session sequencing file" (’178 patent) as understood in the patent?
- Technical Questions: The complaint alleges infringement in broad, functional terms. A key factual dispute will likely involve the specific architecture of Google Play Music. For instance, what evidence demonstrates that the accused service stores distinct "program description data" separate from the audio files, as required by claim 14 of the ’178 patent, versus simply reading integrated metadata?
V. Key Claim Terms for Construction
The Term: "file of data establishing a sequence" (’076 Patent, claim 14)
Context and Importance: This term is critical for the ’076 patent. The patent was filed in an era of discrete file transfers (e.g., via FTP). Defendant may argue that a modern, cloud-synchronized playlist is a dynamic database entry or data stream, not a "file" in the patented sense. The construction of this term will determine if the patent's scope can cover modern streaming architectures.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses the invention being implemented on various hardware, including a "portable computer" and "simplified player for mobile use," suggesting the implementation details are not rigidly fixed. (’076 Patent, col. 7:41-66). Practitioners may argue that any data structure that performs the function of establishing a sequence should be covered.
- Evidence for a Narrower Interpretation: The specification repeatedly describes a host server transmitting a "download compilation file" via an "FTP server interface," and a player downloading a "session schedule file." (’076 Patent, Fig. 1; col. 5:46-60; col. 7:5-11). This language may support a narrower interpretation limited to a discrete, self-contained file object.
The Term: "program description data" (’178 Patent, claim 14)
Context and Importance: Claim 14 requires storing this data in memory alongside the audio files and the sequencing file. Its definition is crucial for determining if standard music metadata (e.g., artist, song title) satisfies this limitation, or if a more specific type of descriptive content is required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes using "descriptive text files for subjects and topics" to create a "hierarchical catalog listing." (’076 Patent, col. 19:20-39). This could be argued to encompass the hierarchical nature of modern music metadata (e.g., Genre > Artist > Album > Track).
- Evidence for a Narrower Interpretation: The patent describes a system where these descriptions are separate program segments themselves, containing detailed text like audio announcements or displayable descriptions that can be searched. (’076 Patent, col. 19:20-39). This suggests the term may require more than the simple metadata tags typically embedded with or linked to a music file, pointing instead to a separate, substantive descriptive entry.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Google induces infringement by providing customers with instructions and software (Google Play Music) designed to be used in an infringing manner, such as by creating and playing playlists. (Compl. ¶¶68, 70). It further alleges contributory infringement, stating that Google Play Music is not a staple article of commerce and is especially adapted for infringement. (Compl. ¶54).
- Willful Infringement: The willfulness allegation is based on alleged knowledge of the patents from multiple sources. The complaint alleges Google knew of the patents as early as March 2012 through their identification in the prosecution history of a Google patent. (Compl. ¶71). It also alleges Plaintiff provided direct written notice to Google on September 19, 2012. (Compl. ¶71). Continued infringement after these notices and after the conclusion of the IPR proceedings is asserted as the basis for willfulness and enhanced damages. (Compl. ¶¶78-79, 86-87).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central legal issue will be one of claim viability: can Plaintiff's infringement claims for dependent claims 2, 5, and 6 of the ’076 patent and claim 5 of the ’178 patent proceed, when the independent claim from which they all depend was cancelled by the PTAB?
- A core question will be one of claim scope and technological evolution: can key terms from the 1996-filed patents, such as "file of data establishing a sequence," be construed to cover the architecture of a modern, cloud-based streaming service like Google Play Music, or is there a fundamental mismatch between the technology as patented and as accused?
- A key evidentiary question will be one of infringement mapping: assuming a favorable claim construction, does the specific operation of the Google Play Music software and service meet every element of the asserted independent claims, particularly the requirements for distinct data types like "program description data" and specific processing means for navigating a sequence?