PTAB

IPR2014-01236

PlayBoy Enterprises Inc v. Skky Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: MEDIA DELIVERY PLATFORM
  • Brief Description: The ’875 patent is directed to a method for delivering and playing back compressed digital audio and/or visual files on wireless electronic devices. The disclosure describes a system where users can receive selected media files on demand, over-the-air, from a server to a portable device for playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rolf in view of MP3 Guide - Claims 1-3, 5, 15-21, and 23

  • Prior Art Relied Upon: Rolf (Patent 7,065,342) and the MP3 Guide ("MP3: The Definitive Guide," a publication from March 2000).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rolf teaches a complete system for wirelessly transmitting encoded music from a remote facility to a portable wireless communications device, such as a cellular telephone. Petitioner asserted that Rolf discloses every element of the method claimed in independent claim 1 except for the specific compression steps of "normalizing" and "sampling." Crucially, Petitioner contended that the key "wireless device means" limitation—the basis for the patent's allowance during prosecution—was fully disclosed by the structure of the cellular device in Rolf. The expert declaration mapped Rolf’s processor, memory units, and transceiver to the specific structural components required by the patent's means-plus-function definition. The MP3 Guide was then introduced to show that normalizing and sampling were fundamental, well-known techniques used in the creation of MP3 files to ensure consistent volume levels and manage file size.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Rolf and the MP3 Guide because Rolf explicitly identifies MP3 as a preferred compression format for its wireless music delivery system. The MP3 Guide is a comprehensive technical manual detailing the exact MP3 creation and optimization process. A POSITA seeking to implement Rolf's system would have been directly motivated to consult a reference like the MP3 Guide to apply standard, well-understood MP3 encoding techniques—including normalizing and sampling—to prepare the audio files for efficient wireless transmission.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as the combination involved applying a standard audio processing technique to a compatible system for its intended and predictable purpose of improving audio quality and consistency.

Ground 2: Obviousness over MP3 Guide in view of Omnibook and Xircom - Claims 1-3, 5, 15-21, and 23

  • Prior Art Relied Upon: The MP3 Guide, the Omnibook Publication (an HP OmniBook Service Guide published in Dec. 1999), and the Xircom Publication (a Xircom User's Guide published in Nov. 1998).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the MP3 Guide teaches the core method of compressing digital audio (including normalizing and sampling), storing the files, and making them available for download over the Internet. This combination of references was used to supply the "wireless device means" structure that the MP3 Guide lacks. The Omnibook Publication discloses a portable handheld computer with the necessary internal components (motherboard, CPU, RAM, hard drive, BIOS IC), while the Xircom Publication discloses a cellular modem PC card designed for and listed as an accessory to the Omnibook. Together, Omnibook and Xircom teach a complete, functional portable device capable of wirelessly accessing the Internet over a cellular network to receive data, thereby teaching the structure corresponding to the "wireless device means."
    • Motivation to Combine (for §103 grounds): The motivation to combine was presented as common sense. The Omnibook Publication expressly identified the Xircom modem as a recommended accessory for achieving wireless connectivity. At a time when MP3s were widely available online as described in the MP3 Guide, a POSITA would have been motivated to use this known and commercially available wireless hardware solution to access and download that content. The combination simply applies a known wireless data device to access a popular form of Internet media.
    • Expectation of Success (for §103 grounds): Success would have been expected, as the proposed combination involved using a general-purpose portable computer with a cellular modem for its intended function of downloading files from the Internet, a predictable and routine task at the time.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claim 22, which adds a limitation for using Orthogonal Frequency-Division Multiplexing (OFDM). These grounds argued that combining the primary references from Ground 1 or Ground 2 with a further reference teaching OFDM as a well-known modulation technique for wireless data transmission (OFDM/FM) would have been obvious to a POSITA.

4. Key Claim Construction Positions

  • "wireless device means": Petitioner argued this term is a means-plus-function limitation under pre-AIA 35 U.S.C. §112, ¶ 6, a position allegedly adopted by the patent owner and Examiner during prosecution.
    • Function: "receiving the [transmitted and] compressed audio and/or visual files wirelessly over the air, with or without an Internet network."
    • Structure: The corresponding structure identified in the ’875 patent's specification is a cell phone attached to an accessory unit, or a cell phone embedded with a specialized board that includes a Digital Signal Processor, flash memory, RAM, an initial bootstrap chip, and analog/digital interface elements.
    • Importance: This construction was central to the petition. Petitioner argued that the claims were only allowed because the Examiner incorrectly concluded this specific structure was novel and not present in the prior art. The Petitioner’s invalidity case was therefore premised on demonstrating that this precise structure was, in fact, disclosed and rendered obvious by the prior art combinations.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 5, and 15-23 of the ’875 patent as unpatentable.