PTAB

IPR2015-00494

Microsoft Corp v. Personal Audio LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Audio Program Player Including a Dynamic Program Selection Controller
  • Brief Description: The ’076 patent relates to audio program distribution and playback systems that receive and store playlists for playing audio segments. The patent describes embodiments that include user controls permitting forward and backward skipping of program segments within a defined sequence.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-8, 14, and 15 under 35 U.S.C. §102 by Kan

  • Prior Art Relied Upon: Kan (a November 1994 Usenet newsgroup publication describing the XMCD 1.2 software).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kan, an open-source software application for a CD player, disclosed every limitation of the challenged claims. Kan used a downloadable database file to store a custom play program (a sequence file) for audio tracks on a CD. It implemented a full suite of CD control functions, including continuous play, next track, and previous track. Petitioner asserted that Kan’s “next track” command taught the claimed forward-skipping functionality. For backward-skipping (claims 2, 3, 14, 15), Kan disclosed a “previous track button” that would either restart the current track or skip to the preceding track based on how long the current track had been playing, directly corresponding to the logic in the dependent claims. Kan also taught editing a playlist (claim 5), reordering a sequence (claim 6), and varying playback rate (claim 7).

Ground 2: Obviousness of Claims 1-17 under 35 U.S.C. §103 over Kan in view of the JSInc Help File and Arons

  • Prior Art Relied Upon: Kan, JSInc Help File (a 1995 help file for Mod4Win 2.2 software), and Arons (a 1994 Ph.D. thesis from MIT).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Kan taught the baseline audio player with playlist and skipping functions, as detailed in Ground 1. The JSInc Help File was argued to complement Kan by disclosing Mod4Win, a software player that used playlist files (.mol) to play stored digital audio files (.mod files), not just tracks from a physical CD. JSInc taught standard player controls for these playlists, including editing features like drag-and-drop reordering, which Petitioner mapped to limitations such as claim 6.
    • Arons was introduced to teach more advanced navigation and features not explicitly found in Kan or JSInc. Arons disclosed creating a separate "structure file" for an audio recording that defined segments based on hierarchical levels (e.g., speaker changes, topics). This structure file enabled content-aware navigation, such as "jump forward" or "jump backward" commands to move between segments of a specific type (a LocType), which Petitioner argued taught the more nuanced skipping limitations. Arons also explicitly taught bookmarking (claim 10), descriptive summary segments for news programs (claims 11 and 16), and using a microphone for voice commands (claims 13 and 17).
    • Motivation to Combine: A POSITA would combine these references to improve upon existing technology. Kan was open-source software that expressly invited others to add enhancements. Arons taught user-desired improvements for navigating audio content, and the JSInc Help File described a player for stored digital audio files and contemplated future projects combining its features with a CD player. Petitioner argued it would have been obvious to a POSITA to enhance Kan’s CD player by incorporating the improved playlist management for stored files from JSInc and the advanced, content-aware navigation, bookmarking, and voice-control features taught by Arons.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved integrating known software features and modules to enhance an existing audio player application, a common practice in the field of software development at the time.

4. Key Claim Construction Positions

  • Petitioner argued that several limitations should be construed as means-plus-function elements under 35 U.S.C. §112, ¶ 6. A central contention revolved around the construction of terms related to navigating between segments of a specific type or category.
  • Petitioner highlighted that in a prior litigation involving the ’076 patent, the Patent Owner had advocated for a broad interpretation of the structural element "LocType" (a type identifier for a program segment). Under that interpretation, a LocType could be merely "implicit" and identical for all segments in a playlist. Petitioner adopted this broad construction to argue that the simple "next track" and "previous track" functions in the prior art met the claim limitations requiring navigation between segments of a particular type, as all tracks implicitly shared the same LocType.

5. Key Technical Contentions (Beyond Claim Construction)

  • A foundational contention was that the prior art references—Kan (a Usenet posting), JSInc Help File (software documentation available on FTP sites), and Arons (a university thesis)—qualified as "printed publications" under §102. Petitioner dedicated significant argument to demonstrating that these materials were sufficiently disseminated and publicly accessible to persons of ordinary skill in the art prior to the patent's critical date. This included evidence of Usenet group readership, public FTP site accessibility, and the cataloging and indexing of the Arons thesis in university and dissertation libraries.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-17 of the ’076 patent as unpatentable.