Microsoft Corp v. Personal Audio LLC

1. Case Identification

• Case #: IPR2015-00500
• Patent #: 7,509,178
• Filed: December 24, 2014
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Personal Audio
• Challenged Claims: 1-11, 13-15, and 28-29

2. Patent Overview

• Title: Audio Program Distribution and Playback System
• Brief Description: The ’178 patent discloses an audio program player that downloads and stores a sequencing file (playlist) and corresponding audio files from a server. The system provides user controls to navigate the playlist, including skipping forward and backward between audio segments.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 and 13 are obvious over JSInc, Kan, and the Windows 95 Resource Kit.

• Prior Art Relied Upon: JSInc (a 1995 help file for Mod4Win audio software), Kan (a 1994 Usenet posting describing XMCD software), and the Windows 95 Resource Kit (a 1995 technical guide).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references taught every limitation of the independent claims. JSInc was asserted to disclose a Windows-based audio player (Mod4Win) that used a sequencing file (.mol playlist) to play audio files (.MOD files) and featured a full set of CD-player-like controls, including continuous play, next song, and previous song. Kan was argued to disclose a similar software CD player (XMCD) that used a downloadable database file to create custom play programs, which could be stored on and retrieved from a remote Network File System (NFS) server. The Windows 95 Resource Kit was cited for its disclosure of basic peer-to-peer networking, teaching a POSITA how to configure one Windows 95 machine as a file server for another client machine to download files. Together, Petitioner contended these references disclosed an audio player that downloads sequencing and audio files from a server, stores them locally, and provides user controls for playback.
  • Motivation to Combine: Petitioner asserted multiple motivations. JSInc itself contemplated a future version that would be a "CD Player that looks like Mod4Win, features a database for your disks, and has all the functions of a professional CD player," directly pointing to the database functionality taught by Kan. Kan, as open-source software, expressly invited improvements. A POSITA would combine the player functionality of JSInc with Kan's superior database and genre-based navigation features. Adding the networking capabilities from the Windows 95 Resource Kit was presented as an obvious implementation detail to facilitate the downloading of playlists and audio files between machines, a feature contemplated by both JSInc and Kan.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success in combining these known software components, as it involved integrating well-understood technologies: a software media player, a file database, and standard client-server networking.

Ground 2: Claims 4, 6, 14-15, and 28-29 are obvious over JSInc, Kan, the Windows 95 Resource Kit, and Arons.

• Prior Art Relied Upon: JSInc (a 1995 help file), Kan (a 1994 Usenet posting), the Windows 95 Resource Kit (a 1995 technical guide), and Arons (a 1994 Ph.D. thesis from MIT).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1, adding Arons to teach limitations in dependent claims related to hierarchical navigation. Petitioner argued Arons disclosed a system for navigating audio by jumping between segments based on an explicit, content-based hierarchy (e.g., by speaker change). This was achieved by scanning a separate "structure file" that identified segments and their corresponding hierarchy level. Petitioner contended this teaching directly corresponded to the "LocType" structure recited in the challenged claims, which enables skipping forward or backward to the next segment of a specific type or category.
  • Motivation to Combine: The motivation to add Arons to the primary combination was to improve usability. Petitioner cited Arons, which noted that users found searching audio on CDs to be "time consuming." Arons was presented as teaching "simple and efficient methods for skimming, browsing, navigating and finding information in speech interfaces." A POSITA would combine the content-based jump commands from Arons with the player system of JSInc/Kan to provide the enhanced, non-linear navigation capabilities that users desired.

4. Key Claim Construction Positions

• Petitioner dedicated significant argument to the construction of several means-plus-function limitations, adopting constructions from a prior litigation involving the patent owner (the Apple litigation) under the broadest reasonable interpretation standard.
• A key focus was the structure corresponding to the "skip forward" and "skip backward" functions (claims 4 and 6), which requires scanning a sequencing file to locate a "Selection_Record of the appropriate LocType."
• Petitioner highlighted that in the Apple litigation, the Patent Owner’s expert had argued that this limitation did not require an "explicit LocType" and could be satisfied by an "implicit" one. Petitioner leveraged this broad construction to argue that the genre-based navigation in Kan and the hierarchical jumping in Arons met this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• A foundational contention of the petition was that JSInc, Kan, and Arons qualified as prior art "printed publications" under 35 U.S.C. §102(b), despite not being traditional publications.
• Petitioner argued that the JSInc help file was publicly accessible because the Mod4Win software containing it was announced on multiple Usenet groups and made available for download from numerous public FTP sites.
• Similarly, Kan was argued to be a printed publication because it was disseminated to a large, skilled audience via a Usenet newsgroup and remained publicly accessible and searchable in the newsgroup's archives.
• Arons was argued to be publicly accessible because the thesis was cataloged in the MIT library system and its abstract and ordering information were widely published in Dissertation Abstracts International (DAI), making it available to any interested person in the art.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-11, 13-15, and 28-29 of the ’178 patent as unpatentable.