Apple Inc v. Chestnut Hill Sound Inc

1. Case Identification

• Case #: IPR2015-01465
• Patent #: 8,725,063
• Filed: June 30, 2015
• Petitioner(s): Apple, Inc.
• Patent Owner(s): Patent GC LLC
• Challenged Claims: 1-61

2. Patent Overview

• Title: Multi-Mode Media Device Using Metadata to Access Media Content
• Brief Description: The ’063 patent describes a digital media device capable of operating in two distinct modes. In a first mode, the device plays media content stored locally. In a second mode, it connects to remote media sources, such as internet services or servers on a local network, to stream or download content for playback on a separate media output unit.

3. Grounds for Unpatentability

Ground 1: Obviousness over Van Der Meulen and Wireless Networking - Claims 1-8, 10-16, 19, 22-26, 28-36, 38-46, 51-52, and 54-61 are obvious over Van Der Meulen in view of general knowledge of wireless networking.

• Prior Art Relied Upon: Van Der Meulen (Patent 6,563,769) and general knowledge of wireless networking (e.g., 802.11 WiFi).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Der Meulen (VDM) teaches all key elements of the claimed method and device. Specifically, VDM discloses a "collection management system" on a consumer electronic device that manages media from local and networked sources. Petitioner asserted this system meets the dual-mode requirement: a "first mode" is disclosed as VDM's "integrated system" which has local storage (a hard drive) and playback capabilities. A "second mode" is disclosed as the system's ability to receive content from remote sources (like Internet sites) and send it to separate "rendering devices" (media output units) over a network. For claims requiring wireless communication, Petitioner contended that VDM’s use of "lightning bolt" symbols in its network diagrams suggests wireless links. Regardless, Petitioner argued it would have been obvious to implement VDM’s generic network using well-known wireless technology.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would incorporate well-known wireless networking into VDM's system to achieve predictable benefits. These motivations included providing users with "increased mobility" and "flexibility" when accessing the network and lessening "the need for expensive wiring or rewiring," all of which were common goals in network design at the time.
  • Expectation of Success: A POSITA would have had a high expectation of success, as 802.11 wireless technology was widespread, standardized, and routinely used to implement the type of generic network described by VDM.

Ground 2: Obviousness over Van Der Meulen and Oppermann - Claims 9, 27, 37, and 53 are obvious over Van Der Meulen in view of Oppermann.

• Prior Art Relied Upon: Van Der Meulen (Patent 6,563,769) and Oppermann (Patent 6,334,157).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring the use of "voice prompts." Petitioner argued that while VDM teaches a graphical user interface for selecting media, Oppermann teaches an "accessibility aid" for computer applications. This aid provides audible descriptions of user interface elements to assist disabled users, such as the blind. Petitioner asserted that adding Oppermann's audible output functionality to VDM's user interface menu would result in the claimed "voice prompts" used in connection with displaying and selecting menu items.
  • Motivation to Combine: A POSITA would combine these references to improve the accessibility of VDM's media management system. The motivation was to apply a known technique (audible UI descriptions from Oppermann) to a known system (the media interface of VDM) to allow disabled persons to interact with it. This was presented as a common-sense design choice to broaden the usability of a consumer product.
  • Expectation of Success: The combination would have yielded predictable results, as modifying user interfaces to add accessibility features for the visually impaired was a known practice in the art.

Ground 3: Obviousness over Van Der Meulen and Robbin - Claims 17, 20, 47, and 49 are obvious over Van Der Meulen in view of Robbin.

• Prior Art Relied Upon: Van Der Meulen (Patent 6,563,769) and Robbin (Application # 2003/0167318).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claims specifying that the local or remote media server is an "iTunes server." Petitioner asserted that VDM teaches a generic local server and a remote media service. Robbin discloses a media synchronization system where a host computer runs a specific application, "iTunes, version 2.0," to manage and update media items on a portable media device over a network. Petitioner argued it would be obvious to implement VDM's generic server (either local or remote) as the specific iTunes server taught by Robbin.
  • Motivation to Combine: A POSITA would have been motivated to modify VDM's system to use an iTunes server for two primary reasons. First, it would allow for interoperability with the large ecosystem of iTunes-compatible devices, such as the iPod. Second, it would enable the VDM system to access media content that was available exclusively through the iTunes platform, thereby increasing the content available to the user.
  • Expectation of Success: The outcome was predictable, as using iTunes to manage and synchronize a media library across a host computer and connected devices was a well-known and commercially widespread paradigm before the patent's priority date.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combining Van Der Meulen with Arnalds (Patent 6,093,880) to teach a "Realplayer server" and with Levy (Patent 7,606,790) to teach that a remote media source is the "Rhapsody" service.

4. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-61 of the ’063 patent as unpatentable.