PTAB

IPR2015-01735

Sirius XM Radio Inc v. Freitas AnGell & Weinberg LLP

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Simultaneous Recording and Playback Apparatus
  • Brief Description: The ’444 patent describes a recording and playback apparatus that allows a user to pause a live audio or video broadcast. The system records the program to a memory unit upon initiation of the pause and allows the user to later resume playback of the recorded material from the beginning of the interruption, while the apparatus continues to record the ongoing live broadcast.

3. Grounds for Unpatentability

Ground 1: Anticipation by Truog - Claims 1, 5, 6, 8, and 14 are anticipated by Truog.

  • Prior Art Relied Upon: Truog ("The Television Pause Function," an M.I.T. thesis published in 1989).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Truog disclosed every element of the challenged independent claims. Truog described a "television pause function" enabling a viewer to pause a live program and later resume watching without missing content. This system used three VCRs controlled by digital circuitry to achieve simultaneous recording and playback. Petitioner contended that Truog’s single "pause" button met the "record key" and "playback key" limitations, as a first press initiated recording and a second press initiated time-delayed playback. Truog also explicitly suggested replacing the VCRs with a hard disk once digital storage became less expensive, disclosing the claimed random-access memory structure. For dependent claims, Truog's use of removable video cassettes met the limitation for a removable storage medium (claims 5-6), and its disclosure of a fast-forward function met the "key means for enabling user control of the rate" (claim 8).

Ground 2: Obviousness over Truog and Yifrach - Claims 1, 5, 6, 7, 8, 9, 10, and 14 are obvious over Truog in view of the Yifrach Patent.

  • Prior Art Relied Upon: Truog (a 1989 M.I.T. thesis) and Yifrach (Patent 5,126,982).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in case Truog was found not to disclose every element. Truog provided the foundational system for pausing a live broadcast with simultaneous record and playback. Petitioner argued that Yifrach supplied any missing details, specifically by teaching a digital random-access memory (RAM) for buffering broadcast signals and a user interface with separate "freeze" (record) and "playback" buttons. The combination therefore explicitly taught a solid-state random access memory (claim 7) and a keyboard with distinct record/playback keys.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to improve Truog's system with a more modern and efficient memory solution. Truog itself motivated this combination by suggesting the use of hard drive memory once it became more affordable. Implementing Truog's functionality using Yifrach's well-understood RAM and separate-key interface was presented as a predictable design choice.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references are in the same technical field of delayed playback of broadcast signals and address the same problem.

Ground 3: Obviousness over Goldwasser and Yifrach - Claims 1, 7, 8, 9, 10, and 14 are obvious over the Goldwasser Patent in view of the Yifrach Patent.

  • Prior Art Relied Upon: Goldwasser (Patent 5,241,428) and Yifrach (Patent 5,126,982).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted this ground as a separate, independent basis for unpatentability. Goldwasser was presented as the primary reference, disclosing a video recorder allowing simultaneous recording and playback using digital random-access memory. It explicitly taught pausing the playback of a program being recorded and later resuming playback, with the time delay equal to the interruption. Petitioner argued Goldwasser disclosed every element of the independent claims. Yifrach was cited to teach an explicit user interface with separate "freeze" and "playback" buttons, which Petitioner argued was an obvious way to implement the "user control panel" described in Goldwasser.
    • Motivation to Combine: A POSITA would have been motivated to combine the references because implementing Goldwasser's user control functions with the specific, well-known button interface from Yifrach was a simple and predictable design choice.
    • Expectation of Success: The combination was argued to be a predictable integration of a known user interface with a system designed for user control, with both references aimed at solving the same technical problem.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, primarily by adding further references to the combinations above. These included adding Vogel (WO 90/15507) to teach a remote control with infrared wireless communication (for claims 2, 3, 4, 13) and adding Ulmer (WO 89/12896) to explicitly teach a frame-advance key for playback control (for claim 10).

4. Key Claim Construction Positions

  • "said storage medium having structure which enables substantially random access..." (Claims 1, 14): Petitioner argued this term should be construed as "a memory structure that permits the medium to be accessed for information retrieval from one location while substantially simultaneously permitting access for storage at another location." This construction was central to mapping the functionality of prior art systems, like Truog's multi-VCR setup or Goldwasser's RAM, onto the claims.
  • "a keyboard having a record key and a playback key" (Claims 1, 14): Petitioner argued that under the broadest reasonable interpretation, this limitation could be met by a single key that performs both functions. This construction was critical for the argument that Truog's single "pause" button, which initiates recording on a first press and resumes playback on a subsequent press, satisfied the claim element.

5. Arguments Regarding Discretionary Denial

  • Petitioner filed a Motion for Joinder to an earlier-instituted inter partes review (IPR), IPR2015-00499, which challenged the same patent. Petitioner noted that its petition relied only on grounds already instituted in that IPR and agreed to be bound by the Board's decisions in that proceeding. Petitioner requested that in the event joinder was not granted, the Board should still institute a proceeding based on the merits of the petition.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-10, 13, and 14 of the ’444 patent as unpatentable.