PTAB

IPR2017-01867

Sony Corp v. ARRIS Enterprises LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Audio Capture and Communication in an Interactive Television System
  • Brief Description: The ’880 patent discloses methods for capturing and communicating audio signals within an interactive television system, allowing remotely located viewers to converse. The system uses a microphone-equipped remote control to send audio to a first set-top box (STB), which records the audio, transmits it over a network to a second STB, and stores it for later playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bartfeld - Claims 1 and 4-10 are obvious over Bartfeld.

  • Prior Art Relied Upon: Bartfeld (Patent 7,571,458).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bartfeld, which was not considered during the original prosecution, discloses all elements of independent claim 1. Bartfeld teaches an interactive television messaging system that allows users to send and receive voice messages. Petitioner contended Bartfeld discloses generating an audio signal with a microphone integrated into a remote control, wirelessly transmitting it to a first STB, recording the audio in a digital format within that STB (e.g., as part of creating a voice-message email attachment), transmitting the recorded signal over a network, and storing it within a second STB for later selective playback by the recipient.
    • Motivation to Combine (for §103 grounds): The argument relied on combining different disclosed embodiments within Bartfeld. Petitioner asserted a person of ordinary skill in the art (POSITA) would find it obvious to integrate Bartfeld's remote control with a built-in microphone (from its Fig. 19) into its overall system architecture (Fig. 20). The motivation provided by Bartfeld itself was to enhance "usability and user friendliness" by having a single portable control device.
    • Expectation of Success: A POSITA would have had a high expectation of success, as this involved combining known components from a single reference for their intended and predictable functions.

Ground 2: Obviousness over Bartfeld and Lund - Claims 1-10 and 12-24 are obvious over Bartfeld in view of Lund.

  • Prior Art Relied Upon: Bartfeld (Patent 7,571,458) and Lund (Patent 7,266,834).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the teachings of Bartfeld for the core "store-and-forward" messaging system and added Lund to address limitations of independent claim 12 and its dependents. Petitioner argued that Lund, which also describes an interactive television system, explicitly teaches key features not expressly detailed in Bartfeld. Specifically, Lund discloses an STB with its own internal microphone and a remote control with specifically-designated buttons that allow a user to switch between using the STB's internal microphone (a "speaker phone" mode) and a microphone integrated into the remote control (a "cordless telephone" mode). This combination allegedly rendered claim 12's microphone-switching limitation obvious.
    • Motivation to Combine: Petitioner argued a POSITA would combine Lund's microphone selection and switching capabilities into Bartfeld's messaging system to provide users with greater flexibility and convenience. This combination would allow users to choose the most effective communication method for their situation—a handset-style mode via the remote for private conversations or a speakerphone mode via the STB for group conversations.
    • Expectation of Success: The combination was presented as a predictable integration of complementary features from similar interactive television systems, which would have yielded the expected result of a more versatile user interface.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for specific dependent claims. Claims 6 and 22 (requiring MP3 format) were challenged over Bartfeld and Lund with the addition of Kaneko (Patent 6,332,139), which taught MP3 as a known voice compression format. Claim 11 (requiring an internal speaker in the receiving device) was challenged over Bartfeld and Lund with the addition of Tidwell (Patent 6,535,590), which disclosed integrating speakers directly into an STB as a matter of design choice.

4. Key Claim Construction Positions

  • "recording the audio signal/stream": Petitioner proposed construing this term to mean "storing the audio signal/stream." This construction was based on intrinsic evidence, including arguments made by the patent owner during prosecution that equated "recording" with "storing" to distinguish the claimed "store-and-forward" system from prior art disclosing instantaneous communications.
  • "audio stream": Petitioner proposed this term be construed as "digital signals containing audio information for transmission over a network." This was based on the patent's consistent disclosure of transforming an "audio signal" (which could be analog or digital) into an "audio stream" specifically for network transmission. This construction supported the argument that Bartfeld’s transmission of digital voice messages over a network met this limitation.
  • "the receiving device": For dependent claims 8-11, Petitioner interpreted this term as "the second set top box," consistent with an Examiner's Amendment made to independent claim 1 during prosecution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’880 patent as unpatentable.