PTAB

IPR2018-01758

Unified Patents Inc. v. MOAEC Technologies LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Music Organizer and Entertainment Center
  • Brief Description: The ’539 patent is directed to a system that allows users to access and store music from networks. The system includes a graphical user interface (GUI) for searching a music collection using various categories and for displaying an "ownership category flag" that indicates whether a music selection is stored locally on the user's device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nathan in view of Iki - Claims 1-6, 9, 15-16, 19, 21, and 24 are obvious over Nathan in view of Iki.

  • Prior Art Relied Upon: Nathan (Patent 6,182,126) and Iki (Patent 6,816,172).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Nathan, which discloses a "digital home audiovisual information recording and playback apparatus," teaches most elements of the challenged claims, including storing and organizing music selections that can be searched by category (e.g., rock, dance, jazz). However, Nathan does not explicitly disclose the key limitation of an "ownership category flag" indicating that a music selection is currently resident on the local device. Petitioner argued that Iki remedies this deficiency. Iki discloses a multimedia entertainment system with a GUI that can determine and present the "location of the entertainment system data," including whether it is on a "local storage medium," thereby teaching the missing ownership flag element.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Nathan and Iki to improve the user experience of Nathan's system. Because Nathan's system has resource constraints, a POSITA would be motivated to incorporate Iki's teaching of indicating data location to inform the user whether a desired music selection could be played instantly from local storage or would require downloading from a network. This simple modification would solve a known problem in the art.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. The proposed modification—adding a location data field to Nathan's existing "catalog of musical titles"—was argued to be a minor, predictable database update well within the technical grasp of a POSITA.

Ground 2: Obviousness over Leeke in view of Corwin - Claims 1-6, 14-16, 19, 21, and 24 are obvious over Leeke in view of Corwin.

  • Prior Art Relied Upon: Leeke (Patent 6,587,127) and Corwin (Patent 5,808,225).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Leeke discloses a system for collecting, personalizing, and playing audio content from various network sources, teaching nearly all claim limitations. Leeke’s system provides a GUI for categorical searching and discloses an indicator for streaming vs. local media, which Petitioner argued teaches the "ownership category flag." While Leeke recognizes bandwidth and storage constraints and is compatible with compressed-data players like RealPlayer, it does not explicitly teach the use of compressed music data. Corwin was cited to supply this element, as it expressly discloses a method for compressing music to address the same problems of limited storage and network bandwidth that Leeke identifies.
    • Motivation to Combine: A POSITA would combine Leeke and Corwin to address the known problems of storage and bandwidth constraints that both references acknowledge. Since Leeke's system already recognizes the need to handle different data formats and quality levels (e.g., low-quality vs. high-quality streams), a POSITA would be motivated to incorporate Corwin's specific compression techniques to improve efficiency, allow higher-quality music over low-bandwidth connections, and reduce storage requirements on the user's device.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Leeke’s system was designed with the modularity to handle various data formats. Integrating the compressed audio format taught by Corwin would be a predictable adaptation to improve the system's performance, not a complex or unpredictable redesign.

4. Key Claim Construction Positions

  • "category flag": Petitioner proposed this term be construed as "indicators of one or more categories." This construction is based on the plain and ordinary meaning of "flag" as a marker or signal used by a computer, which is consistent with the patent's description of using category information to cross-index songs in a database.
  • "ownership category flag": This term was central to the petition. Citing the patent's reexamination history, Petitioner argued the term should be narrowly construed to mean "an indicator that a music selection is currently resident in a storage device of the music organizer and entertainment center." This construction limits the flag's function to indicating local storage status, not legal ownership or a license. This narrow interpretation was critical for arguing that the prior art’s location-indicator features met the claim limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that the primary prior art references relied upon in its grounds (Nathan, Iki, Leeke, and Corwin) were not considered by the USPTO during the original prosecution or the subsequent reexamination of the ’539 patent. Therefore, the petition presented new questions of patentability that had not been previously addressed.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6, 9, 14-16, 19, 21, and 24 of the ’539 patent as unpatentable.