PTAB

IPR2023-00294

Sony Group Corp v. inMusic Brands Inc

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1. Case Identification

2. Patent Overview

  • Title: Turntable with Digital Output
  • Brief Description: The ’498 patent describes a turntable apparatus that includes an integrated analog-to-digital converter (ADC) and a controller. The system converts the analog audio signal from a phono cartridge into a digital signal and outputs it from the turntable using a standard computer protocol, such as USB or Firewire.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 4-6 are obvious over Cortellesi

  • Prior Art Relied Upon: Cortellesi (European Pat. Publication EP 0999553 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cortellesi, which discloses a portable apparatus for professional DJs, teaches all elements of the challenged claims. Cortellesi describes an apparatus for playing and digitally storing music from sources including "record players." The apparatus explicitly includes an internal analog-to-digital converter (CA/D) and a microprocessor controller (EC) that outputs data via a USB interface. Petitioner contended that Cortellesi’s depiction of a "common record player" (Fig. 4) as part of its apparatus inherently includes the standard, unclaimed components of a rotatable platter, tonearm, and phono cartridge, even if not explicitly named.
    • Motivation to Combine (for §103 grounds): The motivation was presented as inherent to Cortellesi's purpose. Cortellesi aims to solve the problem of DJs needing to transport large vinyl collections by enabling them to digitize music from "vinyl records." Petitioner argued a POSITA would have been motivated to use the integrated "common record player" in Cortellesi's apparatus to play a vinyl record and connect its analog output to the disclosed internal ADC and controller, thereby digitizing the audio for storage or processing as taught.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success because connecting a turntable's analog output to an ADC and controller was a well-known, predictable process for digitizing audio at the time.

Ground 2: Claims 1-2 and 4-6 are obvious over Spencer in view of Cohen

  • Prior Art Relied Upon: Spencer (Application # 2004/0089795) and Cohen (Application # 2003/0206506).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Spencer teaches a turntable with all standard components (platter, tonearm, phono cartridge) that explicitly outputs "digitized audio signals" through a built-in USB port. However, Spencer does not expressly disclose the internal ADC and controller used to perform the digitization. Cohen was offered to supply this missing element, as it teaches a broadly applicable system for converting the analog output of a turntable into a digital data stream using an explicit ADC and a microprocessor/controller. The combination, Petitioner argued, meets all limitations.
    • Motivation to Combine (for §103 grounds): A POSITA seeking to implement the "digitized audio" output taught by Spencer would have looked to conventional methods for digitizing a turntable's analog signal. Petitioner argued that Cohen provides precisely such a solution. A POSITA would have been motivated to incorporate Cohen's well-known ADC and controller circuitry into Spencer's turntable to achieve the desired digitized USB output. Integrating these components inside Spencer's turntable housing would be a simple matter of design choice to improve portability, protect the electronics, and reduce external wiring.
    • Expectation of Success: The combination involved applying a known technique from Cohen to a known device from Spencer to achieve a predictable and desired result. Petitioner argued this would be a straightforward implementation for a POSITA with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claim 3, which requires a Firewire protocol, by combining the primary references of Ground 1 (Cortellesi) and Ground 2 (Spencer and Cohen) with Georges (Application # 2003/0131715), which taught Firewire as a known high-speed bus alternative to USB for transmitting audio data.

4. Key Claim Construction Positions

  • Petitioner proposed that the term "turntable" in claim 1 should be construed to mean the entire appliance for playing records, including its cabinet, and not merely the rotatable platter and drive mechanism. This construction was argued to be critical, as the claims require the ADC and controller to be "included within said turntable." Petitioner contended this limitation is logical only if "turntable" refers to the entire apparatus housing, rather than just the moving platter assembly.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d), noting that the primary prior art references (Cortellesi and Spencer) were not of record during prosecution. Petitioner asserted these references provide stronger teachings regarding the key limitation—the internal integration of the ADC and controller—than the art the examiner previously considered, which was the stated basis for allowance.
  • Petitioner also argued against discretionary denial under Fintiv factors (§314(a)), stating that the parallel district court litigation was in its infancy with no trial date set. Furthermore, Petitioner stated its intent to move for a stay in the district court pending the outcome of the IPR, weighing in favor of institution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’498 patent as unpatentable.