Spotify Ab v. TijerINO Manuel

1. Case Identification

• Case #: IPR2025-01280
• Patent #: 9,146,925
• Filed: July 11, 2025
• Petitioner(s): Spotify USA Inc.
• Patent Owner(s): Manuel Tijerino
• Challenged Claims: 1-17

2. Patent Overview

• Title: Real Time Music Distribution System
• Brief Description: The ’925 patent discloses a computer-implemented method for distributing new media through internet-connected jukeboxes in public venues. The system allows an artist to create an account, upload media to a central server, and make it available for playback, while also tracking royalties and payments.

3. Grounds for Unpatentability

Ground 1: Obviousness over Laut, Kincaid, and Bongiovi - Claims 1-17 are obvious over Laut in view of Kincaid and Bongiovi.

• Prior Art Relied Upon: Laut (Application # 2004/0243482), Kincaid (Patent 7,469,208), and Bongiovi (Application # 2008/0137881).
• Core Argument for this Ground: Petitioner argued that Laut, which was not considered during prosecution, discloses the foundational networked jukebox system of the ’925 patent. The claims were only allowed after amendments added limitations for audio normalization and dynamic range compression. Petitioner contended these limitations represent well-known, conventional audio processing techniques taught by Kincaid and Bongiovi, which a person of ordinary skill in the art (POSITA) would have been motivated to add to Laut’s system.
  • Prior Art Mapping: Petitioner asserted that Laut teaches a multi-way networked jukebox system where users, including artists, can create accounts and upload content to a central server for distribution and playback across multiple venues. Laut also discloses managing metadata and tracking payments for artists. Kincaid allegedly teaches the claimed step of automatically analyzing audio signals to determine a root mean square (RMS) value and using that value to normalize volume across different tracks. Bongiovi allegedly teaches the claimed step of compressing the audio signal’s dynamic range using a preset compression ratio and threshold, a technique disclosed as particularly useful for improving audio playback quality in high-noise environments like the bars and clubs where Laut’s jukeboxes would be located.
  • Motivation to Combine: A POSITA would combine Laut with Kincaid to solve the problem of inconsistent volume levels among various tracks uploaded by different artists, thereby improving the listener experience. A POSITA would further add Bongiovi’s compression techniques because the public venues described in Laut are typically noisy, making simple volume normalization insufficient. Dynamic range compression would ensure that both quiet and loud passages of a song are audible over ambient noise. Kincaid itself suggests combining its normalization with peak limiting, as taught by Bongiovi.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because all three references relate to computer-based digital audio playback, utilize common hardware components (CPUs, memory, network interfaces), and share common file formats. The combination involved applying known solutions to solve predictable problems.

Ground 2: Obviousness over Dion and Nathan-109 - Claims 1-17 are obvious over Dion in view of Nathan-109.

• Prior Art Relied Upon: Dion (Patent 10,373,420) and Nathan-109 (Patent 7,107,109).
• Core Argument for this Ground: Petitioner contended that Dion, a reference from the same field and assigned to the same entity as Nathan-109, discloses a comprehensive internet-enabled jukebox system with nearly all the features of the ’925 patent. The specific audio processing limitations that enabled allowance of the ’925 patent claims are allegedly taught by Nathan-109, which was not considered during prosecution.
  • Prior Art Mapping: Petitioner argued that Dion discloses internet-enabled jukeboxes in public venues that allow registered users to upload new media, which is stored on a central server for distribution. The system uses metadata (including user avatars), tracks royalties, and provides a user interface for creating accounts and selecting music. Nathan-109 allegedly discloses the claimed audio processing, teaching the adjustment of a song’s sound level based on an RMS value analysis to achieve consistent volume across different recordings. Nathan-109 also teaches dynamically adjusting gain for different frequency components, which effectively compresses the audio signal’s dynamic range to make songs more audible without exceeding a maximum volume.
  • Motivation to Combine: While Dion discloses performing volume adjustments, it does not provide specific implementation details. A POSITA seeking to implement this feature would have been motivated to look to other references and would have found Nathan-109’s solution particularly applicable and beneficial. The strong connection between the references—common technology (digital jukeboxes) and common ownership (TouchTunes Music Corporation)—would have further motivated the combination.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the references use common components and are directed to the same technical field. The combination would have been predictable and would have involved applying the specific audio normalization technique from Nathan-109 to the general jukebox system of Dion.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) or §325(d).
• Against Fintiv Denial (§314(a)): Petitioner contended that the scheduled trial date in the parallel district court litigation is unrealistic and will occur long after a Final Written Decision, as the litigation is effectively stayed pending resolution of a motion to dismiss for improper venue. Consequently, the court has not invested substantial resources in the merits of the case. Petitioner also stipulated that it would not pursue the same invalidity grounds in the litigation if an IPR is instituted.
• Against Same Art/Arguments Denial (§325(d)): For Ground 1, none of the asserted prior art was considered during prosecution. For Ground 2, while the published application corresponding to Dion was before the Examiner, it was not the basis for a rejection, and the key secondary reference, Nathan-109, was never presented to or considered by the Office. Petitioner argued the Examiner committed a material error by failing to find and apply Nathan-109, which teaches the very limitations the Examiner suggested for allowance.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-17 of the ’925 patent as unpatentable.