Google LLC v. Personal Audio, LLC

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GOOGLE LLC,
Appellant
v.
PERSONAL AUDIO, LLC,
Cross-Appellant
______________________
2017-1162, 2017-1166, 2017-2110, 2017-2111
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00845, IPR2015-00846.
______________________
Decided: August 1, 2018
______________________
DAN L. BAGATELL, Perkins Coie LLP, Hanover, NH,
argued for appellant. Also represented by LANE M.
POLOZOLA, Seattle, WA; MATTHEW NOAH NICHOLSON,
Nicholson De Vos Webster & Elliott LLP, San Jose, CA;
JEANNINE YOO SANO, White & Case LLP, Palo Alto, CA.
VICTOR G. HARDY, Hardy Parrish Yang, LLP, Austin,
TX, argued for cross-appellant. Also represented by
MINGHUI YANG.
______________________
2 GOOGLE LLC v. PERSONAL AUDIO, LLC
Before PROST, Chief Judge, BRYSON and O’MALLEY,
Circuit Judges.
BRYSON, Circuit Judge.
Google LLC appeals from two decisions of the Patent
Trial and Appeal Board in inter partes review proceed-
ings, each involving a patent owned by cross-appellant
Personal Audio, LLC. In the first case, the Board held
claims 1 and 4 of Personal Audio’s U.S. Patent No.
6,199,076 (“the ’076 patent”) to be unpatentable for obvi-
ousness, but held claims 2, 3, 14, and 15 of the ’076 patent
to be patentable. In the second case, the Board held
claims 1–4, 9, and 13 of U.S. Patent No. 7,509,178 (“the
’178 patent”) to be unpatentable for obviousness, but held
claims 5–8, 14–17, 28, and 29 of the ’178 patent to be
patentable. Google appeals from the Board’s non-
obviousness decisions; Personal Audio cross-appeals from
the Board’s obviousness rulings. We affirm.
I
Both the ’076 patent and the ’178 patent are directed
to an audio program and message distribution system in
which a host system organizes and transmits program
segments to a client. The claimed audio program player
receives a sequence of programs to be played based on the
listener’s preferences. The program player also provides
navigation tools that enable the user to navigate to other
program segments or to the beginning of the currently
playing segment.
Certain claims of the two patents recite a “skip back-
ward” program selection command that, depending on the
circumstances, either restarts the current program seg-
ment or begins playback of the previous segment. As
recited by the claims and construed by the Board, the
“skip backward” limitations of both patents disclose a
GOOGLE LLC v. PERSONAL AUDIO, LLC 3
computer algorithm that responds to one or more “back”
commands in different ways depending on how long the
current program has been playing. If the current pro-
gram has played for at least a predetermined period of
time, the “back” command will cause the system to reset
to the beginning of the currently playing program. If the
current program has not played for a predetermined
amount of time, the “back” command will cause the sys-
tem to begin playback of the immediately preceding
segment in the playlist. For example, if the predeter-
mined time is set at three seconds, and track 5 has been
playing for three seconds or less, a “back” command would
begin playback of track 4; if track 5 has been playing for
more than three seconds, a “back” command would restart
track 5.
Certain claims also recite “skip” and “go” commands.
The “skip” command plays the audio segment that follows
the currently playing segment. The “go” command per-
mits the user to play a “listener-selected” audio program
segment. Some claims also include the limitation that the
player reproduces “selected audio program segments,”
which the Board construed as “audio program segments
that have been chosen by or for a user.” Similarly, some
of the claims require that the sequence file be “personal-
ized to the preferences” of the listener.
Google asserted four prior art references before the
Board, of which three are relevant to this appeal. The
first is U.S. Patent App. Pub. No. 2002/0177914 A1
(“Chase”), a published patent application that discloses a
system for distributing nationally syndicated radio pro-
grams or national advertising campaigns to local radio
stations. Chase describes an “affiliate terminal” in which
the local radio station’s disc jockey can pause and play
audio selections from the playlist provided by the national
broadcaster, can go to the next or previous segment, and
4 GOOGLE LLC v. PERSONAL AUDIO, LLC
can use up and down arrows to select and play a desired
program from within the list.
The second prior art reference is an article written by
Shoshana Loeb (“Loeb”). The Loeb reference describes a
personalized music system called “LyricTime,” which can
select audio files for playing based on a listener profile.
The audio files in the LyricTime system can be transmit-
ted to the listener’s computer, television, or other termi-
nal with input capabilities. The system also provides the
listener with the ability to play and pause the audio, and
to navigate forward and backward through the selected
audio files.
The third relevant prior art reference is U.S. Patent
No. 4,811,315, entitled “Disc Player with Program Selec-
tion Control” (“Inazawa”). Inazawa, which describes a
navigation system on a CD player, was introduced to
show the “skip backward” limitations. Inazawa discloses
a system that has two program selection keys, one to
move forward and the other to move in reverse. On a
single press of the “back” button, the device moves the
optical head of the CD player to the beginning of the
currently playing track. Inazawa, col. 6, ll. 17–29. If that
button is pressed a second time within a period designat-
ed as t3, the optical head instead moves to the beginning
of the previous track. Id., col. 6, line 61, to col. 7, line 20.
Otherwise, if that button is pressed a second time after
the expiration of the t3 time period, the optical head again
moves to the beginning of the currently playing track. Id.,
col. 7, ll. 21–31.
Importantly, after the first button press, there is a
short reset period, identified as t2, which is the time that
it takes for the optical head to move into the proper
position at the beginning of the current track. Id., col. 6,
ll. 41–54. The reset time varies, depending on factors
such as the distance between the current location of the
GOOGLE LLC v. PERSONAL AUDIO, LLC 5
optical head and its destination. As a result, the period
designated as t3 does not represent audio playback time,
but rather begins running from the first press of the
program selection key, and includes some amount of reset
time during which no audio playback is occurring.
The Board held that the prior art rendered all of the
limitations obvious except for the “skip backward” limita-
tions. Google appeals from the Board’s conclusion that
Inazawa does not render the “skip backward” limitations
obvious. Personal Audio cross-appeals from the Board’s
conclusions that Chase and Loeb render the claims con-
taining the “skip” and “go” limitations obvious, that Chase
and Loeb disclose “selected audio program segments,” and
that there was a motivation to combine Chase and Loeb in
a manner that would disclose that the audio is “personal-
ized to the preferences” of the listener.
II
In its appeal, Google argues that Inazawa renders the
claims containing the “skip backward” limitations obvi-
ous. Because substantial evidence supports the Board’s
conclusion that Inazawa describes a fundamentally differ-
ent algorithm that does not render the claimed algorithm
obvious, we affirm.
First, Google argues that the time period t3 disclosed
in Inazawa constitutes a “predetermined amount of time”
under the Board’s claim construction and therefore ren-
ders obvious the “skip backward” limitations in claims 5,
6, and 14 of the ’178 patent. The stipulated claim con-
structions, which were adopted by the Board, provide that
the “skip backward” claim limitations either reset to the
beginning of the current segment or the beginning of the
previous segment depending on whether “the currently
playing audio program file has played for a predetermined
amount of time.”
6 GOOGLE LLC v. PERSONAL AUDIO, LLC
The Board distinguished Inazawa from the ’178 pa-
tent on the ground that Inazawa’s algorithm is based not
on a predetermined amount of audio playback, but rather
on a predetermined amount of time after the “back”
button is first pressed. Google argues on appeal that the
’178 patent’s “predetermined amount” of playback can
include the time consumed by the reset function. For that
reason, Google argues, Inazawa’s t3, which includes both
the reset period and the period of playback, can satisfy
the “predetermined amount of time” limitation in the
“skip backward” claims of the ’178 patent.
Google’s argument is unsupported by the claims and
specification of the ’178 patent, both of which support
Personal Audio’s argument that the “predetermined
amount of time” limitation excludes the reset period. For
example, claim 5 of the ’178 patent recites “wherein said
processor responds to a skip backward program selection
command . . . at a time when said currently playing audio
program has played for at least a predetermined amount
of time.” ’178 patent, col. 46, ll. 42–49 (emphasis added).
The claim recites a predetermined amount of play time for
the audio program, which does not contemplate reset
time. Similarly, the specification of the ’178 patent states
that “after any given segment has played for a predeter-
mined amount of time, the BACK command should reset
the playback to [the] beginning of the current segment . . .
unless the playback point is already near the beginning,
in which case the transition is made to the prior seg-
ment.” Id., col. 15, ll. 53–59 (emphasis added).
In an effort to overcome this unambiguous language,
Google relies on figure 3 of the ’178 patent. That figure,
according to Google, shows that the “predetermined
amount” of playback includes reset time.
Figure 3 is a flow chart that illustrates the “principle
[sic] steps performed during a playback session in the
GOOGLE LLC v. PERSONAL AUDIO, LLC 7
illustrative embodiment.” ’178 patent, col. 4, ll. 13–15.
Google points to three boxes in that flow chart. The first,
box 267, contains the instruction “Record Segment End
and New Start.” An arrow points from box 267 to box
269. Box 269 contains the instruction “Reset to Next
Segment Start.” An arrow points from box 269 to box 235.
Box 235 contains the instruction “Continue Playback.”
Google argues that box 267, the “Record Segment” box,
designates when the “predetermined amount” of playback
time begins. For that reason, Google argues, the reset
time represented by box 269 must be part of the “prede-
termined amount of” time for the playback function,
which resumes at box 235. The relevant portion of figure
3 is set forth below.
Google’s argument is predicated on the theory that
box 267 designates when the timer starts for the “prede-
termined amount” of playback. However, the specification
does not draw any connection between the “Record Seg-
ment End and New Start” function and the playback
timer function. The specification explains that “the
system records the start of the new segment on the log file
. . . at 267 and switches the current playback position in
the program sequence file 214 to the new setting at 269,
and the playback continues at 235.” ’178 patent, col. 14,
ll. 35–39; see also id., at col. 15, ll. 59–62 (“The system
responds to BACK commands by resetting the playback
point to the desired point in the sequence and recording
the start time, volume setting and new program segment
ID in the log file as indicated at 267.”). The “Record
Segment End and New Start” function thus refers to
8 GOOGLE LLC v. PERSONAL AUDIO, LLC
entries made in a log file that records the start time and
various other settings; the specification contains nothing
to suggest that the period of playback time is based on the
time of those entries in the log file, rather than when the
playback actually resumes at box 235, “Continue Play-
back.” Because the claims and the specification make
clear that what is measured is “playback” time, Google’s
argument about when the log file is written does not
establish that reset time is included in “playback” time.
We therefore see no error in the Board’s conclusion that
Inazawa’s t3 is a different algorithm than the one claimed
in the ’178 patent.
Google next argues that, even if the claimed “prede-
termined amount of time” excludes reset time, Inazawa
discloses a time period defined by what Google refers to as
“t3 minus t2,” where t2 is defined as the reset time. That
period, according to Google, constitutes a predetermined
period of playback time and therefore renders claims 5, 6,
and 14 of the ’178 patent obvious. Google contends that t3
is a predetermined amount of time and that the reset time
t2 is also a “predetermined amount of time” because while
it is variable, it is “formulaic and time-bound.” According-
ly, Google argues that the time after t2 elapses but before
t3 elapses is a “predetermined amount of” playback time.
Inazawa does not describe the variable period required for
reset following a “back” command as part of the playback
time; rather, the concept of a period consisting of t3 minus
t2 is a construct devised by Google.
Regardless of whether the “t3 minus t2” argument is
timely, 1 it is unpersuasive for the simple reason that t3
1The Board found that the “t3 minus t2” argument
was not timely presented because it was not raised in
Google’s inter partes review petition or in its reply, but
GOOGLE LLC v. PERSONAL AUDIO, LLC 9
minus t2 is not a predetermined amount of playback time.
The reset time t2 in Inazawa is variable and is based on
when the user presses the “back” program selecting key
and various factors about the length of the currently
playing track, the playback point, and the location of the
optical head; it is not and cannot be known in advance,
unlike the predetermined amount of playback time dis-
closed in the ’178 patent. As the Board held, Inazawa
does not use or calculate t3 minus t2; instead, it measures
time from the first button press, and not from the begin-
ning of actual playback. The court sees no error in the
Board’s conclusion that the t3 minus t2 argument is un-
persuasive even if it was properly preserved.
Google also challenges the Board’s conclusion that
Inazawa discloses the skip-back functionality recited in
was raised only during the oral argument before the
Board. Google contends its t3 minus t2 argument was in
made in response to Personal Audio’s argument that the
“predetermined amount of time” had to run from the
beginning of the currently playing file. That argument,
Google contends, was not made until the oral argument
before the Board. Personal Audio, however, argued in its
patent owner’s response that “[n]one of the prior art of
record teach the function provided by the controls of
skipping back based on a predetermined time an audio
segment has played. . . . Inazawa, however, does not
disclose controls based [on] the amount of time that the
audio file has played, but rather based upon whether
‘selection key’ is pressed a second time with a ‘duration t3’
after the first key is pressed.” Given that Personal Audio
made that argument in its written response, there is
substantial force to the Board’s conclusion that Google’s
failure to raise its t3 minus t2 argument in its reply re-
sulted in a waiver of the argument.
10 GOOGLE LLC v. PERSONAL AUDIO, LLC
claims 2, 3, 14, and 15 of the ’076 patent. Although the
language of those claims differs from that of the “skip
backward” claims in the ’178 patent, the parties stipulat-
ed to, and the Board adopted, a construction that required
the skip-back limitations of the ’076 patent to be based on
a calculation of whether “the currently playing program
segment has played for a predetermined amount of time.”
Google raises the same arguments regarding Inazawa
with regard to the ’076 patent that it did for the ’178
patent. For the reasons described above, we affirm the
Board’s conclusion that Inazawa does not disclose the
claimed skip-back functionality of the ’076 patent.
Finally, Google argues that the inclusion of reset time
in the “predetermined amount of” playback time would
have been obvious because “any differences between the
prior art’s skip-back functionality and what the claims
require were mere matters of design choice.” According to
Google, the Board did not conduct a complete analysis of
that argument, and this court should therefore remand
for the Board to give further consideration to that conten-
tion.
Google did not argue in its papers to the Board that
choosing between calculating the “predetermined amount
of time” based on playback time and calculating that
period based on a button press is simply an obvious
design choice. Rather, Google’s only argument to the
Board about obvious design choice was that Inazawa
discloses a “predetermined amount of” playback, and that
the difference between Inazawa’s hardware implementa-
tion and the claimed invention’s software implementation
would have been an obvious design choice. See J.A. 246–
47 (Google’s petition for inter partes review of the ’076
patent, arguing that “[t]he software versus hardware
approaches in Chase and Inazawa are a mere design
choice, and a POSITA would know how to implement the
operation of Inazawa in the context of the software in
GOOGLE LLC v. PERSONAL AUDIO, LLC 11
Chase.”); J.A. 16129 (Google’s petition for inter partes
review of the ’178 patent, making the same argument
verbatim); J.A. 256 (’076 petition, arguing “[i]n essence,
choosing a hardware implementation or a software im-
plementation is merely a design choice, and a POSITA
would know how to implement the operation of Inazawa
in the context of the software of Chase.”); J.A. 16132 (’178
petition, making the same argument verbatim).
Because Google did not present the Board with its
“design choice” argument to bridge the gap between
Inazawa’s algorithm and the one recited in the ’178 and
’076 patents, we do not consider this new argument on
appeal. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed.
Cir. 2012) (“[W]e generally do not consider arguments
that the applicant failed to present to the Board.”).
III
In its cross-appeal, Personal Audio raises three issues.
Because substantial evidence supports the Board’s con-
clusions that the claims the Board held unpatentable
would have been obvious, we affirm.
First, Personal Audio argues that the Board erred in
relying on the same disclosure in the Chase and Loeb
references to satisfy both the “skip” and “go” commands of
claims 1 and 4 of the ’178 patent. As recited in the pa-
tents, the “skip” command directs the player to move to
the next audio segment in the playlist, and the “go” com-
mand directs the player to move to a “listener-selected”
audio segment. Personal Audio argues that neither
Chase nor Loeb teaches an algorithm that enables the
player to skip to a listener-selected song, as required by
the “go” command. Personal Audio further contends that
“skip” and “go” are recited as separate commands, and
that the Board improperly treated them as one and the
same.
12 GOOGLE LLC v. PERSONAL AUDIO, LLC
We find no error in the Board’s legal analysis. The
Board agreed with Google’s argument that the “skip” and
“go” commands can be rendered obvious by the same
portions of prior art. The Board’s holding is consistent
with the principle that in infringement or obviousness
analysis, a single element, feature, or mechanism can
ordinarily satisfy multiple claim limitations, including by
performing multiple claimed functions. See Powell v.
Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed.
Cir. 2011); Linear Tech. Corp. v. ITC, 566 F.3d 1049, 1055
(Fed. Cir. 2009); Rodime PLC v. Seagate Tech., Inc., 174
F.3d 1294, 1305 (Fed. Cir. 1999) (“[A] particular means
may perform more than one function.”); In re Kelley, 305
F.2d 909, 915-16 (CCPA 1962) (same).
As to the Board’s factual analysis, we conclude that
substantial evidence supports the Board’s finding that the
claimed “skip” and “go” functions would have been obvi-
ous in light of Chase and Loeb. The “skip” function recit-
ed in claim 4 is expressly disclosed in both Chase and
Loeb. Personal Audio therefore focuses on the “go” func-
tion recited in claims 1 and 4 and argues that the Board
improperly found that Chase and Loeb rendered that
function obvious. We disagree.
The Board noted that Chase, in referring to a radio
station disc jockey, provides that the “DJ may use
up/down arrows on the remote control terminal to scroll
through a play list displayed to the DJ and select, out of
turn, a segment from the play list.” Google argued, and
the Board agreed, that although Chase and Loeb do not
disclose the precise algorithmic structure identified in the
claim construction, those references render the claimed
algorithmic structure obvious.
In the portions of Google’s petition addressed to the
“go” function, which the Board adopted, Google pointed
out that Chase discloses “that the affiliate terminal’s
GOOGLE LLC v. PERSONAL AUDIO, LLC 13
remote control terminal allows a user to override the
normal sequence of the audio segments by selecting audio
programs out of sequence,” and that control keys on the
remote control terminal “enable the user to select a de-
sired program from within the play list.” Google also
cited expert testimony, which the Board credited, that
Loeb discloses a user interface “for allowing a listener to
control playback of songs including skipping through a
list of selected songs.” And in its reply before the Board,
Google cited the portions of Chase disclosing that the user
may use the control keys “to scroll through a play list”
and to “select, out of turn, a segment from the playlist.”
In support of those arguments, Google’s expert testified
that Chase’s algorithm for navigating to a new program
and beginning the playback of that program “can be
predictably applied for implementing the functionality to
allow a user to select and start playing a program from
the list (such as taught by Loeb).” The Board’s conclusion
that the “skip” and “go” commands would have been
obvious is therefore supported by substantial evidence.
Second, Personal Audio argues that Chase and Loeb
do not render obvious the phrase “reproducing selected
audio program segments,” which appears in the preamble
of claim 1 of the ’076 patent. As construed by the Board,
the term “selected audio program segments” means “audio
program segments that have been chosen by or for a
user.” The Board found that term, which appears only in
the preamble, not to be limiting. In any event, however,
the Board found that Chase discloses that function, as
construed.
We assume, without deciding, that the preamble lan-
guage is limiting; we conclude, however, that the Board’s
finding that Chase discloses reproducing “audio program
segments that have been chosen by or for a user” is sup-
ported by substantial evidence. As the Board found,
Chase teaches that a national broadcaster can create a
14 GOOGLE LLC v. PERSONAL AUDIO, LLC
playlist of audio files to be distributed to an individual
affiliate terminal—that is, audio segments chosen by the
national broadcaster for an individual disc jockey, who is
the user of Chase’s system. Although Personal Audio
urged the Board to adopt a narrower claim construction of
“selected audio program segments,” requiring a selection
based on the individual preferences of that user, the
Board rejected that argument as being unsupported by
the language of the claims or the specification, and Per-
sonal Audio does not appeal the Board’s claim construc-
tion. Instead, Personal Audio argues that the Board’s
claim construction should be interpreted to refer only to
selections made by or for individual listeners. Personal
Audio characterizes the Chase reference as teaching the
selection of programs “for producers, DJs, and other non-
users,” and therefore contends that the Board’s obvious-
ness analysis, which relied on Chase, is flawed.
We see no reason to disturb the Board’s ruling on that
issue. The Board’s reference to program segments “that
have been chosen by or for a user” does not on its face
require that the selections be based on the individual
preferences of particular users. Moreover, the specifica-
tion of the ’076 patent makes clear that program selec-
tions can be based on group characteristics of users,
indicating that the referenced selections are not limited to
those made by individual users or based on individual
user preferences. Thus, as the Board concluded, the
language of the claim construction does not exclude
“systems in which a broadcaster selects audio program
segments for play by a DJ.” 2
2 We also reject Personal Audio’s argument that a
disc jockey cannot be a “user” within the meaning of the
claim construction, as there is no support in the patent for
imposing such a restriction on the meaning of “user.”
GOOGLE LLC v. PERSONAL AUDIO, LLC 15
Finally, Personal Audio makes the related argument
that the Board failed to articulate a motivation to com-
bine Chase and Loeb with respect to the claims that
require playback that is “personalized to the preferences
of [the] listener.” Google’s petition and the Board’s deci-
sion relied on Loeb as disclosing this limitation, and it
does not appear that Personal Audio has challenged that
finding on appeal. Rather, Personal Audio argues that
“the Board provide[d] no explanation for why one would
modify Chase to provide personalization based [on] pref-
erences of the DJ when Chase is explicitly intended to
provide personalization to a general broadcast radio
audience who unquestionably do not use the Chase sys-
tem.”
The Board addressed that argument directly. It found
that both Chase and Loeb are “directed to audio program
players and network-based audio systems,” and that both
Chase and Loeb suggest “distributing audio to selected
end users,” which include Chase’s disc jockeys as the
users of the Chase system. The Board correctly noted
that obviousness does not require the physical combina-
tion of elements from various references, but instead
requires an assessment of what the combined teachings of
those references would have suggested to a person of skill
in the art. Because the Board’s finding of a motivation to
combine the references is supported by substantial evi-
dence, and because Loeb discloses playback of audio
“personalized to the preferences of [the] listener,” we
affirm the Board’s ruling as to the claims that were found
to be unpatentable.
Each party shall bear its own costs for this appeal.
AFFIRMED