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NOTE: This disposition is nonprecedential.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