Personal Audio LLC v. Google LLC
Filing
447
MEMORANDUM OPINION Signed by Judge Colm F. Connolly on 1/6/2020. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONAL AUDIO, LLC,
Plaintiff,
V.
Civil Action No. 17-1751-CFC-CJB
GOOGLE, INC.,
Defendant.
Brian Farnan, Michael Farnan, FARNAN LLP, Wilmington, Delaware; Douglas
Hahn, Salil Bali, STRADLING YOCCA CARLSON & RAUTH, P.C., Newport
Beach, California; Henning Schmidt, Minghui Yang, R. Floyd Walker, Victor
Hardy, William Parrish, HARDY, PARISH, YANG, LLP, Austin, Texas
Counsel for Plaintiff
Brian Egan, Jack Blumenfeld, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, Delaware; Antonia Sistos, David Perlson, Melissa Baily, QUINN
EMANUAL, URQUHART & SULLIVAN, LLP, San Francisco, California
Counsel for Defendant
MEMORANDUM OPINION
January 6, 2020
Wilmington, Delaware
UNITED STATES DISTRICT JUDGE
Plaintiff Personal Audio, LLC (PA) has sued Google, Inc. for infringement
of two patents: U.S. Patent Nos. 6,199,076 BI (the #076 patent) and 7,509,178 B2
(the #178 patent). D.I. 38. Claim construction was referred to the Magistrate
Judge, who held a Markman hearing and issued three Reports and
Recommendations (Reports) recommending that I adopt constructions for ten
disputed terms. D.I. 331; D.I. 372; D.I. 406. The parties have filed objections to
five of the Magistrate Judge's recommended constructions. D.I. 350; D.I. 380; D.I.
409. I review de novo the Magistrate Judge's conclusions. See St. Clair
Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., 691 F. Supp. 2d
538, 541-42 (D. Del. 2010) ("Objections to the magistrate judge's conclusions
with regard to the legal issue of claim construction are reviewed de novo."); Fed.
R. Civ. P. 72(b)(3).
I.
DISCUSSION
A.
January 16, 2019 Report and Recommendation
In his first Report, dated January 16, 2019, the Magistrate Judge
recommended constructions for three of the disputed claim terms. D .I. 331.
Google objects to the January Report's constructions of the "sequencing file" and
"means responsive" terms.
1.
Sequencing file
Term: sequencing file (#178 patent, claims 1-13); file of data establishing a
sequence (#076 patent, all asserted claims); playback session sequencing file
#178 atent, claims 14-21, 28, 29 .
PA's Proposed Construction: a file of data that identifies the order in which
audio ro am se ents chosen b or for a user are to be la ed
Google's Proposed Construction: a file that is received by the player, stored,
and used by the processor to both control playback of each song in the ordered
se uence and res ond to control commands
Report's Construction: a file of data that identifies the order in which audio
ro am se ments chosen b or for a user are to be la ed
The Court's Construction: a file that is received by the player, stored, and used
by the processor to both control playback of each song in the ordered sequence
and res ond to control commands
Like the Magistrate Judge, I reject Google's argument that the claim
language imposes the three use limitations for the term "sequencing file" in
Google's proposed construction. It is true that the claim language literally requires
that a single sequencing file be downloaded and stored, but the claim language
does not literally require that the same sequencing file be used by the processor.
Rather, the literal language states only that the processor "continuously deliver[ ] a
succession of said audio program files ... in said ordered sequence specified by
the said sequencing file." #178 patent at claim 1 (46:9-13). Thus, the claim
language by itself allows for, but does not require, a single sequencing file to be
used by the processor.
I disagree, however, with the Magistrate Judge's conclusion that Google's
proposed construction of the term is not set forth clearly and unequivocally in the
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prosecution history. In my view, the following excerpt from the prosecution
constitutes a clear and unequivocal definition of the term "sequencing file":
G. Proper Interpretation of "Sequencing File" In Light
of Specification and Prosecution History
In light of the specification and file history excerpts quoted
above, the claim term "sequencing file" (which appears in
all [#] 178 patent claims and was not a term of art in 1996)
is readily understandable to one of skill in the art as a file
that is received by the player, stored, and used by the
processor to both control playback of each song in the
ordered sequence and respond to control commands.
[12:16-19; 12:27-28; 34:17-19] It is used to determine, for
instance, what song is to be played next if the user wishes
to skip forward or back or select a specific song. It is not
simply a playlist, but rather a file of data that the player
references when the player is deciding what audio segment
to play in response to the presence or absence of a control
command.
D.I. 160, Ex. 11 at 8 (emphasis added) (second set of brackets in original). This
definition is consistent with another clear and unequivocal instance of
lexicography in the prosecution history:
As discussed below, the term "sequencing file" of
independent claim 1 and the term "playback session
sequencing file" of independent claim 14, when
interpreted in light of the [#] 178 patent specification and
file history, should be interpreted to mean "a file that is
received by the player and used by the processor to both
control playback of each song in the ordered sequence and
respond to control commands." The claimed sequencing
file is received by the player and used by the processor to
both control playback of each song in the ordered
sequence and respond to control commands. [12:16-19;
34:17-23] .... The downloaded, locally-stored sequencing
3
file thus specifies an ordered sequence of audio files to
play (e.g., in case the listener wants to just listen such as
while driving) . . . .
D.I. 160, Ex. 11 at 5 (emphasis added) (second set of brackets in original).
The Magistrate Judge found that "[t]hese statements may well not have been
intended to define a 'sequencing file' generally" because "one could also
reasonably interpret [them] in line with PA's explanation" that the statements
"could be reasonably seen as being 'directed to the combination of explicit
limitations directed to the sequencing file found in the claims."' D.I. 331 at 31
(quoting D.I. 176 at 6). I disagree with this finding because (1) the statements
expressly define "the term" sequencing file, not the claimed sequencing file; and
(2) as the Magistrate Judge also found earlier in his Report (and correctly in my
view), the claim language does not include the combination of the explicit
limitations set forth in the statements from the prosecution, see D.I. 331 at 21-22
(noting that the claims "do not explicitly require that the sequence may be found
only on that sequencing file at the time the sequence is used" but "simply require
that the sequence itself is origi.nally found on the sequencing file referenced in the
claims" (emphasis in original)).
"Applicants can define (lexicography), explain, or disavow claim scope
during prosecution." Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 134243 (Fed. Cir. 2015). "To act as a lexicographer, a patentee must 'clearly set forth a
4
definition of the disputed claim term' and 'clearly express an intent to redefine the
term."' Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed.
Cir. 2016) (quoting Thomer v. Sony Computer Entm 't Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012)). Here, the above-quoted excerpts from the prosecution
history clearly set forth the definition of "sequencing file" proposed by Google and
therefore I will adopt that definition and reject the Magistrate Judge's
recommendation with respect to that term.
2.
"means responsive" terms
The "means responsive" terms are three terms found in three claims of the
#076 patent. The first term is a means responsive to a user's "skip command" and
the second two terms are a means responsive to a user's single and double "back
commands." The parties agree that these limitations are means-plus-function
limitations governed by 35 U.S.C. § 112(6), and they agree on the functions
corresponding to those limitations. D.I. 331 at 34. They dispute, however, how to
construe the structure corresponding to those functions. See id. at 3 5-3 9.
a.
Skip Command in Claim 1 of the #076 Patent
Term: means responsive to said first command for discontinuing the
reproduction of the currently playing program segment and instead continuing
the reproduction at the beginning of a program segment which follows said
current! la in ro ram in said se uence #07 6 atent, claim I
PA's Proposed Construction of Step 1 of the Corresponding Structure:
scanning forward in the sequence established by the sequencing file to locate
the next Selection Record of the a ro riate LocT e;
5
or, alternatively,
scanning forward in a sequencing file to locate the next Selection_Record of the
a ro riate LocT e
Google's Proposed Construction of Step 1 of the Corresponding Structure:
scanning forward in the received sequencing file to locate the next
Selection Record of the a ro riate LocT e
Report's Construction of Step 1 of the Corresponding Structure: scanning
forward in the sequence established by the sequencing file to locate the next
Selection Record of the a ro riate LocT e
The Court's Construction of Step 1 of the Corresponding Structure:
scanning forward in the received sequencing file to locate the next
Selection Record of the a ro riate LocT e
For the structure corresponding to the skip command term, the parties
dispute whether, as Google argues, the player must scan the received sequencing
file when responding to a user's skip command or whether, as PA proposes, it can
scan either of (1) any sequencing file or (2) the sequence established by a single
sequencing file (as PA proposes). D.I. 331 at 39-40. I disagree with the
Magistrate Judge's conclusion that the player must only scan the sequence
established by a sequencing file. As explained above, during the prosecution of the
#076 patent, the patentee's clear and unequivocal lexicography established that the
player must use the same sequencing file that it downloaded (i.e., received) when
responding to user commands .. "Statements made during the prosecution relating
to structures disclosed in the specification are certainly relevant to determining the
meaning of the means-plus-function limitations of the claims at issue." Alpex
Comput. Corp. v. Nintendo Co., 102 F.3d 1214, 1220 (Fed. Cir. 1996); see also
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Regents of Univ. ofMinn. v. AGA Med. Corp., 717 F.3d 929,942 (Fed. Cir. 2013)
("[P]ositions taken before the PTO may bar an inconsistent position on claim
construction under§ 112, ,r 6."). Here, the patentee limited the structure that
corresponds to the function of responding to a user's skip command with the
following statement in the prosecution history:
[T]he claim term "sequencing file"
is readily
understandable to one of skill in the art as a file that is
received by the player, stored, and used by the processor
to both control playback of each song in the ordered
sequence and respond to control commands. It is used to
determine, for instance, what song is to be played next if
the user wishes to skip forward or back or select a specific
song.
D.I. 160, Ex. 11 at 8 (emphasis added) (citations omitted). Accordingly, I will
adopt Google's proposed construction of the means responsive to a user's skip
command and reject the Magistrate Judge's recommendation with respect to that
term. 1
1
The Magistrate Judge based his recommendation in part on his conclusion that an
embodiment described in the written description of the patent "teaches that a
sequencing file with a recommended sequence (Table 307) is created on the host
server and downloaded to the player-and that another sequencing file containing
the final sequence (Se[lections] File 351) is created on the player, using the data of
the received sequencing file to control playback." D.I. 331 at 41. In my view, the
language used to describe Table 307 and Selections File 351 in the written
description lacks clarity and consistency. I do not think the written description
shows unambiguously that Table 307 is a sequencing file or that Selection File 351
is created on the player.
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b.
Single Skip Back Command and Double Skip Back
Command in Claims 2 and 3 of the #076 Patent
Terms: ( 1) means responsive to a single one of said second commands for
discontinuing the reproduction of the currently playing program segment and
instead continuing the reproduction at the beginning of said currently playing
program (#076 patent, claim 2); and (2) means responsive to the detection of two
consecutive ones of said second commands for discontinuing the reproduction of
the currently playing program segment and instead continuing the reproduction
at the beginning of a program segment which precedes the currently playing
ro am se ent #07 6 atent, claim 3
PA's Proposed Construction of Step 1 of the Corresponding Structure: if the
currently playing program segment has played for a predetermined amount of
time, resetting the playback position to the beginning of the programming
se ent
Google's Proposed Construction of Step 1 of the Corresponding Structure:
if the currently playing program segment has played for a predetermined amount
of time after the start time recorded in a usage log file, resetting the playback
osition to the be innin of the ro ammin se ent
Report's Construction of Step 1 of the Corresponding Structure: if the
currently playing program segment has played for a predetermined amount of
time, resetting the playback position to the beginning of the programming
se ent
The Court's Construction of Step 1 of the Corresponding Structure: if the
currently playing program segment has played for a predetermined amount of
time, resetting the playback position to the beginning of the programming
se ent
For the structure corresponding to the back command terms, the parties
dispute whether the predetermined amount of time must be measured using a "start
time recorded in a usage log file" as Google proposes. D.I. 331 at 3 7. I agree with
the Magistrate Judge and will adopt his recommendation that the structure be
construed as not requiring the player to measure the predetermined time using a
start time recorded in a usage log file.
8
In its objections, Google argues that ''the specification only describes one
structure that could perform [the] function: The system responds to BACK
commands by resetting the playback point to the desired point in the sequence and
recording the start time." D.I. 350 at 10. But the written description never states
that the player records the start time to determine if the predetermined amount of
time has passed, as Google's proposed construction would require. To constitute
corresponding structure, "the intrinsic evidence [must] clearly link[] or associate[]
that structure to the function recited in the claim." Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015). Yet nothing in the specification links
"recording the start time" to determining whether the predetermined amount of
time has passed.
Google reasonably argues that "determining which 'skip back' command
should be implemented requires some means of measuring time so as to distinguish
a 'double skip back' from two 'single skip backs."' D.I. 350 at 10 (emphasis in
original). As the Magistrate Judge noted, "[i]t seems problematic that the
specification does not appear to recite structure for measuring whether the segment
is within the predetermined amount of time when a back command is received."
D.I. 331 at 52. But, as the Magistrate Judge, also noted, that issue goes to
indefiniteness and can be raised by Google at the summary judgment phase of the
case.
9
B.
March 13, 2019 Report and Recommendation
On March 13, 2019, the Magistrate Judge issued his second report,
recommending constructions for three more of the disputed claim terms. D.I. 372.
PA objects to the March Report's construction of the "means for continuously
reproducing" term.
1.
"means for continuously reproducing ..." in Claim 1 of the
#076 Patent
Term: means for continuously reproducing said program segments in the order
established by said sequence in the absence of a control command (#07 6 patent,
claim 1)
PA's Proposed Construction:
Function: continuously reproducing said program segments in the order
established by said sequence in the absence of a control command
Steps 2 and 3 of the Structure:
(2) when the currently playing program segment concludes, incrementing the
CurrentPlay variable by one and fetching and playing the program segment
identified by the ProgramID contained in the next Selection_Record in the
sequencing file;
(3) repeating step (2) until a command is issued or that the sequence is
completed
Google's Proposed Construction:
Function: continuously reproducing said program segments in the order
established by said sequence in the absence of a control command
Steps 2 and 3 of the Structure:
(2) when the currently playing program segment concludes,
10
(a) if the concluded segment is a topic or subject announcement,
incrementing the CurrentPlay variable by one and fetching and playing the
program segment identified by the ProgramlD contained in the next
Selection_Record in the received sequencing file, and
(b) if the conclude segment is a program segment, (i) scanning
forward in the received sequencing file to locate the next
Selection_Record containing the appropriate LocType; (ii) resetting
the CurrentPlay variable to the record number of that
Selection_Record; and (iii) fetching and playing the program segment
identified by the ProgramID contained in the new Selection_Record
(LocType: R);
(3) repeating step (2) until a rewind Selection_Record (LocType: R) in the
received sequencing file is reached, which resets the CurrentPlay variable to the
location value contained in the rewind Selection Record which is set to "1" to
begin the playing sequence again with the first Selection_Record in the received
sequencing file
Report's Construction:
Function: continuously reproducing said program segments in the order
established by said sequence in the absence of a control command
Steps 2 and 3 of the Structure:
(2) when the currently playing program segment concludes, incrementing the
CurrentPlay variable by one and fetching and playing the program segment
identified by the ProgramID contained in the next Selection_Record in the
sequencing file;
(3) repeating step (2) until a rewind Selection_Record (LocType: R) in the
sequencing file is reached, which resets the CurrentPlay variable to the location
value contained in the rewind Selection_Record which is set to "1" to begin the
playing sequence again with the first Selection_Record in the received
sequencing file
The Court's Construction:
Function: continuously reproducing said program segments in the order
established by said sequence in the absence of a control command
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Steps 2 and 3 of the Structure:
(2) when the currently playing program segment concludes, incrementing the
CurrentPlay variable by one and fetching and playing the program segment
identified by the ProgramID contained in the next Selection_Record in the
sequencing file;
(3) repeating step (2) until a rewind Selection_Record (LocType: R) in the
sequencing file is reached, which resets the CurrentPlay variable to the location
value contained in the rewind Selection_Record which is set to "1" to begin the
playing sequence again with the first Selection_Record in the received
sequencing file
The parties agree that "means for continuously reproducing" is a meansplus-function limitation, governed by 35 U.S.C. § 112(6), D.I. 372 at 2, and they
agree on the limitation's function: "continuously reproducing said program
segments in the order established by said sequence in the absence of a control
command," see id. at 3. The parties dispute two issues: "whether the
corresponding algorithmic structure requires ( 1) the sequence to be repeated in an
endless loop; and (2) scanning for the next record of appropriate LocType." Id. at
5 (citations omitted). PA objects to the Magistrate Judge's recommendations with
respect to both issues.
I will adopt the Magistrate Judge's recommendation that the structure be
construed to include an endless loop. The portion of the #076 patent's written
description that the parties agree sets out the term's structure describes an
algorithm that, in the absence of a user command, runs through the sequence and
then starts the sequence again. #076 patent at Figure 3, 12:16-13:11, 34:28-35:44.
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That "arrangement creates in effect, an endless loop, allowing the user to skip
forward in circular fashion through the entire program selection to locate desired
programming, regardless of where the CurrentPlay register is set." Id. at
35:44-48.
In its objections, PA argues that although one may configure the sequencing
file to play programs in an endless loop, Figure 7 of the patent "explicitly discloses
sequencing files that do not do so." D.I. 380 at 3. But I agree with the Magistrate
Judge that Figure 7 does not "shed[] light on the appropriate corresponding
structure for this term." D.I. 3 72 at 9 n.2. Figure 7 displays only a portion of a
selections file-a portion that does not include the end of the file, where the
variable for the endless loop would appear. 2 Figure 7 shows only that portion of
the selection file that corresponds to displaying an image of text, and the Figure's
depiction of the file ends at the point where the algorithm turns the image off.
#076 patent at Figure 7, 44:59-64. Also, Figure 7 displays the selections file's
interaction with just a single audio file. Id. at Figure 7. It thus does not reveal how
the player continuously reproduces playback of the sequence because it does not
show how the player transitions from one audio file to the next audio file.
PA also argues in its objections that the Magistrate Judge "clearly and
2
I also note that Figure 7 was not part of PA's proposed structure for this term.
D.I. 372 at 3.
13
indisputably err[ed] by completely failing ... to identify the explicitly recited
function." D.I. 380 at 1. The parties, however, had agreed on the construed
function for this term. D.I. 372 at 3. Thus, the Magistrate Judge did not need to
decide that issue and PA cannot now raise an issue that was not before the
Magistrate Judge.
PA also argues that, under the doctrine of claim differentiation, claim 4
shows the distinction between continuously reproducing and looping because claim
4 expressly claims an endless loop and claim 1 does not. D.I. 380 at 6. But I agree
with the Magistrate Judge's conclusion that "PA's claim differentiation argument
... is not dispositive on the question of whether the corresponding structure for the
continuously reproducing term requires an endless loop," D .I. 3 72 at 9 (internal
quotation marks omitted), because "the judicially developed guide to claim
interpretation known as 'claim differentiation' cannot override [35 U.S.C. §
112(6)]," Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991).
As to the second issue-whether the algorithm requires scanning for the next
record of appropriate LocType-"the parties dispute: ( 1) whether the LocType R
structure is required to perform the recited function ... ; and (2) whether scanning
the file to locate the next record using LocType is required for advancing to the
record representing the next program segment in the sequencing file in the course
of continuously reproducing." D.I. 372 at 9 (internal quotation marks omitted).
14
I agree with the Magistrate Judge that the R LocType should be included in
the corresponding structure. A portion of the written description that the parties
agree contains corresponding structure states: "The end of the selections file 351 is
marked with an R Selection_Record .... When the player encounters this record,
it resets the CurrentPlay register to 1, and the playing sequence begins again."
#076 patent at 35:40-44.
I also agree with the Magistrate Judge's recommendation that the structure
does not require LocType scanning. Nothing in the written description shows that
LocType scanning is the necessary structure for the function of continuously
reproducing the program segments in the absence of a user command. The
portions of the patent that Google points to in support of its construction link
scanning the LocType to responding to a specific user command, see id. at
32:24-50, 34:32-44, not continuing the playback in the absence of a command.
C.
June 7, 2019 Report and Recommendation
On June 7, 2019, the Magistrate Judge issued his third report, recommending
constructions for four of the disputed terms. D.I. 406. Google objects to the June
Report's constructions of"editing means for modifying said data sequence" in
claims 5 and 6 of the #07 6 patent and "means for translating said voice signals into
said control commands" in claim 13 of the #076 patent. D.I. 409. The parties
agree on the function for both terms. Google, however, argues that both terms are
15
indefinite because the specification lacks sufficient structure.
1.
"editing means for modifying said data sequence" in Claims
5 and 6 of the #076 Patent
Term: editing means for modifying said data sequence (claims 5 and 6 of the
#076 patent)
PA's Proposed Construction:
Function: modifying said data establishing said sequence
Structure:
a player client programmed to:
1. Add a program segment; and/or
2. Delete a program segment; and/or
3. Assign a new or different order to a given program segment; and update the
order for the program segments in the serialized sequence;
or, alternatively,
a player client programmed to:
1. Access selections file 3 51; and
2. Alter identifiers of program segments within the selections file, including the
following operations:
a. Add a program segment; and/or
b. Delete a program segment; and/or
c. Assign a new or different order to a given program segment; and update
the order for the ro am se ents in the serialized se uence
Google's Proposed Construction:
Function: modifying said data establishing said sequence
Structure: no disclosure of corres
Report's Construction:
16
Structure: a player client programmed to:
1. Access selections file 3 51; and
2. Alter identifiers of program segments within the selections file, including the
following operations:
a. Add a program segment; and/or
b. Delete a program segment; and/or
c. Assign a new or different order to a given program segment; and update
the order for the ro am se ents in the serialized se uence
The Court's Construction:
Function: modifying said data establishing said sequence
Structure: a player client programmed to:
1. Access selections file 351; and
2. Alter identifiers of program segments within the selections file, including the
following operations:
a. Add a program segment; and/or
b. Delete a program segment; and/or
c. Assign a new or different order to a given program segment; and update
the order for the ro am se ents in the serialized se uence
"[A] challenge to a claim containing a means-plus-function limitation as
lacking structural support requires a finding, by clear and convincing evidence, that
the specification lacks disclosure of structure sufficient to be understood by one
skilled in the art as being adequate to perform the recited function." Intellectual
Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308,
1319 (Fed. Cir. 2003). Here, I agree with the Magistrate Judge's conclusion that
Google has not met its burden to show by clear and convincing evidence that the
"editing means" limitation is indefinite for failing to disclose sufficient structure. I
17
will thus adopt the Magistrate Judge's recommendation that I construe the structure
according to PA' s alternative construction.
Because the "editing means" term is a computer-implemented means-plusfunction limitation, the specification must disclose an algorithm or procedure for
performing the claimed-function. Net MoneylN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1367 (Fed. Cir. 2008). In its objections, Google argues that the Magistrate
Judge's construction "merely restates the function 'modifying' as adding, deleting,
and/or reordering" and thus does not provide an algorithm for performing the
modifying function. D.I. 409 at 7. I find, however, that the written description
does provide, in the form of words, a procedure for performing the function.
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1386 (Fed. Cir. 2011) ("A
description of the function in words may disclose, at least to the satisfaction of one
of ordinary skill in the art, enough of an algorithm to provide the necessary
structure under § 112, ,r 6." (internal quotation marks and citation omitted)).
Specifically, the written description states that the user can "[u]tiliz[e] the
programming data and a utility program previously supplied by the server," #076
patent at 8:49-50, to add, delete, and re-sequence segment identifiers found in
selection file 351, id. at 12:21-26. The procedure disclosed is thus: (I) accessing
selections file 351 and (2) modifying the identifiers linked to each segment in the
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file by adding, deleting, or reordering them. That disclosed procedure is sufficient
structure for the editing means term.
2.
"means for translating said voice signals ..." in Claim 13 of
the #076 Patent
Term: means for translatin said voice si als into said voice control commands
PA's Proposed Construction:
Function: translating said voice signals into said control commands
Structure: a microphone and voice recognition software (i.e., a voice command
s stem
Google's Proposed Construction:
Function: translating said voice signals into said control commands
Structure: no disclosure of corres ondin structure in the atent s ecification
Report's Construction:
Function: translating said voice signals into said control commands
Structure: a microphone and voice recognition software (i.e., a voice command
s stem
The Court's Construction:
Function: translating said voice signals into said control commands
Structure: a microphone and voice recognition software (i.e., a voice command
s stem
I agree with the Magistrate Judge's conclusion that "Google has not
demonstrated by clear and convincing evidence that the 'means for translating said
voice signals into said voice control commands' limitation is indefinite for failing
to disclos[e] sufficient structure." D.I. 406 at 24. I will thus adopt the Magistrate
Judge's recommendation that the corresponding structure be construed as: "a
microphone and voice recognition software (i.e., a voice command system)."
In its objections, Google argues that the specification does not disclose an
algorithm corresponding to the claimed function. D.I. 409 at 2. But I agree with
19
the Magistrate Judge's finding that the patent discloses an algorithm that is linked
to the function at issue, and "PA has pointed to evidence sufficiently demonstrating
that such structure was known at the time of the invention." D.I. 406 at 24.
First, the written description discloses a voice command system as the
algorithm for performing the function. The written description explains that a user
can use its voice to choose a program segment by "[u]sing a hands free voice
command system." #076 patent at 16:50-56. The written description also states
that the "player 103 further includes a sound card 110 which receives audio input
from a microphone input device 111 for accepting voice dictations and commands
from a user." Id. at 4:41-44.
Second, although the above structure does not provide an algorithm
regarding how the player translates voice signals into control commands, the
Federal Circuit has "been generous in finding something to be a corresponding
structure when the [written description] contained a generic reference to structure
that would be known to those in the art and that structure was clearly associated
with performance of the claimed function." Med. Instrumentation & Diagrzostics
Corp. v. Elekta AB, 344 F.3d 1205, 1213-14 (Fed. Cir. 2003). PA has provided
sufficient evidence to "make it reasonable to conclude that a 'voice command
system' was indeed a known structure in the art at the time of the invention." D.I.
406 at 23. PA's evidence shows that voice command systems were in use at the
20
time of the patent "with commercial options available." Id. at 23. Because the
patent linked known systems to the translating function, a person of ordinary skill
in the art would have known what kinds of programs to use. See Elekta, 344 F.3d
at 1214 ("[H]ere there would be no need for a disclosure of the specific program
code if software were linked to the converting function and one skilled in the art
would know the kind of program to use.").
Google argues that the Magistrate Judge erred "in directing [his] inquiry to
whether the software referred to in the specification was well known in the art at
the time to perform the function, rather than focusing on whether the specification
discloses an algorithm." D.I. 409 at 6. I agree that Google's assertion finds
support in certain Federal Circuit decisions. See, e.g., Aristocrat Techs. Australia
Pty Ltd. v. Int'/ Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008) {"It is not
enough for the patentee simply to state or later argue that persons of ordinary skill
in the art would know what structures to use to accomplish the claimed function ...
. The inquiry is whether one of skill in the art would understand the specification
itself to disclose a structure, not simply whether that person would be capable of
implementing that structure."); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
1323, 1340-41 (Fed. Cir. 2008) ("Simply reciting 'software' without providing
some detail about the means to accomplish the function is not enough."). But
given the language from Elekta cited above, and the clear and convincing evidence
21
standard for indefiniteness, I find that the written description contains sufficient
structure and will adopt PA' s construction for the term.
II.
CONCLUSION
For the foregoing reasons, I will sustain-in-part and overrule-in-part
Google's objections to the Magistrate Judge's Report and Recommendations and I
will overrule PA's objections to the Magistrate Judge's Report and
Recommendations. I will sustain Google's objections regarding the construction
of the term "sequencing file" and will construe the term as: "a file that is received
by the player, stored, and used by the processor to both control playback of each
song in the ordered sequence and respond to control commands." I will also
sustain Google's objections regarding the construction of the term "means
responsive to said first command for discontinuing the reproduction of the
currently playing program segment and instead continuing the reproduction at the
beginning of a program segment which follows said currently playing program in
said sequence" and will construe the first step for the structure corresponding to
that term as: "scanning forward in the received sequencing file to locate the next
Selection_Record of the appropriate LocType." I will overrule all other objections
and will adopt the Magistrate Judge's recommended constructions for the
remaining disputed terms.
The Court will enter an order consistent with this Memorandum Opinion.
22
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