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The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).

The two challenged patents concern audio playlist systems and recite three key features: “skip,” “skip backward,” and “go.” The court determined that substantial evidence supported the PTAB’s decision that claims reciting the “skip” and “go” features were obvious, based on “Chase,” a published patent application that discloses a system for distributing national radio programs to local stations. Chase, according to the PTAB, discloses that the user (a station disc jockey) may use control keys to “select, out of turn, a segment from the playlist.” The court agreed that Chase’s disclosure, in combination with “Loeb,” an article about a personalized music system, disclose the “skip” and “go” features, and that both limitations “can be rendered obvious by the same portions of prior art, “consistent with the principle that in infringement or obviousness analyses, a single element, feature, or mechanism can ordinarily satisfy multiple claim limitations, including by performing multiple claimed functions.”

The court also upheld the PTAB’s determination that a third publication, “Inazawa,” did not render obvious the challenged claims reciting the “skip backward” feature. Inazawa, according to the PTAB, describes a fundamentally different algorithm from what the claims recite. Based on stipulated claim constructions, the “skip backward” claim limitations must either reset to the beginning of the current audio segment or to the beginning of the previous segment depending on whether “the currently playing audio program file has played for a predetermined amount of time.” In contrast, the PTAB determined 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. On appeal, Google argued that Inazawa’s algorithm was merely a design choice available to the person having ordinary skill and that the different algorithm thus does not undermine a conclusion of obviousness. But the court could not find this argument in the record below and therefore refused to consider it on appeal.

The Federal Circuit affirmed both of the PTAB’s decisions as supported by substantial evidence. Absent an appeal to the Supreme Court, the infringement case will now proceed.

This blog post was written by Marshall Gerstein summer law clerk Fabrice Guyot-Sionnest.