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Personal Audio LLC v. Google LLC

United States District Court, D. Delaware

March 13, 2019

PERSONAL AUDIO, LLC, Plaintiff,
v.
GOOGLE LLC, Defendant. Term Plaintiffs Proposed Construction Defendant's Proposed Construction Term Plaintiffs Proposed Construction Defendant's Proposed Construction Term Plaintiffs Proposed Construction Defendant's Proposed Construction

          REPORT AND RECOMMENDATION

          CHRISTOPHER J. BURKE, UNITED STATES MAGISTRATE JUDGE.

         In this action filed by Plaintiff Personal Audio, LLC ("PA" or "Plaintiff) against Google LLC ("Google" or "Defendant"), PA alleges infringement of United States Patent Nos. 6, 199, 076 (the "'076 patent") and 7, 509, 178 (the "'178 patent" and collectively with the '076 patent, "the asserted patents"). Presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the constructions as set forth below.

         I. BACKGROUND AND STANDARD OF REVIEW

         The Court hereby incorporates by reference the summary of the factual and procedural background of this matter set out in its January 16, 2019 Report and Recommendation ("January 16 R&R"). (D.I. 331 at 1-4) It additionally incorporates by reference the legal principles regarding claim construction set out in the January 16 R&R. (Id. at 4-9)

         II. DISCUSSION

         The parties had disputes regarding 10 terms or sets of terms (hereafter, "terms"). The January 16 R&R addressed the first three terms. The Court addresses terms 4, 5 and 6 herein. The remaining terms will be addressed in a forthcoming Report and Recommendation(s).

         A. "means for continuously reproducing" term

          The claim term "means for continuously reproducing said program segments in the order established by said sequence in the absence of a control command" (the "means for continuously reproducing term") appears in claims 1-3, 5, 6 and 13-15 of the '076 patent. (Google's Markman Presentation, Slide 43) The use of the disputed term in claim 1 of the '076 patent is representative. Accordingly, this claim is reproduced below, with the disputed term highlighted:

1. A player for reproducing selected audio program segments comprising, in combination:
means for storing a plurality of program segments, each of said program segments having a beginning and an end,
means for receiving and storing a file of data establishing a sequence in which said program segments are scheduled to be reproduced by said player,
means for accepting control commands from a user of said player,
means for continuously reproducing said program segments in the order established by said sequence in the absence of a control command,
means for detecting a first command indicative of a request to skip forward, and
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.

         ('076 patent, col. 46:13-33 (emphasis added))

         The parties agree that this limitation is a means-plus-function limitation, governed by 35 U.S.C. § 112(6). (D.I. 146, Appendix A at Ref. 6) The parties' competing proposed constructions for the term are set out in the chart below, with the main disputed points noted by bold, underlined language:

Term
Plaintiffs Proposed Construction
Defendant's Proposed Construction

"means for continuously reproducing said program segments in the order established by said sequence in the absence of a control command"

Function:

"[Continuously reproducing said program segments in the order established by said sequence in the absence of a control command."

Structure:

"A sound card that includes a digital to analog converter; headphones or one or more speakers; and a general purpose computer programmed to perform the algorithm that is illustrated in the flow chart of Figure 3 at items 233, 235, 237, 239, and 261 and more fully described at column 12, line 16 to column 13, line 11 and column 34, line 28 to column 35, line 44.

Specifically, this algorithm includes the following steps:

1.beginning playback with the program segment identified by the ProgramID contained in the Selection_Record specified by the CurrentPlay variable;

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."

Function:

"Continuously reproducing said program segments in the order established by said sequence in the absence of a control command."

Structure:

"A sound card that includes a digital to analog converter; headphones or one or more speakers; and a general purpose computer programmed to perform the algorithm that is illustrated in the flow chart of Figure 3 at items 233, 235, 237, 239, and 261 and described at column 12, line 16 to column 13, line 11 and column 34, line 28 to column 35, line 44.

Specifically, this algorithm includes the following steps:

(1)beginning playback with the program segment identified by the ProgramID contained in the Selection_Record specified by the CurrentPlay variable;

(2)when the currently playing program segment concludes,

(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 ProgramID contained in the next Selection Record in the received sequencing file, and

(b) if the concluded 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

(Hi) fetching and playing the program segment identified by the ProgramID contained in the new Selection Record;

(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."

         (D.I. 146, Appendix A at Ref. 6) As reflected in these proposals, the parties have two primary disputes with respect to this term: 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. (D.I. 146 at 15, 17-18; D.I. 159 at 22; Tr. at 128, 132) The Court will take up these disputes in turn.

         1. Does the algorithm require playback to continue in an endless loop?

         The parties have agreed upon certain of the required structure for the recited function. Google asserts that such agreed-upon structure requires the program segments to play in an endless loop, absent a user command. (D.I. 159 at 22-24; D.I. 186 at 7-8; Tr. at 129-30) PA argues to the contrary that the structure does not require the playback of programs in an endless loop, and instead that "continuously reproducing" merely requires that playback of programs proceeds without interruption. (D.I. 146 at 15; D.I. 176 at 9-10; Tr. at 138-39)

         The parties agree that Figure 3 of the patent discloses the algorithm corresponding to the claimed function. (D.I. 146 at 13-14; D.I. 159 at 22) Step 261 shows that if there is no user command, the player proceeds to "Continue Playback" at Step 235. ('076 patent, FIG. 3; see also Tr. at 129; D.I. 146 at 14-15) From there, the player determines if a new segment has started at Step 237; if so, the player then handles the new segment in Step 239. ('076 patent, FIG. 3; see also D.I. 146 at 14)

         The parties also agree that the algorithm for "continuously reproducing said program segments in the order established by said sequence in the absence of a control command" is "[more fully] described" in the specification of the '076 patent at column 34, line 28 to column 35, line 44. (D.I. 146, Appendix A at Ref. 6) At one point in this portion of the specification, the patent explains that:

When the player is first activated, CurrentPlay is set to 1 to begin play with the first topic announcement specified by the ProgramID 357. The end of the selections file 351 is marked with an "R" SelectionRecord 380 which contains the location value 1. When the player encounters this record, it resets the CurrentPlay register to 1, and the playing sequence begins again.

         ('076 patent, col. 35:38-44) The specification then immediately continues on to say that "[t]his 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., col. 35:44-48 (emphasis added)) Thus, Google's observation that "[t]he [a]greed [algorithm [i]dentified by the [p]arties as [p]erforming the '[continuously [Reproducing' [f]unction [r]equires a [c]ircula[r] [l]oop" seems accurate. (D.I. 159 at 22 (emphasis omitted); see also Tr. at 130)

         Google's position is one that has also garnered support from other sources in the past (and, at times, even from PA). For example:

(1) During the Apple litigation, the Eastern District of Texas Court agreed with Google's position, construing the structure corresponding to the function of this term as requiring an endless loop.[1] The Eastern District of Texas Court subsequently denied PA's motion for reconsideration of the Court's inclusion of the endless loop requirement. (D.I. 160, ex. 16 at 24-31) In a thorough analysis spanning several pages, the Eastern District of Texas Court explained that the only disclosed algorithm for performing the claimed function of "continuously reproducing" "includes playing program segments in an endless loop"; the Court cited in support to some of the above-referenced portions of the specification. (Id. at 26) The Eastern District of Texas Court further noted that there is no alternative structure disclosed in the specification- such as a different value that might be contained in the last SelectionRecord in the sequencing file, or a different algorithmic step that could occur when the last record in the sequence is encountered. (Id. at 26-29)
(2) During the inter partes review ("IPR") proceeding for the '076 patent, both Google and PA agreed that the endless loop requirement should be adopted. (D.I. 147, ex. E at 11-13)
(3) In the parties' Joint Claim Construction Statement filed in this case, PA did not dispute that the disclosed structure for this term requires an endless loop. (D.I. 76, ex. B at 5-6) It was not until the submission of claim construction briefing that PA revisited its old position that the corresponding structure does not require an endless loop. (D.I. 146 at 15; see also D.I. 159 at 23-24; Tr. at 128)

         In assessing which side is right as to this dispute, it is instructive that the Apple Court, the PTAB, and even PA itself (at certain points) all agreed with Google's position.

         What does PA point to in support of its current position to the contrary? PA first asserts that the person of ordinary skill in the art ("POSITA") at the time of the invention would understand the term "continuous reproduction" to "merely require the reproduction of programs absent a control command and does not further [require] playback in an endless loop." (D.I. 146 at 15; see also D.I. 176 at 9-10; Tr. at 138-39) PA's expert, Dr. Kevin C. Almeroth, cites to several dictionary definitions, product manuals and patents that all seem to support this interpretation of "continuous reproduction." (D.I. 147 at ¶¶ 71-78) Next, PA points to claim 4 of the '076 patent, (D.I. 146 at 15-16; D.I. 176 at 10, 11; Tr. at 139), which depends from claim 1; claim 4 explicitly recites an endless loop: "[a] player . . . wherein said sequence established by said data forms an endless circular sequence of program segments[, ]" ('076 patent, col. 46:49- 51). According to PA, this demonstrates that claim 1 does not require an endless loop "because claims 1 and 4 cannot be coterminous in scope[.]" (D.I. 146 at 15) PA also contends that the plain language of the term at issue (i.e., "reproducing [] program segments in the order established by said sequence in the absence of a control command") simply requires that the audio files of the sequence be continuously played through once without being repeated in the absence of a control command. (Id. at 16 (certain emphasis omitted); see also D.I. 176 at 10)

         In the Court's view, PA's various arguments are insufficient to supplant what the intrinsic record discloses as the corresponding structure for this function. What is clearly lacking from PA's assertions is a description of where in the specification the patent talks about performing this function in some alternative way. Google correctly notes that "this is a means-plus-function term, so PA's claims must be limited to algorithms disclosed in the specification. PA has pointed to no algorithm other than the one that requires an endless loop." (D.I. 186 at 8; see also D.I. 159 at 23-24 ("[PA] points to nothing in the agreed structure to support [its] new construction."); Tr. at 130-31, 147-48; D.I. 160, ex. 16 at 29 ("The [Apple] [C]ourt has located no place in the text of the specification describing an alternative step wherein playback simply ends when the last SelectionRecord in the sequencing file is encountered.")); Saffran v. Johnson & Johnson, 712 F.3d 549, 563 (Fed. Cir. 2013) ("Under [Section 112, paragraph 6], the question is ... what structures are specifically disclosed and tied to that function in the specification.").[2]

         The intrinsic evidence, described above, "trumps any extrinsic evidence, including dictionary definitions, that might contradict it." WhatsApp Inc. v. Intercarrier Commc 'ns, LLC, No.13-cv-04272-JST, 2014 WL 5306078, at *7 (N.D. Cal. Oct. 16, 2014) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)). And PA's claim differentiation argument regarding dependent claim 4 is not dispositive on the question of whether the corresponding structure for the "continuously reproducing" term requires an endless loop. See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991) (explaining that "the interpretation of the 'means for joining' to include a cross member comes from the specification via section 112(6), not from [dependent] claim 24" and "[i]f a claim will bear only one interpretation, similarity [between claims] will have to be tolerated") (internal quotation marks and citation omitted).

         For these reasons, the Court agrees with Google that the corresponding structure for the means for continuously reproducing term requires an endless loop.

         2. Does the algorithm require scanning for the next record ...


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