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Personal Audio LLC v. Google Inc.

United States District Court, D. Delaware

January 6, 2020

PERSONAL AUDIO, LLC, Plaintiff,
v.
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

          COLM F. CONNOLLY 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 patent, claims 14-21, 28, 29).

PA's Proposed Construction: a file of data that identifies the order in which audio program segments chosen by or for a user are to be played

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 sequence and respond to control commands

Report's Construction: a file of data that identifies the order in which audio program segments chosen by or for a user are to be played

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 respond 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 dXlovts 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 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 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 originally found on the sequencing file referenced in the claims" (emphasis in original)).

         "Applicants can define (lexicography), explain, or disavow claim scope during prosecution." TevaPharm. USA, Inc. v. Sandoz, Inc.,789 F.3d 1335, 1342- 43 (Fed. Cir. 2015). "To act as a lexicographer, a patentee must 'clearly set forth a 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 Thorner v. Sony Computer Entm 'tAm. 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" ...


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