Skky, Inc. v. Mindgeek, S.A.R.L. , 859 F.3d 1014 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
SKKY, INC.,
Appellant
v.
MINDGEEK, S.A.R.L., MINDGEEK USA, INC.,
PLAYBOY ENTERPRISES, INC.,
Appellees
______________________
2016-2018
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01236.
______________________
Decided: June 7, 2017
______________________
RONALD JAMES SCHUTZ, Robins Kaplan LLP, Minne-
apolis, MN, argued for appellant. Also represented by
RYAN MICHAEL SCHULTZ, CYRUS ALCORN MORTON,
ANDREW JOSEPH KABAT.
FRANK M. GASPARO, Venable LLP, New York, NY, ar-
gued for appellees. Also represented by TODD M. NOSHER;
MEGAN S. WOODWORTH, Washington, DC; TAMANY VINSON
BENTZ, Los Angeles, CA.
______________________
2 SKKY, INC. v. MINDGEEK, S.A.R.L.
Before LOURIE, REYNA, and WALLACH, Circuit Judges.
LOURIE, Circuit Judge.
Skky, Inc. (“Skky”) appeals from the final written
decision of the United States Patent and Trademark
Office Patent Trial and Appeal Board (“the Board”) in an
inter partes review (“IPR”) proceeding concluding that
claims 1–3, 5, and 15–23 (“the challenged claims”) of U.S.
Patent 7,548,875 (“the ’875 patent”) are unpatentable as
obvious. MindGeek, s.a.r.l. v. Skky Inc., IPR 2014-01236,
2016 WL 763036, at *1 (P.T.A.B. Jan. 29, 2016) (“Final
Decision”). Because the Board did not err in its claim
construction or in concluding that the challenged claims
are unpatentable, we affirm.
BACKGROUND
I. The Patented Technology
Skky owns the ’875 patent, which describes a method
for delivering audio and/or visual files to a wireless de-
vice. See ’875 patent, col. 1 l. 61–col. 2 l. 48. According to
the patent, existing devices required music or video clips
to be either factory-installed, or downloaded through a
direct interface with the Internet. Id. col. 1 ll. 39–42. The
patent purports to address this issue by allowing users to
“browse, download, and listen to or watch sound or image
files without the need for hand wired plug-in devices or a
computer connection to the Internet.” Id. col. 3 ll. 56–59.
The ’875 patent discloses a number of embodiments to
achieve this result. One embodiment is purely software
(“the software embodiment”); for example, the patent
indicates that a cellular phone or other device “may be
integrated with software at the time of manufacturing for
implementing the system of the present invention.” Id.
col. 5 l. 67–col. 6 l. 2. The patent makes clear that “a
software system may be integrated with the existing
hardware chip of a conventional cellular phone without
the need for additional hardware.” Id. col. 14 ll. 22–25.
SKKY, INC. v. MINDGEEK, S.A.R.L. 3
In other embodiments, a separate accessory unit attached
to the wireless device provides this functionality. See,
e.g., id. col. 14 ll. 16–19.
Prosecution leading to the ’875 patent lasted almost
seven years, and involved myriad rejections over the prior
art. In particular, the Examiner relied upon U.S. Patent
7,065,342 (“Rolf”), which describes a system and method
for wirelessly transmitting music over a network to a
cellular phone. See Rolf, col. 1 ll. 25–38. The Examiner
only allowed the claims over Rolf after they were amend-
ed to recite a “wireless device means,” which the Examin-
er believed to be a means-plus-function term invoking
35 U.S.C. § 112 ¶ 6. 1 See Joint Appendix (“J.A.”) 165,
169, 174–75, 202–03. As allowed, claim 1 recites:
1. A method of wirelessly delivering over the air
one or more digital audio and/or visual files from
one or more servers to one or more wireless device
means comprising:
compressing said one or more digital audio
and/or visual files, wherein said audio
and/or visual files comprise one or more
full or partial master recordings of songs,
musical scores or musical compositions,
videos or video segments, movies or movie
segments, film or [film] segments, one or
more image clips, television shows, human
voice, personal recordings, cartoons, film
animation, audio and/or visual advertising
content and combinations thereof, and
1 Because the ’875 patent was filed before the adop-
tion of the Leahy-Smith America Invents Act, Pub. L. No.
112-29, § 3, 125 Stat. 284, 285–93 (2011), the prior ver-
sion of § 112 governs, see Fleming v. Escort, Inc., 774 F.3d
1371, 1374 n.1 (Fed. Cir. 2014).
4 SKKY, INC. v. MINDGEEK, S.A.R.L.
wherein said compressing comprises nor-
malizing, sampling and compressing said
digital audio and/or visual files;
storing compressed audio and/or visual
files in one or more storage mediums; and
transmitting to said wireless device means
said compressed audio and/or visual files
wirelessly over the air, with or without an
Internet network.
’875 patent, col. 33 ll. 14–32 (emphases added). Claim 21
adds that the “compressed digital and/or visual file is a
segment of a full song, musical composition, or other
audio recording or visual recordings.” Id. col. 34 ll. 51–53.
Claim 22 adds that the method “compris[es] the use of
OFDM,” id. col. 34 l. 54; i.e., an orthogonal frequency-
division multiplex (“OFDM”) modulation scheme for data
transmission, id. col. 16 ll. 60–61.
II. Proceedings Below
MindGeek, s.a.r.l., MindGeek USA, Inc., and Playboy
Enterprises, Inc. (together, “MindGeek”) filed a petition
for IPR of the ’875 patent, alleging that, inter alia,
(1) claims 1–3, 5, 15–21, and 23 would have been obvious
at the time of the invention over Rolf in view of a publica-
tion entitled “MP3: The Definitive Guide” (“MP3 Guide”),
which describes attributes of the mp3 audio file format,
see J.A. 397, 404, 515, 623, 625, 636; and (2) claim 22
would have been obvious over Rolf, MP3 Guide, and a
publication entitled “OFDM/FM Frame Synchronization
for Mobile Radio Data Communication” (“OFDM/FM”),
describing a particular OFDM format, see J.A. 958, 960.
In the petition, MindGeek also contended that “[t]he term
‘wireless device means’ is clearly a means-plus-function
limitation” invoking § 112 ¶ 6. J.A. 72.
The Board instituted review. See J.A. 4642. In the
institution decision, the Board determined that “wireless
SKKY, INC. v. MINDGEEK, S.A.R.L. 5
device means” does not invoke § 112 ¶ 6 because “‘wireless
device’ is not purely functional language, but rather
language that denotes structure.” J.A. 4638–39. The
Board determined that no further construction was re-
quired at that time. J.A. 4639.
Briefing after institution addressed the Board’s deci-
sion that “wireless device means” is not a means-plus-
function term. Skky recognized that the Board made that
determination, but relied on the written description and
prosecution history to argue that the term properly in-
vokes § 112 ¶ 6 and has a function “[t]o request, wireless-
ly receive, and process a compressed audio and/or visual
file,” J.A. 4658, and structure that requires, inter alia,
multiple processors, wherein one or more processors is a
specialized processor primarily dedicated to processing
compressed multimedia data. J.A. 4657–66. Even if
“wireless device means” is not a means-plus-function
term, Skky argued that it should still be construed to
require, inter alia, multiple processors, one of which must
be a specialized processor. J.A. 4667, 4669–75. In reply,
MindGeek accepted that “wireless device means” does not
invoke § 112 ¶ 6, and contended that, in either case, the
term does not require multiple processors or a specialized
processor. See J.A. 4979–84. Skky continued to argue
that (1) Rolf only discloses downloading a full song, not a
segment of a song, so claim 21 would not have been obvi-
ous; and (2) a skilled artisan would not have been moti-
vated to combine OFDM/FM’s teachings relating to
OFDM with Rolf’s system, and therefore claim 22 would
not have been obvious.
Skky then moved for permission to file a surreply ad-
dressing MindGeek’s arguments that “wireless device
means” does not invoke § 112 ¶ 6, which the Board grant-
ed. J.A. 5639–40. Skky also moved to strike MindGeek’s
reply as presenting various new arguments, J.A. 5562–63,
and the PTAB preserved the issue for consideration in the
final written decision, J.A. 5640.
6 SKKY, INC. v. MINDGEEK, S.A.R.L.
In its final written decision, the Board again deter-
mined that “wireless device means” does not invoke § 112
¶ 6 because the term is not “associated with or defined by
a function.” Final Decision, 2016 WL 763036, at *3. Even
assuming that the term was in means-plus-function
format, however, the Board rejected Skky’s argument that
the term requires multiple processors, wherein one is a
specialized processor. See id. at *4–5. The Board also
rejected Skky’s alternative argument that the term re-
quires multiple processors even if it does not invoke § 112
¶ 6. Id. at *5–6. In both cases, the Board reasoned that
because the software embodiment only requires a single
processor, the term “wireless device means” could not be
construed to require additional processors. Id. The Board
also construed “a segment of a full song, musical composi-
tion, or other audio recording or visual recordings,” ap-
pearing in claim 21, to mean a “playable portion of a song,
musical composition, or other audio recording or visual
recording.” Id. at *6.
On the merits, the Board found that Rolf discloses, in-
ter alia, a “wireless device means” through its disclosure
of a cell phone, and “a segment of a full song, musical
composition or other audio recording or visual recordings,”
as required by claim 21, because Rolf discloses download-
ing of a song, which is a “playable portion” of a full album.
Id. at *8. The Board also rejected Skky’s argument that a
skilled artisan would not have been motivated to combine
Rolf and OFDM/FM, reasoning that OFDM/FM discloses
that “it can be implemented simply and inexpensively by
retrofitting existing FM communication systems.” Id.
(quoting OFDM/FM). Based on those findings, the Board
concluded that MindGeek had proven that the challenged
claims are unpatentable as obvious. Id. at *10. The
Board did not strike any portion of MindGeek’s reply
brief. See id.
Skky timely appealed. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(A).
SKKY, INC. v. MINDGEEK, S.A.R.L. 7
DISCUSSION
Skky challenges (1) the Board’s conclusion that “wire-
less device means” does not invoke § 112 ¶ 6 and does not
require multiple processors; (2) various aspects of the
merits of the obviousness determination; and (3) the
Board’s decision not to strike MindGeek’s reply brief before
the Board. We address each issue in turn.
A. Claim Construction
“[W]e review the Board’s ultimate claim constructions
de novo and its underlying factual determinations involv-
ing extrinsic evidence for substantial evidence.” Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir.
2015) (citing Teva Pharm. USA Inc. v. Sandoz, Inc., 135 S.
Ct. 831, 841–42 (2015)). “The task of determining wheth-
er the relevant claim language contains a means-plus-
function limitation is . . . a question of law that we review
de novo.” TriMed, Inc. v. Stryker Corp., 514 F.3d 1256,
1259 (Fed. Cir. 2008); see also Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). In an IPR,
claims are given their broadest reasonable interpretation.
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–
46 (2016).
In determining whether a claim term invokes § 112
¶ 6, “the essential inquiry is not merely the presence or
absence of the word ‘means’ but whether the words of the
claim are understood by persons of ordinary skill in the
art to have a sufficiently definite meaning as the name for
structure.” Williamson, 792 F.3d at 1348 (en banc in
relevant part). To determine whether a claim recites
sufficient structure, “it is sufficient if the claim term is
used in common parlance or by persons of skill in the
pertinent art to designate structure, even if the term
covers a broad class of structures and even if the term
identifies the structures by their function.” TecSec, Inc. v.
Int’l Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir.
2013) (internal quotation marks and citations omitted).
8 SKKY, INC. v. MINDGEEK, S.A.R.L.
Skky argues that the presence of “means” in “wireless
device means” creates the presumption that § 112 ¶ 6 has
been invoked, and that the function of the “wireless device
means” is “to request, wirelessly receive, and process a
compressed audio and/or visual file.” Skky’s Br. 36–39.
Skky contends that the Examiner’s specific indication
that the term invokes § 112 ¶ 6, as well as MindGeek’s
initial same understanding, counsels that result. Skky
further argues that the written description supports its
argument relating to the function corresponding to “wire-
less device means.”
MindGeek responds that “wireless device means” does
not invoke § 112 ¶ 6 because the clause in which it ap-
pears describes no corresponding function, and instead
denotes structure. MindGeek contends that functionality
cannot be imported from the written description, and that
the Board need not adopt the parties’ construction.
We agree with MindGeek that “wireless device means”
does not invoke § 112 ¶ 6 because its clause recites suffi-
cient structure. See TriMed, 514 F.3d at 1259. Although
the term uses the word “means” and so triggers a pre-
sumption, the full term recites structure, not functionali-
ty; the claims do not recite a function or functions for the
wireless device means to perform, and “wireless device” is
“used in common parlance . . . to designate structure.”
TecSec, 731 F.3d at 1347 (citation omitted). Skky’s argu-
ments to the contrary are, in effect, an attempt to improp-
erly import limitations from the written description into
the claims. See Williamson, 792 F.3d at 1346.
The Examiner’s statements at the time of allowance
and MindGeek’s initial agreement do not change that
result. The Examiner did not explain why he believed
“wireless device means” invoked § 112 ¶ 6, the functional-
ity performed by the “wireless device means,” or how he
believed the addition of that term overcame the prior art
of record. See J.A. 169–70. In any event, we are not
SKKY, INC. v. MINDGEEK, S.A.R.L. 9
bound by the Examiner’s or the parties’ understanding of
the law or the claims. See Microsoft, 789 F.3d at 1297−98.
Accordingly, we agree with MindGeek and the Board that
“wireless device means” is not a means-plus-function term
under § 112 ¶ 6.
Skky argues that even if “wireless device means” does
not invoke § 112 ¶ 6, the term still should be construed to
require multiple processors, wherein one is a specialized
processor primarily dedicated to processing compressed
multimedia data. Skky contends that the written descrip-
tion contains several embodiments requiring a cell phone,
which includes a processor, attached to an accessory with
its own processor, and that the software embodiment does
not fall within the claim language. Skky argues that the
prosecution history also supports this requirement, based
on statements made during prosecution and because, as
the claims were allowed over Rolf, they must cover some-
thing more than the wireless device with a single proces-
sor disclosed in Rolf.
MindGeek responds that Skky’s proposed construction
is not the broadest reasonable construction because the
written description includes the software embodiment,
which uses a single processor, and that Skky’s proposed
requirements import limitations into the claims from the
written description and prosecution history. MindGeek
further responds that the prosecution history actually
supports the conclusion that the claims cover the software
embodiment, as the Examiner cited the portion of the
written description containing that embodiment in his
notice of allowance.
We agree with MindGeek and the Board that the
challenged claims do not require multiple processors.
Although the written description contains embodiments
where the wireless device contains multiple processors,
see, e.g., ’875 patent, col. 6 ll. 2–8, it also includes the
software embodiment, in which the wireless device con-
10 SKKY, INC. v. MINDGEEK, S.A.R.L.
tains a single processor. For example, the written de-
scription states that “[a] cellular phone, or similar device
(having a processor, RAM and flash elements) may be
integrated with software at the time of manufacturing for
implementing the system of the present invention.” Id.
col. 5 l. 66–col. 6 l. 2 (emphasis added). The written
description then “[a]lternatively” describes an embodi-
ment that includes an accessory unit, id. col. 6. ll. 2–8,
and specifies that “a software system may be integrated
with the existing hardware chip of a conventional cellular
phone without the need for additional hardware,” id. col.
14 ll. 22–25.
Similarly, the software embodiment is fatal to Skky’s
argument that “wireless device means” requires a proces-
sor (or processors) primarily dedicated to processing the
compressed media. The argument that the invention
requires a “specialized processor,” Skky’s Br. 50, is refut-
ed by the patent’s express disclosure that the invention
may be practiced using “a conventional cellular phone
without the need for additional hardware,” ’875 patent,
col. 14 ll. 24–25 (emphasis added); see id. col. 2 ll. 44−48
(“The ability to provide this technology without the need
for extra hardware is very significant, particularly to the
cellular phone industry . . . .”).
Accordingly, the Board did not err in concluding that
“wireless device means” does not invoke § 112 ¶ 6, and did
not err in concluding that the claimed device does not
require multiple processors or a specialized processor.
B. Obviousness
We review the Board’s factual determinations for sub-
stantial evidence and its legal determinations de novo.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015). Obviousness is a question of law based on
subsidiary findings of fact relating to “the scope and
content of the prior art, differences between the prior art
and the claims at issue, the level of ordinary skill in the
SKKY, INC. v. MINDGEEK, S.A.R.L. 11
pertinent art, and any objective indicia of non-
obviousness.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007) and Graham v. John Deere Co. of
Kan. City, 383 U.S. 1, 17−18 (1966)). Whether there
would have been a motivation to combine multiple refer-
ences at the time of the invention is also a question of
fact. S. Ala. Med. Sci. Found. v. Gnosis S.P.A., 808 F.3d
823, 826 (Fed. Cir. 2015). Accordingly, we review these
findings for substantial evidence. Allied Erecting &
Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
1373, 1380 (Fed. Cir. 2016). A finding is supported by
substantial evidence if a reasonable mind might accept
the evidence as sufficient to support the finding. Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
Skky first argues that the Board erred in its conclu-
sion that the challenged claims are unpatentable as
obvious because it considered no more than the references
already considered by the Examiner. Skky also argues
that the Board erred because Rolf does not disclose multi-
ple processors or a specialized processor. MindGeek
responds that the references disclose all required aspects
of the claims under the correct constructions.
We agree with MindGeek that the Board did not err.
As explained previously, the Board applied the correct
claim constructions; accordingly, we are not convinced by
Skky’s arguments based on its constructions. Moreover,
Skky has not cited any authority for the proposition that
once an examiner concludes that claims are patentable
over a reference, that reference may no longer be consid-
ered further in determining a claim’s validity; indeed, the
Supreme Court has characterized the “congressional
objective” of the IPR process as “giving the Patent Office
significant power to revisit and revise earlier patent
grants.” Cuozzo, 136 S. Ct. at 2139–40. Accordingly,
Skky’s general challenges to the Board’s obviousness
analysis are not persuasive.
12 SKKY, INC. v. MINDGEEK, S.A.R.L.
Skky next argues that the Board erred in concluding
that claim 21 is unpatentable as obvious because Rolf only
allows transmission of a full song, not a playable portion
of a song as required by the claim. MindGeek responds
that the Board properly determined that a song is a
playable portion of a full album, and that the claim is not
limited to transmitting a portion of a song.
We agree with MindGeek that Skky’s argument relies
on a less-than-complete reading of claim 21. In full, the
claim is directed to the method of claim 1, wherein the file
“is a segment of a full song, musical composition or other
audio recording or visual recordings.” ’875 patent, col. 34
ll. 52–53 (emphasis added). Thus, the claim language is
not limited to segments of full songs, but also reaches
segments of other audio recordings and musical composi-
tions. As the Board noted, a single full song is a segment
of the album (musical composition or audio recording) on
which it appears. Final Decision, 2016 WL 763036, at *8.
Skky next argues that the Board’s finding that a
skilled artisan would have been motivated to combine
Rolf, MP3 Guide, and OFDM/FM to arrive at the inven-
tion of claim 22 is not supported by substantial evidence
because the combination would have produced an inoper-
able device. Specifically, Skky argues that Rolf and
OFDM/FM disclose different protocols, and that the Board
disregarded its evidence that a skilled artisan would not
have expected success in combining them. Skky contends
that the Board impermissibly shifted the burden to Skky
to prove otherwise.
MindGeek responds that the Board’s finding of a
motivation to combine is supported by substantial evi-
dence. MindGeek contends that OFDM/FM specifically
notes that it could be retrofitted into existing systems, so
combination would have been within the abilities of a
skilled artisan.
SKKY, INC. v. MINDGEEK, S.A.R.L. 13
We agree with MindGeek that the Board’s finding of a
motivation to combine the three references is supported
by substantial evidence. OFDM/FM specifically discloses,
for example, that its protocol “is particularly attractive
because it can be implemented simply and inexpensively
by retrofitting existing FM communication systems.” J.A.
958. Moreover, the Board was not required to credit
Skky’s expert evidence simply because Skky offered it.
See In re Ethicon, Inc., 844 F.3d 1344, 1352 (Fed. Cir.
2017) (concluding that the Board properly gave little
weight to conclusory expert testimony of objective indicia);
37 C.F.R. § 42.65(a) (“Expert testimony that does not
disclose the underlying facts or data on which the opinion
is based is entitled to little or no weight.”). The Board
reviewed the evidence presented by the parties, and chose
not to credit Skky’s expert testimony. See Final Decision,
2016 WL 763036, at *8–10. “We may not reweigh this
evidence on appeal.” In re Warsaw Orthopedic, Inc., 832
F.3d 1327, 1333 (Fed. Cir. 2016). Accordingly, we discern
no reversible error in that choice.
C. Motion to Strike
Finally, Skky argues that the Board abused its discre-
tion by not striking MindGeek’s reply brief, which it
contends contained new arguments. Specifically, Skky
argues that MindGeek only introduced its argument that
“wireless device means” does not invoke § 112 ¶ 6, as well
as other substantive arguments, in reply.
MindGeek responds that Skky was given a full oppor-
tunity to respond to any new arguments, because Skky
was permitted additional filings to address its conten-
tions. MindGeek also contends that its reply simply
responded to the Board and Skky’s positions.
We agree with MindGeek that the Board did not
abuse its discretion. MindGeek’s reply responded to the
positions laid out by Skky and the Board. The Board’s
decision was “based on the same combinations of refer-
14 SKKY, INC. v. MINDGEEK, S.A.R.L.
ences that were set forth in its institution decision[],”
Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm.
Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), and Skky does
not contend that, for example, it lacked notice and the
ability to respond to any particular argument; indeed,
Skky filed a surreply addressing the means-plus-function
argument, J.A. 5639–40. Accordingly, we discern no
error.
CONCLUSION
We have considered the remaining arguments, but
find them unpersuasive. For the foregoing reasons, the
decision of the Board is affirmed.
AFFIRMED