Cypress Lake Software, Inc

Patent Trials and Appeals Board

Jul 1, 2020

IPR2019-00390 (P.T.A.B. Jul. 1, 2020)

Trials@uspto.gov Paper 24
571-272-7822 Date: July 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC, DELL INC. and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

CYPRESS LAKE SOFTWARE, INC.,
Patent Owner.
____________

IPR2019-00390
Patent 9,817,558 B1
____________

Before KEN B. BARRETT, MIRIAM L. QUINN, and
GREGG I. ANDERSON, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
A. Background and Summary
Google LLC, Dell Inc. and Samsung Electronics America, Inc.
(collectively “Petitioner”)1 filed a Petition requesting inter partes review of
U.S. Patent No. 9,817,558 B1 (“the ’558 patent,” Ex. 1001). Paper 1
(“Pet.”). The Petition challenges the patentability of claims 1–10, 12, and 13
of the ’558 patent. Id. at 8. We instituted an inter partes review of all
challenged claims on the sole proposed ground of unpatentability. Paper 12
(“Dec. to Inst.”), 28. Cypress Lake Software, Inc. (“Patent Owner”)2 filed a
Response to the Petition. Paper 14 (“PO Resp.”). Petitioner filed a Reply
(Paper 17, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 18, “PO
Sur-Reply”). An oral argument was not held. See Paper 22 (granting
Petitioner’s unopposed request to cancel the oral argument).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons discussed below, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–10, 12, and 13 of the ’558
patent are unpatentable.
B. Related Proceedings
One or both parties identify, as matters involving or related to
the ’558 patent, Patent Trial and Appeal Board case IPR2019-00391 and the
following:

1 Petitioner identifies Google LLC, Dell Inc., Dell Technologies Inc., Denali
Intermediate Inc., Dell USA LP, Dell Products LP, EMC Corporation,
Samsung Electronics America, Inc., Samsung Electronics Corp, Ltd. and HP
Inc. as real parties-in-interest. Pet. 6.
2 Patent Owner identifies Cypress Lake Software, Inc. as the real party-in-
interest. Paper 9, 1.
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LG Electronics MobileComm USA, Inc. v. Cypress Lake
Software, Inc., Case No. 1-18-cv-00806 (D. Del.);
Cypress Lake Software, Inc. v. Dell, Inc., Case No. 6-18-
cv-00138 (E.D. Tex.);
Cypress Lake Software, Inc. v. Samsung Electronics
America, Inc., Case No. 6-18-cv-00030 (E.D. Tex.);
Cypress Lake Software, Inc. v. Samsung C&T America,
Inc., Case No. 6-18-cv-00016 (E.D. Tex.);
Cypress Lake Software, Inc. v. BlackBerry Corporation,
Case No. 6-17-cv-00692 (E.D. Tex.);
Cypress Lake Software, Inc. v. HP Inc., Case No. 6-17-
cv-00462 (E.D. Tex.);
Cypress Lake Software, Inc. v. LG Electronics USA, Inc.,
Case No. 1-17-cv-01133 (D. Del.);
Cypress Lake Software, Inc. v. ZTE (USA) Inc., Case
No. 6-17-cv-00300 (E.D. Tex.);
Cypress Lake Software, Inc. v. HP Inc., Case No. 5:18-
cv-06144 (N.D. Cal.) (according to Patent Owner, transferred
from the Eastern District of Texas on 10/5/2018); and
Cypress Lake Software, Inc. v. ZTE (USA) Inc., Case
No. 5:18-cv-06146 (N.D. Cal.) (according to Patent Owner,
transferred from Eastern District of Texas on 10/5/2018).
Pet. 6–7; Paper 93, 2.
C. The ’558 Patent
The ’558 patent is titled “Methods, Systems, and Computer Program
Products for Coordinating Playing of Media Streams.” Ex. 1001, code (54).
The ’558 patent describes a problem of multiple media streams, such as
video, being allowed to be presented on the same device thus causing
undesirable interference.
When applications attempt to play more than one media
stream on current devices, all the applications are allowed

3 We note that Paper 9 is captioned for the related case IPR2019-00391
rather than bearing the number for this case, IPR2019-00390, and identifies
this case as a related one. We treat those as a typographical errors.
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access to the presentation devices of the device, for example a
display device and/or an audio device. The media streams are
played by corresponding applications without regard for other
media streams being played. Watching a video or listening to a
song with interference from other audio streams and video
streams is a common experience.
Id. at 1:21–28. Thus, according to the ’558 patent, “there exists a need for
methods, systems, and computer program products for coordinating playing
of media streams.” Id. at 1:43–45. Further according to the ’558 patent,
“[c]oordination and control of media streams as described herein may
prevent incomprehensible and sometimes unpleasant user experiences
resulting from media streams playing simultaneously in an uncoordinated
manner.” Id. at 14:51–54.
The ’558 patent discloses the use of “presentation focus information”
to coordinate the actions for the media players:
Methods and systems are described for coordinating
playing of media streams. In one aspect the method includes
detecting a first media player access to a first presentation
device to play a first media stream. The method further
includes accessing first presentation focus information for
determining whether the first media player has first presentation
focus for playing the first media stream.
Id. at 1:57–63. The ’558 patent explains that “presentation focus refers to an
attribute associated with a media player, directly and/or indirectly, indicating
whether the media player is allowed to access one or more presentation
devices for playing one or more corresponding media streams on the
presentation devices.” Id. at 9:43–48. “Presentation focus is an attribute for
restricting and coordinating access to an output device by one or more
applications.” Id. at 9:60–62. “Presentation focus information identifies
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and/or otherwise enables the identification of one or more media players and
whether the media players have presentation focus.” Id. at 9:20–23.
A change in the presentation focus may result from a user input such
as pressing “play.” Id. at 11:50–52 (“A user input for identifying a
particular media stream and/or player to play may be detected resulting in a
change to presentation focus information.”). The utilization of multiple
presentation devices is discussed:
In another aspect, presentation focus information may
identify more than one media stream of one or more media
players for playing on one or more presentation devices. That
is, multiple presentation devices may play media streams at the
same time and/or multiple media players may play
corresponding media streams on a shared presentation device.
Id. at 9:28–34.
D. Illustrative Claim
Of the challenged claims of the ’558 patent, claim 1 is an independent
claim. The remaining challenged claims depend directly or indirectly from
claim 1. Claim 1, reproduced below with bracketed annotations4 inserted, is
illustrative:
1[a]. A first presentation device, comprising:
[1b] a non-transitory memory storing instructions;
[1c] a touchscreen; and
[1d] one or more processors in communication with the
non-transitory memory and the touchscreen, wherein the one or
more processors execute the instructions to:
[1e] provide access to a first media player and a second
media player in an execution environment, [1f] the first
presentation device capable of communication with a second
presentation device including a display via a wireless network

4 We utilize Petitioner’s annotations for claim 1 for ease of reference but
have retained the paragraph formatting from the issued patent.
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on which the first presentation device resides, [1g] where
presentation focus information is accessible for identifying
whether at least one of the first presentation device or the
second presentation device is to be utilized for presentation;
[1h] detect access to the first media player to play a first
media stream that includes video;
[1i] indicate, if the first presentation device is to be
utilized for presentation based on the presentation focus
information, that the first media stream is allowed to be
presented via the first presentation device; and
[1j] indicate, if the second presentation device is to be
utilized for presentation based on the presentation focus
information, that the first media stream is allowed to be
presented via the second presentation device;
[1k] wherein the first presentation device is operable
such that a change in presentation focus is capable of being
based on at least one of a releasing of a first presentation focus
in connection with the first media player, a detected user input
indication for giving the second media player a second
presentation focus, a change in input focus, a change in an
attribute of a user interface element, a count of media streams
being played, a ranking of media streams being played, a
transparency level of at least one of the user interface element,
or another user interface element sharing a region of a display
of the first presentation device.
Ex. 1001, 28:65–29:35.
E. Evidence
Petitioner relies on the following references:
Reference Dates Exhibit No.
Marano US Pat. Appl. Pub.
No. 2010/0138780 A1
Filed May 20, 2009;
Published June 3, 2010
1003
Murray US Pat. Appl. Pub.
No. 2009/0228897 A1
Filed March 4, 2009;
Published Sept. 10, 2009
1006
Petitioner also relies on the Declaration of Dr. Benjamin B. Bederson
(Ex. 1002) in support of its arguments. Patent Owner initially relied on the
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“Rebuttal Expert Report of Dr. Aviel D. Rubin” (Ex. 2002) filed in a related
district court litigation. See PO Resp. 3, 9 n.17, 26 n.47. Patent Owner
withdrew reliance on that testimony and, pursuant to the parties’ joint
stipulation, Exhibit 2002 containing that testimony was expunged because
Dr. Rubin became unavailable for cross-examination. See Paper 15 at 2.
The parties rely on other exhibits as discussed below.
F. Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following ground:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–10, 12, 13 103(a) Marano, Murray
II. ANALYSIS
A. Principles of Law
Petitioner bears the burden of persuasion to prove unpatentability of
the claims challenged in the Petition, and that burden never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). To prevail, Petitioner must establish by a
preponderance of the evidence that the challenged claims are unpatentable.
35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2018).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
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(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) any objective evidence of
non-obviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. The Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted).
Petitioner, relying on the testimony of Dr. Bederson, maintains that:
In the relevant timeframe, a person of ordinary skill in the art
had at least a Bachelor’s Degree in Computer Science and two
years of work experience programming personal computing
systems including programming for audio-visual presentation
within various computer systems.
Pet. 50 (citing Ex. 1002 ¶ 29 (the Bederson Declaration); Ex. 1013, 12
(claim construction order in a district court proceeding)).
Patent Owner notes that the ’558 patent has been the subject of two
claim construction orders issued by the District Court for the Eastern District
of Texas, and requests that “the Board adopt a definition of [the person of
ordinary skill in the art] consistent with the District Court (and consistent
with the Petitioner’s reliance on documents from such proceedings).” PO
Resp. 23–24 (citing Exs. 1013, 1022 (claim construction orders)). Patent
Owner, however, does not explain how, if at all, Petitioner’s proposed level

5 The parties have not directed our attention to any objective evidence of
non-obviousness.
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of ordinary skill in the art is not consistent with that of the District Court.
Through added emphasis in quoting the District Court’s claim construction
order, Patent Owner identifies the type of bachelor’s degree as a difference.
Id. at 23 (quoting Ex. 1013, 12). The District Court found that a person of
ordinary skill in the art would have had a “Bachelor’s degree in Electrical
Engineering, Computer Engineering, Computer Science, or equivalent
thereof” (Ex. 1013, 12), whereas Petitioner proposes a Bachelor’s Degree in
Computer Science (Pet. 50). Although the District Court’s definition seems
broader than that proposed by Petitioner, we cannot say that the two
definitions are inconsistent. Patent Owner also does not explain how, if at
all, Petitioner’s proposed level of ordinary skill in the art is not consistent
with Petitioner’s (or Patent Owner’s) reliance here on documents from those
proceedings. See PO Resp. 24 (citing Exs. 1010, 1013–1022); cf., e.g.,
Pet. 17 (citing Exs. 1010, 1013–1020 in the context of informing the Board
that “[v]arious parties have taken positions concerning claim construction in
related litigation.”); Paper 15 at 2 (Patent Owner withdrawing reliance on
Dr. Ruben’s testimony from a district court proceeding).
We determine that the definition offered by Petitioner and
Dr. Bederson comports with the qualifications a person would have needed
to understand and implement the teachings of the ’558 patent and the prior
art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (recognizing that the prior art itself may reflect an appropriate level of
skill in the art). Moreover, the parties do not identify, and we not discern,
any difference between the two proposed definitions that has a material
effect on any dispositive issue in this case. Because Petitioner’s and Dr.
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Bederson’s definition reflects the level of ordinary skill in the art, we adopt
and apply it here.
C. Claim Construction
In an inter partes review requested in a petition filed on or after
November 13, 2018, we apply the same claim construction standard used in
district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019).
In applying that standard, claim terms generally are given their
ordinary and customary meaning as would have been understood by a person
of ordinary skill in the art at the time of the invention and in the context of
the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
the meaning of the disputed claim limitation, we look principally to the
intrinsic evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17).
The ’558 patent has been the subject of two claim construction orders
issued by the District Court for the Eastern District of Texas—in Cypress
Lake Software, Inc. v. ZTE (USA) Inc., Case No. 6-17-cv-00300 (E.D. Tex.)
(Ex. 1013, “the ZTE Claim Construction Order,” signed August 23, 2018)
and in Cypress Lake Software, Inc. v. Samsung Electronics America, Inc.,
Case No. 6-18-cv-00030 (E.D. Tex.) (Ex. 1022, “the Samsung Claim
Construction Order,” signed May 10, 2019).
1. Presentation Focus and Presentation Focus Information
The parties to the ZTE litigation (Patent Owner Cypress Lake and
defendant HP Inc.) agreed to the following proposed constructions of
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“presentation focus” and “presentation focus information” within the
meaning of claim 14 of the ’558 patent:
[P]resentation focus [refers to] an attribute associated
with a media player, directly and/or indirectly, indicating
whether the media player is allowed to access one or more
presentation devices for playing one or more corresponding
media streams on the presentation devices; an attribute for
restricting and coordinating access to an output device by one
or more applications [; and]
[P]resentation focus information [refers to] data that
identifies one or more media players and whether the media
players have presentation focus.
Ex. 1013, 12; see also Ex. 1010, 2 (Joint Claim Construction Statement,
“Cypress and HP have agreed on the following constructions”). The ZTE
District Court adopted those agreed-upon constructions. Ex. 1013, 13. The
parties to the Samsung litigation also agreed to the same or similar
construction for “presentation focus” within the meaning of claims 14
and 17, and the District Court adopted that agreed-upon construction.
Ex. 1022, 13, 15.
Petitioner, in the Petition, argues that the agreed constructions in the
ZTE Claim Construction Order are supported by the Specification and that
they should be adopted here. Pet. 17–18 (citing Ex. 1001, 9:15–25;
Ex. 1002 ¶¶ 50–51). In the Institution Decision, we determined that
Petitioner’s proposed constructions are consistent with descriptions in the
Specification and are applicable to independent claim 1 and its dependent
claims. Dec. to Inst. 10–11 (citing Ex. 1001, 9:20–23, 9:43–48, 9:60–62).
We adopted those constructions for purposes of the Institution Decision. Id.
at 11. In its Response, Patent Owner states that it does not dispute the
adopted constructions. PO Resp. 25. For purposes of this decision, we
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again adopt the constructions for “presentation focus” and “presentation
focus information” as set forth above.
2. Instructions To . . .
Independent claim 1, challenged here, as well as the other independent
claims of the ’558 patent (claims 14 and 24) recite “wherein the one or more
processors execute the instructions to . . .” followed by a list of actions. For
example, claim 1 recites:
instructions to . . . indicate, if the first presentation device is to
be utilized for presentation based on the presentation focus
information, that the first media stream is allowed to be
presented via the first presentation device.
Ex. 1001, 29:15–18. Claim 1 contains a similar recitation directed to the
second presentation device. See id. at 29:19–23. Recitations containing the
“instructions to” phrase have been the subject of at least the two claim
construction orders issued by the District Court for the Eastern District of
Texas. See Ex. 1013 (the ZTE Claim Construction Order), Ex. 1022 (the
Samsung Claim Construction Order). In the context of particular claims, the
District Court construed certain “instructions to . . .” phrases as means-plus-
function limitations governed by 35 U.S.C. § 112 ¶ 6 and certain other
“instructions to . . .” phrases as not governed by 35 U.S.C. § 112 ¶ 6. See
Ex. 1013, 66–67; Ex. 1022, 86.
Petitioner argues that the subject phrase should be construed to have
its plain and ordinary meaning. Pet. 18–19. Petitioner states, “[f]or the
limited purpose of the present petition, the Petitioners apply the court’s
interpretation in ZTE that claim terms of the form ‘instructions to…[perform
a function]’ are not governed by 35 U.S.C. §112 ¶6.” Id. at 18 (citing
Ex. 1013, 62–67). Patent Owner did not file a Preliminary Response. After
the issuance of the Samsung Claim Construction Order, which occurred
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subsequent to the initial briefing in this case and prior to a decision on
institution, the parties filed briefs to address the impact, if any, of the
District Court’s construction on the case before us. Papers 10, 11.
Petitioner argued that the outcome in this case does not change because the
asserted prior art renders the challenged claims obvious under either the
Samsung order’s construction of ‘instructions . . . to indicate’” or the plain
and ordinary meaning as asserted in the Petition. See Paper 11, 2–3. Patent
Owner argued that the claim phrase “instructions to . . . indicate” should not
be construed as governed by § 112 ¶ 6 and should be given its plain and
ordinary meaning. Paper 10, 5.
Because the parties were in agreement that the phrase should be
construed as having its plain and ordinary meaning, rather than being
governed by § 112 ¶ 6, and because we determined that Petitioner had
demonstrated a reasonable likelihood of showing that—under either of the
above-referenced constructions—subject matter having the “instructions
to . . . indicate” limitation would have been obvious, we determined that the
limitation did not require express construction for purposes of the Institution
Decision. Dec. to Inst. 13. The parties did not further brief the matter in
post-Institution briefs.
There continues to be no dispute between the parties regarding the
meaning of the “instructions to . . .” phrase. See, e.g., PO Resp. 25 (claim
construction section indicating that Patent Owner does not dispute the
“proposed and adopted constructions”). Additionally, we discern no
dispositive issue that turns on the meaning of that phrase. For these reasons,
we again determine that the “instructions to . . .” phrase does not require
express construction.
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3. Media Stream
Independent claim 1, for example, recites “instructions to . . . indicate,
if the first presentation device is to be utilized for presentation based on the
presentation focus information, that the first media stream is allowed to be
presented via the first presentation device.” Ex. 1001, 29:15–18 (limitation
[1i]) (emphasis added). Claim 1 contains a similar recitation where the
second presentation device is to be utilized. Id. at 29:19–23 (limitation [1j]).
Patent Owner argues that “a ‘media stream,’ in the context
claimed[,] . . . inherently includes an audio component.” PO Sur-Reply 4.
Patent Owner further argues that “even if the claims of the ‘558 patent do
not explicitly require audio and video to be played, the claims require the
system to include the ability to play audio and/or[6] video.” Id. at 8. Patent
Owner implicitly argues that the claims, via the recitation of “media stream,”
require the “handling of audio output” and displaying multimedia streams.
See id. at 17 (“Marano does not disclose handling of audio output, in the
context claimed. Specifically, Marano fails to disclose Patent Owner’s
claimed technique wherein ‘the first media stream is allowed to be presented
via the second presentation device,’ in the context claimed.”); id. at 9
(section heading, with bolding omitted: “Marano is directed . . . not towards
displaying multimedia streams.”); see also PO Resp. 36 (arguing that the
relied-upon references do not “teach handling of audio output data
associated with multiple resources.”).

6 Although Patent Owner uses the phrase “and/or,” we understand Patent
Owner to intend only “and” based on Patent Owner’s arguments as to that
which Marano purportedly lacks. See, e.g., PO Sur-Reply 9 (heading, with
emphasis and capitalizing omitted, “Marano does not disclose handling of
audio, in the context claimed.”).
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Petitioner argues that the claims do not require audio. Pet. Reply 3–6.
Petitioner contends that the claim term “media stream” encompasses “video
‘and/or’ audio (one or the other, or both).” Id. at 3–4 (bolding and footnote
omitted) (quoting Ex. 1001, 18:52–57). Petitioner argues that “[t]he silence
of the ’558 patent claims concerning audio contrasts sharply with their
express recitation of video.” Id. at 4 (quoting claim 1).
For the reasons that follow, we conclude that the claim term “media
stream” does not require audio or, as Patent Owner urges, the handling of
audio output or the displaying of multimedia streams.
Turning first to the claim language itself, we observe that the
independent claims of the ’558 patent do not include the term “audio.”
Ex. 1001, 28:65–29:35, 33:5–51, 35:18–67 (independent claims 1, 14,
and 24); cf. PO Sur-Reply 4 (Patent Owner arguing that “an audio
component” is inherent in the claim term “media stream.”). The lack of an
explicit mention of “audio” in the independent claims is in contrast to the
language in, for example, independent claim 1 reciting “a first media stream
that includes video.” Ex. 1001, 29:13–14; see also id. at 35:38–39
(independent claim 24 reciting the same). As discussed below, the
Specification of the ’558 patent evidences that video and audio are types of
“media.” The drafter’s use of the broader term “media stream” coupled with
the explicit reference to a media stream that includes video supports a
conclusion that the independent claims do not, as Patent Owner urges,
require a media stream that includes audio.
As Petitioner notes (Pet. Reply 3), the concept of audio, although not
recited in the independent claims, does appear in dependent claim 7, which
sets a maximum limit (but not a minimum) on the number of “audible video
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streams” presented on a given presentation device. See Ex. 1001, 31:21–27
(“[T]he first presentation device is configured such that no more than a
single audible video stream is presented via [each of two presentation
devices] at a time, in order to avoid an unpleasant listening experience.”).
Claim 7 evidences that the drafter knew how to include language directed to
audio when intended.
The Specification of the ’558 patent indicates that the term “media
stream” is a genus encompassing the species “audio streams” and “video
streams.” For example, the background section, in describing the problem
addressed, explains:
When applications attempt to play more than one media
stream on current devices, all the applications are allowed
access to the presentation devices of the device, for example a
display device and/or an audio device. The media streams are
played by corresponding applications without regard for other
media streams being played. Watching a video or listening to a
song with interference from other audio streams and video
streams is a common experience.
Ex. 1001, 1:21–28. In other words, a video stream (“[w]atching a video”) is
a type of “media stream,” and an audio stream (“listening to a song”) is
another type of “media stream.” The drafter, in the quoted excerpt above,
like others in the Specification, used the phrase “and/or” to broadly disclose
the subject matter and thereby encompass one or the other or both of a
particular item. Id. at 1:21–24 (“attempt[ing] to play more than one media
stream on . . . a display device and/or an audio device.”); 10:19–23 (“Priority
may be based on a content type of a media stream; a source of the stream,
and/or a time a media stream and/or media player has been waiting for
presentation focus. The list provided is exemplary and not exhaustive.”);
18:50–57 (“Applications 404a in FIG. 4a are illustrated including media
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player user interface element handlers (UIEH) 432a configured to
interoperate with GUI [graphical user interface] subsystem 420a and/or
audio subsystem 428a to present one or more video and/or audio streams on
display 130 and/or an audio presentation device (not shown).”) (emphasis
added).
The Specification further explains that “types of media streams”
include visual, audio, tactile, and odors, and states that “[c]orrespondingly,
exemplary media streams include a video or image data stream, an audio
stream, and a stream of other presentable sensory data.” Id. at 6:46–59;
cf. id. at 6:64–66 (“An audio player, video player, and/or or other media
player type may process and play audio data, video data, and/or other media
data, respectively”). Thus, although an audio stream is a type of media
stream, a media stream does not necessary include audio.
Patent Owner refers to the Specification and presents several
arguments in support of its position, with many utilizing qualified,
exemplary, and permissive, rather than mandatory, terminology. Patent
Owner makes the non-controversial assertion that “[a] media player may be
a multimedia player configured to play multiple media streams
concurrently,” but this does not help Patent Owner as the pertinent claim
term is “media player,” not “multimedia player.” PO Sur-Reply 6–8
(emphasis added). Patent Owner argues that “ALL of the exemplary file
formats for the media players in both the ‘558 Patent and Marano list
formats that are either audio . . . or audio/video,” but presents no persuasive
argument or evidence from which to conclude that the claimed invention is
limited to a device utilizing those exemplary formats. Id. at 7 (emphasis in
original); cf. id. at 8 (seemingly contradictorily arguing that “Marano fails to
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disclose or enable presentation of a ‘media stream,’ in the context
claimed.”). Patent Owner further argues that “the ‘558 patent teaches that
‘[c]ontainers for video formats often are defined to include audio and other
types of data streams’ . . . [and t]hus, even if the claims of the ‘558 patent do
not explicitly require audio and video to be played, the claims require the
system to include the ability to play audio and/or video.” Id. at 8 (quoting
Ex. 1001, 7:7–8) (emphasis added). Patent Owner does not explain how the
Specification’s qualified statement that video formats often are defined to
include audio streams translates into a claim limitation where formats must
always include audio. See id. (stating as support but without explanation:
“See, for example, claim 14 of the ‘558 Patent which is directed to the
technique of ‘present[ing] a first media stream via the first presentation
device utilizing the first media player,’ in the context claimed.”).
Petitioner additionally argues that the inference of a lack of an audio
requirement in the challenged patent is further strengthened by the treatment
and explicit claiming of audio in a related patent. Pet. Reply 5. Petitioner
notes that U.S. Patent No. 8,787,731 B27, having the same named inventor
and attorney as the ’558 patent, recites “media stream[s]” in independent
claim 1 and specifies, in dependent claim 3, that the media streams include
an audio stream. Ex. 10278, 28:25, 36, 60–63 (“The computer program
product of claim 1 wherein the computer program product is operable such

7 The ’731 patent and the challenged ’558 patent each identify U.S.
Application No. 12/691,042 as a related application, via a series of
continuations, and incorporate by reference that application. Ex. 1027, 1:6–
15; Ex. 1001, 1:6–17.
8 The Exhibit 1027 in the record is labeled as Exhibit 1028 in the footer. We
understand this to be a typographical error.
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that the first media stream includes a first audio stream and the second media
stream includes a second audio stream.”); compare id., codes (72), (74), with
Ex. 1001, codes (72), (74). We find Petitioner’s argument persuasive as this
again evidences that the claim drafter knew how to craft, when intended,
claims directed to a media stream having an audio stream component.
Petitioner also presents credible expert testimony that, in the pertinent
timeframe, “[a] media player would typically output a media stream, which
is a series of data pertaining to video, audio, or both.” Ex. 1002 ¶ 31; see
Pet. Reply 4 (citing the same).
Having considered all of the claim construction arguments and
evidence presented by the parties, we conclude that the claim term “media
stream” does not require audio or, as Patent Owner urges, the handling of
audio output or the displaying of multimedia streams.
D. The Alleged Obviousness of
Claims 1–10, 12, and 13 over Marano and Murray
Petitioner, relying on the testimony of Dr. Bederson (Ex. 1002) for
support, alleges that all of the challenged claims—claims 1–10, 12, and 13
of the ’558 patent—would have been obvious over Marano and Murray.
See, e.g., Pet. 51–64 (“claim mapping” for claim 1). Petitioner contends that
“Marano allows the output of software on one computer be presented on any
of a number of possible devices,” that “Murray, in turn, teaches coordinating
among media players to avoid interference,” and that “[i]t would have been
obvious to use Murray’s idea to coordinate among media players within
Marano’s system.” Id. at 20 (citing Ex. 1002 ¶¶ 53–55). According to
Petitioner, “Murray’s priority system supplements Marano’s system.” Id.
at 34.
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Patent Owner concedes that “Murray describes the use of
prioritization to avoid simultaneous media player output.” PO Resp. 19
(citing Ex. 1006 ¶ 25). However, Patent Owner argues, as to independent
claim 1, that a person of ordinary skill in the art would not have a reason to
modify Marano and that the proposed combination fails to “teach handling
of audio output data associated with multiple resources.” PO Resp. 26– 36.
Specifically, Patent Owner argues that the “Marano excerpts relied upon by
Dr. Benderson [sic] and cited by Petitioners, [do not] disclose or enable the
presentation of a ‘media stream,’ on ‘a second presentation device,’ in the
context claimed.” PO Sur-Reply 4. As to dependent claim 4, Patent Owner
further argues that the proposed combination lacks the “temporal
limitations.” PO Resp. 36–45; see id. at 43 (underlining the claim terms
“while” and “continues during”).
For the reasons given below, we determine Petitioner has shown by a
preponderance of the evidence that the challenged claims are unpatentable
over Marano and Murray.
1. Overview of Marano (Ex. 1003)
Marano discloses the use of external display devices with a mobile
computing device. Ex. 1003 ¶ 2. “When an external display device is
connected or attached to a mobile computing device, output data associated
with a resource executing on the mobile computing device may be displayed
on the external display device.” Id. Figure 2C of Marano is shown below.
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Figure 2C depicts an “embodiment of a system for displaying a plurality of
resources in a user-configurable display layout on an external display
device.” Id. ¶ 22. A “resource” may be an application. Id. ¶ 93.
Marano discloses the use of a window management service. As
shown in Figure 2A, reproduced below, the window management service is
located between the resources and the displays.

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Figure 2A is a block diagram depicting a system for displaying a plurality of
resources in a user-configurable display layout on an external display device.
Id. ¶ 20. “The window management system 206 and virtual graphics
driver 208 manage the locations and sizes of the display of output data
associated with each of the plurality of resources in a user-configurable
display layout.” Id. ¶ 91. The window management system may transmit
the output of resources to the mobile computing device’s native display, an
external display, or a combination thereof. Id.
Marano teaches that the window management service may store
associations between resources and cells on a grid display layout. Id. ¶ 112.
“In some embodiments, the user may associate a plurality of resources with
the same cell and prioritize the resources to determine which output data will
be displayed in the cell if more than one of the associated resources are
being executed.” Id.
2. Overview of Murray (Ex. 1006)
Murray pertains to media players that control the playback of other
media players. Ex. 1006 ¶ 2. Murray explains that it was known to have a
media player embedded in a web page or a separate application launched
upon accessing a web page that streams content. Id. ¶ 3. A user may
navigate from one website streaming content to another such that two media
players produce audio or video output simultaneously. Id. This would
require the user to locate the media player desired to be stopped and then
actively stop that media player. Id.
In addressing this, Murray describes the use of prioritization to avoid
simultaneous player output.
A user may experience a computer or other system running
several media players at the same time. In embodiments of the
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present invention, these media players coordinate media
playback control with each other using bidirectional
communications, so that only one media player plays media at a
given time. The media players may establish a priority for
playback, and only the player with the highest priority may
play. When the highest priority player finishes, the system may
remove this media player from the priority list, and allow the
media player with next highest priority to play. In this way,
only one media source plays at any time. Additionally, the
media players will respond to user interactions and user
interactions will be assigned the highest priority.
Ex. 1006 ¶ 25. Murray further explains that, “[g]enerally, to provide the
best end user experience, a media player is assigned the highest priority
when the user interacts with it.” Id. ¶ 53. For user interaction, Murray
describes a media player having visible controls, such as icons or buttons for
starting and stopping media. Id. ¶ 29. Figure 1 is shown below.

Figure 1 shows an internet browser and two media players. Id. ¶ 18.
Murray discusses the interaction between two competing media
players and the change in priority due to user interaction. Id. ¶¶ 52–57. For
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example, if a user presses “play” on the second media player while the first
media player is playing, a priority allocation arises, with the second media
playing having highest priority because it is the subject of the most recent
user interaction. Id. ¶ 52. The change of active media players is explained
with reference to Figure 5:
At some later time, second media player 506 will begin
to play media. However, before the media can be played, the
first media player may be stopped. Thus, in process 525 second
media player 506 sends a “stop playing” message to first media
player 504 using a LocalConnection. The first media player
504 may then become aware that another media player with
higher priority wishes unimpeded access to the audio or video
device, and in exemplary embodiments, may pause or stop
playing in process 526. On or about the same time, second
media player begins to play its own media in process 527.
Id. ¶ 57.
3. The Alleged Obviousness of Claim 1 in View of Marano and
Murray
a. 1[a]. A first presentation device
Petitioner asserts, and we agree, that Marano discloses a presentation
device in the form of Mobile Computing Device 102 having native
display 201. Pet. 52 (citing Ex. 1006 ¶¶ 91–92, Fig. 2A).
b. [1b] a non-transitory memory storing instructions
Petitioner asserts, and we agree, that Marano’s Mobile Computing
Device is an example of computing device, which can have a hard disk
drive, for example, storing instructions. Id. at 52–53 (citing, inter alia,
Ex. 1003 ¶¶ 80, 85, 87). Petitioner persuasively contends that it would have
been obvious that, in the computer of the proposed modification, “all
subsequent actions (i.e. all functional claim elements) are carried out by the
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execution of instructions.” Id. at 53 (citing Ex. 1002 ¶ 111). Patent Owner
does not address this feature. We find that, based on the arguments and
evidence presented by Petitioner, summarized above, Marano teaches or at
least suggests the recited non-transitory memory storing instructions.
c. [1c] a touchscreen
Petitioner asserts that Marano discloses that many modern mobile
devices had touch screens, and contends that it would have been obvious to
use a touchscreen with Mobile Computing Device 102 “for the known
advantages of allowing a user to interact with screen content without
carrying an attached keyboard and mouse.” Pet. 53–54 (citing Ex. 1002
¶ 112). Patent Owner does not address this feature. Petitioner persuasively
shows that Marano teaches or suggests the recited touchscreen.
d. [1d] one or more processors in communication with
the non-transitory memory and the touchscreen,
wherein the one or more processors execute the
instructions to . . .
Petitioner asserts that Marano’s computing device 100 has a processor
(CPU 121) in communication with storage device 128 to cause loading of
software instructions from the storage device to be executed by CPU 121.
Id. 54–55 (citing Ex. 1003 ¶¶ 75–78). Petitioner contends that a person of
ordinary skill in the art “would have understood that the CPU 121 must and
obviously did communicate with the touch screen to tell the touch screen
what to display, and to receive input commands from the touch screen.” Id.
at 55 (citing Ex. 1003 ¶ 77; Ex. 1002 ¶ 113). Patent Owner does not address
this feature. Based on the arguments and evidence presented by Petitioner,
we find that Marano teaches or suggests the recited “one or more processors
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in communication with the non-transitory memory and the touchscreen,
wherein the one or more processors execute the instructions to . . . .”
e. [1e) instructions to:] provide access to a first media
player and a second media player in an execution
environment, [1f] the first presentation device capable
of communication with a second presentation device
including a display via a wireless network on which the
first presentation device resides, [1g] where
presentation focus information is accessible for
identifying whether at least one of the first presentation
device or the second presentation device is to be
utilized for presentation
Petitioner asserts that Marano teaches an execution environment, and
compares Marano’s Figure 1B to the description of an “execution
environment” in the ’558 patent. Pet. 55 (citing Ex. 1001, 3:33–36 (“An
execution environment is an arrangement of hardware and, optionally,
software that may be further configured to include an arrangement of
components for performing a method of the subject matter described
herein.”)); see Ex. 1001, 3:44–50 (The Specification of the ’558 patent
explaining that “[e]xemplary devices included in or otherwise providing
suitable execution environments for configuring according to the subject
matter include personal computers, . . . mobile devices, multiprocessor
systems, consumer electronic devices, . . . .”).
Petitioner asserts that Marano teaches providing access to a plurality
of resources that can be any application, including those that output video,
and that Murray teaches multiple media players (applications that play a
media stream) in the same computing environment, and that it would have
been obvious for Marano’s system to provide access to two media players.
Pet. 55–56 (referring to the reasoning in § III.C.2 of the Petition and citing
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Ex. 1003 ¶¶ 91–93, 104; Ex. 1006 ¶¶ 3, 24, 28, 32, Fig. 1; Ex. 1002 ¶¶ 115–
117).
Petitioner further asserts that Marano teaches that Mobile Computing
Device 102 (mapped to the first presentation device) is capable of
communicating with External Display Device 202 (a second presentation
device with a display), and that the communication can take place wirelessly
by, for example, Bluetooth or Wi-Fi. Id. at 56 (citing Ex. 1003 ¶¶ 91, 95).
Petitioner asserts that Marano teaches that communicating devices can be on
the same network and therefore it would have been obvious that the Mobile
Computing Device (first presentation device) could reside on the same
network as the External Display Device (second presentation device). Id.
(citing Ex. 1002 ¶ 120; Ex. 1003 ¶¶ 64–65).
Claim 1 further recites, “where presentation focus information is
accessible for identifying whether at least one of the first presentation device
or the second presentation device is to be utilized for presentation.” For this
aspect of the claim, Petitioner asserts that Marano keeps track of information
that associates resources (e.g., media players) with output devices (i.e.
presentation devices). Pet. 57. Petitioner further asserts that, in the
proposed combination, such information in Marano would have been
combined with the priority information of Murray “such that each media
player is associated with one or more output devices and has a priority for
each output device.” Id. (citing Ex. 1002 ¶ 122). Petitioner refers to the
combination of Marano’s information regarding resource-to-presentation-
device association with Murray’s priority for associated output as “combined
information.” Id. at 38–39. Petitioner contends that this combined
information would be “presentation focus information” within the meaning
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of the ’558 patent, and the information would be accessible by Marano’s
window management service. Id. at 57–58 (citing Ex. 1002 ¶¶ 123, 126).
Petitioner persuasively argues that it would have been obvious to make this
modification because “[t]he combined information would have provided the
advantage expressly described in Murray, namely avoiding interference
between media players, while still maintaining the advantage of Marano, the
ability to use multiple output devices.” Id. at 16 (citing Ex. 1002 ¶¶ 80, 84).
We understand Patent Owner to not dispute Petitioner’s contentions
regarding these limitations, other than the reasons to combine the references’
teachings. We address below Patent Owner’s arguments in that regard.
Based on the arguments and evidence presented by Petitioner,
summarized above, we find that Petitioner persuasively shows that the
combination of Marano and Murray teaches or suggests the recited “[1e)
instructions to:] provide access to a first media player and a second media
player in an execution environment, [1f] the first presentation device capable
of communication with a second presentation device including a display via
a wireless network on which the first presentation device resides, [1g] where
presentation focus information is accessible for identifying whether at least
one of the first presentation device or the second presentation device is to be
utilized for presentation.”
f. [1h) instructions to:] detect access to the first media
player to play a first media stream that includes video
Petitioner asserts that Marano offers the general teaching of standard
applications that the user may access and that may be detected in the normal
ways by the window management service. Pet. 59 (citing Ex. 1002 ¶ 127;
Ex. 1003 ¶¶ 7, 25). Petitioner further asserts that Murray specifically
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teaches accessing media players to play a video media stream, with the
media players having standard controls like play and stop buttons. Id. at 59–
60 (citing Ex. 1006 ¶ 29, Fig. 1). Petitioner persuasively argues that it
would have been obvious to detect user interactions with the media player
because otherwise the system could not respond when, for example, the user
presses the play button on the media player. Id. at 61 (citing Ex. 1002
¶ 137). Patent Owner does not address this feature. We find that, based on
the arguments and evidence presented by Petitioner, summarized above,
Petitioner persuasively shows that the combination of Marano and Murray
teaches or suggests the recited “[instructions to:] detect access to the first
media player to play a first media stream that includes video.”
g. [1i) instructions to:] indicate, if the first presentation
device is to be utilized for presentation based on the
presentation focus information, that the first media
stream is allowed to be presented via the first
presentation device
As mentioned above, the Petition applies the District Court’s
interpretation, as set forth in the ZTE Claim Construction Order, of the
“instructions to” phrase as not a means-plus-function term under 35 USC
§112 ¶ 6. Pet. 18–19; see Ex. 1013, 66–67 (ZTE Claim Construction Order
concluding that “instructions to,” at least in the context of claim 14, is to be
given its plain and ordinary meaning). The Petition asserts that the
“combined information” of the proposed combination—Marano’s
resource/display association information plus Murray’s prioritization
information—would determine whether any particular media player is
allowed to be played on any particular presentation device. Id. at 61–62
(citing Ex. 1002 ¶ 132). Petitioner further asserts that Marano’s window
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management service would, when appropriate, permit (i.e. allow) a first
media player to present a media stream via a first presentation device. Id.
at 62 (citing Ex. 1003 ¶ 94 (“In one embodiment, the mobile computing
device 102 includes a window management service 206 allowing an external
display device 202 to display the output data associated with each of a
plurality of resources 204 executed on the mobile computing device 102.”).
As also mentioned above, Petitioner, in its brief discussing the
relevance of the then-recently issued Samsung Claim Construction Order—
which construed this and the next “instructions to . . . indicate” phrase as
means-plus-function limitations governed by § 112 ¶ 6—contends that
applying the interpretation in that order does not change the outcome
because the prior art in the Petition continues to render obvious the
challenged claims. Pet.’s Cl. Constr. Br. (Paper 11), 2–3; see Ex. 1022, 84,
88, 91–95 (Samsung Claim Construction Order discussing Term No. 33).
According to Petitioner, “[t]he Petition explained that the combination of
Marano in view of Murray is a microprocessor-based system that executes
instructions to perform certain functions,” and that execution of the recited
“indicate” function is performed by Marano’s window management service.
Pet.’s Cl. Constr. Br. (Paper 11), 2–3 (citing Pet. 52–53, 40–41).
Regarding corresponding structure identified in the Samsung Claim
Construction Order9, Petitioner asserts:

9 The Samsung Court identified as the corresponding structure for the
“instructions . . . to indicate” phrases of claim 1: “A processor programmed
to perform one or more of the steps for indicating that the media stream is
allowed to be presented via the presentation device disclosed in the ’558
Patent at [14:]7–50, 23:24–49, 25:55–26:9.” Ex. 1022, 95; see id. at 92–94
(quoting, with emphasis added, those portions of the ’558 patent).
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Marano’s WMS [window management service] performs
this algorithm [at column 14, lines 19–25, of the ’558 patent10].
As explained in the Petition, the WMS plays the coordinating
role in the combination, allowing or not allowing access to
presentation devices by media players. (Pet. 40-41)(Ex. 1002,
¶¶0085-0089). The WMS’s central role is shown in the figure
on page 40 of the Petition, where the WMS 206 sits between
the software resources and presentation devices, and controls
access to the presentation devices by the resources. (Pet. 39-
41)(Ex. 1002, ¶¶88-89 and 64-65)(explaining the coordinating
role of the WMS). In the combination, the WMS further
determines whether presentation should be allowed (Ex. 1003,
¶¶0094, 0118), and if so, “instructs the virtual graphics driver
208 to forward the output data generated by the resource 204 to
the external display device….” (Ex. 1003, ¶0119), (Ex. 1002,
¶¶64-65, 88-89), (Pet. 40-41) (explaining that WMS uses
associations between resources and output device and checks
priority). Because the WMS in the Marano-Murray
combination performs the coordination of resource access to
presentation devices, the WMS is a “presentation access
component” or equivalent under the ’558 patent. (compare Ex.
1001, 18:26-49). Furthermore, because the WMS coordinates
and allows (or does not allow) forwarding of output data to
presentation devices (Ex. 1003, ¶¶0118-0119, 0094), it is
“passing along” (or not) the output data of its resources (e.g.
media players), thereby “indicating” whether a media player is
allowed to play.
Id. at 3–4; see also Pet. 39 (“A POSITA would have found it obvious to use
Marano’s window management service to keep the ‘combined information’
and perform the coordination among media players by indicating whether

10 Petitioner’s cited portion and that which the District Court identified as
corresponding structure states: “Presentation access component 352 may
process the data for presentation as configured, and/or pass it along
unprocessed for processing by the first presentation device and/or another
component included in the process of presenting the media stream, thus
indicating the first media player is allowed to play the first media stream.”
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media players are allowed to play on a presentation device.” (emphasis
added)), 40–41 (“In the combination, . . . the window management service
would indicate whether a media player is permitted to present media via a
certain output device.”).
We understand Patent Owner to not dispute Petitioner’s contentions,
other than the reasons to combine the references’ teachings, regarding this
“first presentation device” limitation. See, e.g., PO Sur-Reply 9 (directing
arguments to the “second presentation device” limitation). Based on the
arguments and evidence presented by Petitioner, summarized above, we find
that Petitioner persuasively shows that the combination of Marano and
Murray teaches or suggests, under either construction, the recited
“[instructions to:] indicate, if the first presentation device is to be utilized for
presentation based on the presentation focus information, that the first media
stream is allowed to be presented via the first presentation device.”
h. [1j) instructions to:] indicate, if the second
presentation device is to be utilized for presentation
based on the presentation focus information, that the
first media stream is allowed to be presented via the
second presentation device
This limitation is similar to the immediately-preceding one, involving
the first media stream being allowed to be presented via the first presentation
device, except this limitation involves that first media stream and the second
presentation device, and is the subject of the parties’ dispute. See, e.g., PO
Sur-Reply 9, 17.
Petitioner asserts that its analysis of the immediately-preceding
“instructions to . . . indicate” recitation applies equally as to this recitation
pertaining to the second presentation device. Pet. 62. Petitioner further
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asserts that “Marano teaches that a user can configure a resource to output to
a first or second presentation device.” Id. (citing Ex. 1002 ¶ 135; Ex. 1003
¶¶ 91, 94).
Patent Owner’s arguments pertain to the audio capability of the
recited second presentation device. Patent Owner affirmatively states that it
“does not dispute that Marano discloses handling of audio output,” but
argues that Marano does not disclose or enable the first media stream being
allowed to be presented via the second presentation device. PO Sur-Reply 4,
9; see also PO Resp. 5–6, 33–36. We understand Patent Owner to argue that
Marano discloses only the immediately-preceding limitation—involving the
first media stream presented via the first presentation device—but not the
capability of presenting audio via the second presentation device. See PO
Sur-Reply 9, 12, 15–17. According to Patent Owner, Marano only discloses
speakers or a headphone jack, i.e. audio presentation capability, on Mobile
Computing Device 102 (mapped to the claimed first presentation device),
but that External Display Device 202 (a second presentation device) merely
has a monitor with no speaker. Id. at 15–16; see also PO Resp. 5–6, 33–34.
Thus, argues Patent Owner, that second presentation device of Marano
“cannot play or present a media stream, in the context claimed.” PO
Sur-Reply 17. Based on this argument, Patent Owner further argues that
Petitioner has failed to “show[] how either Marano or Murray, individually
or in combination, would teach handling of audio output data associated
with multiple resources.” PO Resp. 36 (emphasis added).
Patent Owner’s arguments are not persuasive as they are premised on
the contention that the recited “media stream” requires an audio component.
As discussed above in the context of claim construction (supra Section
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II.C.3), the term “media stream” does not require audio or, as Patent Owner
urges, the handling of audio output or the displaying of multimedia streams.
Based on the arguments and evidence presented by Petitioner,
summarized above, and after consideration of Patent Owner’s arguments in
opposition, we determine that Petitioner has demonstrated that the proposed
combination of Marano’s window management service with Murray’s
prioritization system teaches or suggests the recited indication and the
associated relationships of the first media stream being allowed to be
presented via the first and second presentation devices, respectively, when
so indicated. See Pet. 61–62 (addressing limitations [1i] and [1j]).
i. [1k] wherein the first presentation device is operable
such that a change in presentation focus is capable of
being based on at least one of a releasing of a first
presentation focus in connection with the first media
player, a detected user input indication for giving the
second media player a second presentation focus, a
change in input focus, a change in an attribute of a
user interface element, a count of media streams being
played, a ranking of media streams being played, a
transparency level of at least one of the user interface
element, or another user interface element sharing a
region of a display of the first presentation device
Petitioner asserts that Murray teaches that user access to a media
player should change the priority. Pet. 63 (citing Ex. 1006 ¶¶ 25 (“[T]he
media players will respond to user interactions and user interactions will be
assigned the highest priority.”), 53; Ex. 1002 ¶ 137). Petitioner maps this
with the claim’s recitation of “a detected user input indication for giving the
second media player a second presentation focus.” Id. Petitioner further
asserts that Murray teaches a change in presentation focus based on a
releasing of a first presentation focus in connection with the first media
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player, based on a ranking of media streams, and a change in an attribute of
the user interface element (e.g., pressing a play or stop button). Id. at 63–64
(citing Ex. 1006 ¶ 60; Ex. 1002 ¶¶ 138–139). Patent Owner does not
address this feature. Based on the argument and evidence presented by
Petitioner, summarized above, we determine that Murray teaches or suggests
the recited “wherein the first presentation device is operable such that a
change in presentation focus is capable of being based on at least one of [the
listed items].”
j. Reason to Combine
Petitioner, relying on the testimony of Dr. Bederson, reasons, inter
alia, that Marano’s system is running multiple resources simultaneously,
thereby creating the potential for media player conflict and, because of this,
it would have been obvious to utilize Murray’s media player prioritizing
technique in Marano’s system to avoid possible interference. Pet. 35–38
(citing Ex. 1002 ¶¶ 75–80). Petitioner further argues:
[I]t would have been obvious to supplement information
already stored by Marano by adding an indication of priority, as
suggested by Murray. (Ex. 1002, ¶81). As discussed above in
§III.B.1, Marano obviously maintains an association between
each executing resource and its assigned presentation device(s).
Because Marano associates at least one presentation device with
each resource (which can be a media player), and Murray
associates a priority with each media player, it would have been
obvious to associate each resource with one or more
presentation devices (as Marano already teaches) and a priority
for each associated output device (as Murray renders obvious).
(Ex. 1002, ¶81).
Pet. 38–39 (citing Ex. 1002 ¶¶ 80–84). According to Petitioner, “[t]he
combined information would have provided the advantage expressly
described in Murray, namely avoiding interference between media players,
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while still maintaining the advantage of Marano—the ability to use multiple
output devices.” Id. at 39 (citing Ex. 1002 ¶¶ 80, 84).
Petitioner, relying on the testimony of Dr. Bederson, additionally
argues that, “[b]ecause the window management service is the software
responsible for coordinating between resources and output devices in
Marano, it would have been obvious to have it perform this function in the
combined system, by storing and using the combined information.” Id.
at 39–40 (citing Ex. 1002 ¶¶ 85–86).
Petitioner also argues that “it would have been obvious to use
Murray’s detect-and-pause functionality to avoid conflicts.” Id. at 48 (citing
Ex. 1002 ¶ 101). Petitioner reasons, based in part on Murray’s teaching of
setting recent user interaction as the highest priority, that a user expects a
media player to play upon pressing the “play” button, and, therefore, it
would have been obvious to have the system monitor that button and to play
the media without interference from other media players. Id. at 48–50
(citing Ex. 1002 ¶¶ 77, 102–104, 123).
Petitioner also persuasively argues that there would have been a
reasonable expectation of success in combining the references’ teachings as
proposed. Id. at 50–51; contra PO Resp. 4 (Patent Owner arguing, without
elaboration or any persuasive explanation, that Petitioner failed to show a
reasonable expectation of success). Petitioner relies on Dr. Bederson’s
testimony and other evidence for the propositions that the art was relatively
predicable and that the pertinent systems were well-known at the relevant
timeframe. Pet. 50–51 (citing Ex. 1002 ¶ 105; Ex. 1017 ¶¶ 595–596;
Ex. 1020, 3–7, 17); Pet. Reply 17–21 (addressing Patent Owner’s
non-enablement and reasonable expectation of success arguments).
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Patent Owner, in its Response, argued that a person of ordinary skill
in the art “would not have been motivated to modify the system of Marano
with Murray.” PO Resp. 26. In support for that proposition, Patent Owner
cited to expert testimony that has since been withdrawn by Patent Owner.
See id. (citing Ex. 2002); id. at 3 (identifying Ex. 2002 as a rebuttal expert
report filed in a district court case); Paper 15 at 2 (Joint Stipulation To
Expunge Testimony of Dr. Aviel Rubin). Patent Owner, in its Sur-Reply,
does not appear to continue to dispute Petitioner’s reasoning to combine the
references’ teachings (see, e.g., PO Sur-Reply 2 (Table of Contents)), but we
nonetheless address the arguments in Patent Owner’s Response in the
interest of completeness.
Patent Owner argued that Petitioner’s reasoning to combine is based
on “[Dr. Bederson’s] unsupported statement that ‘Marano allows any
resource to be associated with, and therefore output to or present on, any
available output device.’” PO Resp. 31 (quoting Ex. 1002 ¶ 59). Patent
Owner alleged that “[t]his is false and is a mischaracterization of Marano.”
Id. Patent Owner’s arguments appear to be premised on the assertion that
the claimed “media stream” requires an audio component and that Marano
does not disclose the handling of audio data output. See, e.g., id. at 33
(“[N]o support is provided by Petitioner to show with specificity how, for
example, audio data output from a media player (Resource 204a-n of
Mobile Computing Device 102) would be handled by the Window
Management Service 206 and presented either by the External Display
Device 202a-n or Mobile Computing Device 102.” (emphasis added)); cf.
Pet. Reply 6 (“[Patent Owner] Cypress Lake may also be arguing that
Marano’s teachings regarding audio would discourage the combination with
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Murray. Such an argument would fail at the outset, because neither
Murray’s system, nor the motivation behind the combination, requires
audio.”).
To the extent that our understanding is correct and Patent Owner’s
argument is premised on a requirement of audio handling, the argument is
not persuasive because, for the reasons given above in the claim construction
discussion, the term “media stream” does not require an audio component or
the handling thereof. Additionally, Patent Owner, in the Sur-Reply, backs
away from its earlier position and states that “Patent Owner does not dispute
that Marano discloses handling of audio output.” PO Sur-Reply 9.
Patent Owner also argues, “Dr. Bederson bases his opinions on
personal beliefs and mischaracterizations of the prior art . . . [and t]hus, his
declaration cannot establish a reason to modify Marano in the manner
Petitioner proposes.” PO Resp. 27 (citing Ex. 1002 ¶¶ 54–104; In re Am.
Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (concerning
the lack of factual corroboration for opinions)). To the extent that Patent
Owner argues that the testimony of Dr. Bederson regarding a reason to
modify Marano is conclusory, we do not find this to be persuasive. Patent
Owner merely cites fifty-one paragraphs in Dr. Bederson’s declaration as
support for the proposition of conclusory testimony and does not elaborate
on the assertion that Dr. Bederson’s expert opinion is based on “personal
beliefs.” Id. at 27 (citing Ex. 1002 ¶¶ 54–104). Those cited fifty-one
paragraphs contain citations to other evidence in the record and include
developed analysis, and are not merely conclusory opinion as Patent Owner
may be implying. See, e.g., Ex. 1002 ¶ 55–67 (describing the teachings of
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Marano that underlie the opinions concerning the obviousness of the claimed
subject matter).
As to the “mischaracterizations” argument, Patent Owner implicitly
asks us to accept Patent Owner’s characterization of the references over that
of Petitioner’s expert. PO Resp. 27–36. Patent Owner argues that Marano
should be considered to describe five different inventions and then focuses
on certain embodiments that purportedly fail to support Dr. Bederson’s
opinion. See id. at 11–19, 27–36. For example, Patent Owner admits that
“Marano discloses that a ‘resource’ may be an application,” but appears to
argue that an ordinary artisan would have read Marano’s disclosure very
narrowly, arguing that “the specification and Figures of Marano make clear
that the Invention A is directed to, for example, a calendar 420, file explorer
422, and e-mail 424.” Id. at 14–15 (citing Ex. 1003 ¶¶ 93, 113, Fig. 4C).
Patent Owner also supports its arguments with an unpersuasive hypothetical
situation that Patent Owner admits is “illogical but also a technological
impossibility” and one that “[o]bviously, no [person of ordinary skill in the
art] would assume . . . that Marano disclosed and enabled.” Id. at 30–31
(arguing that “running Oracle’s most advanced database on the cellular
phone client 102n” is not enabled).
Dr. Bederson’s purportedly unsupported opinion—that “Marano
allows any resource to be associated with, and therefore output to or present
on, any available output device”—is preceded by support. See Ex. 1002
¶ 59. Dr. Bederson discusses Marano’s disclosure and includes the
quotation therefrom that states:
In many embodiments, the mobile computing device 102
transmits the output data associated with certain of the plurality
of resources 204 to the native display 201 [of mobile computing
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device 102] and transmits the output data associated with other
of the plurality of resources 204 to the external display devices
202a-n.”
Id. (quoting Ex. 1003 ¶ 91) (bolding omitted). We find Dr. Bederson’s
opinion to be sufficiently supported and that Marano teaches one of ordinary
skill in the art that the several resources may be output to any available
output device. We find Dr. Bederson’s testimony to be credible and not
outweighed by Patent Owner’s unpersuasive attorney argument, which, in
any event, is not evidence.
Petitioner has provided adequate reasoning as to why one of ordinary
skill in the art would have modified Marano’s windows management system
by incorporating Murray’s prioritization technique and that this combination
yields the claimed subject matter of claim 1, and Petitioner has provided
adequate evidence to show that a person of ordinary skill in the art would
have had a reasonable expectation of success in doing so.
k. Conclusion as to Independent Claim 1
Based on the foregoing, Petitioner has established that independent
claim 1 is unpatentable over the combination of Marano and Murray.

4. The Alleged Obviousness of Claims 2, 3, 5–10, 12, and 13 Over
Marano and Murray
Petitioner also contends that claims 2, 3, 5–10, 12, and 13 would have
been obvious based on the same combination of prior art. These challenged
claims all depend directly or indirectly from independent claim 1. Petitioner
identifies teachings in the prior art references that teach or suggest the
limitations of these dependent claims, and provides persuasive reasoning as
to why the claimed subject matter would have been obvious to one of
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ordinary skill in the art. Pet. 41–50, 64–70, 72–79. Petitioner also supports
its contentions for these claims with the testimony of Dr. Bederson. Ex.
1002 ¶¶ 103, 140–148, 152–168. Patent Owner does not present any
arguments for these dependent claims other than what we have already
considered with respect to independent claim 1.
We have considered the evidence and arguments of record and
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 2, 3, 5–10, 12, and 13 would have been obvious based
on Marano and Murray for the reasons discussed in the Petition as supported
by the testimony of Dr. Bederson.
5. The Alleged Obviousness of Claim 4 Over Marano and Murray
Claim 4 depends from claim 2, which depends from independent
claim 1. Petitioner contends that claim 4 would have been obvious based on
the same combination of prior art discussed above. Pet. 71–72. Patent
Owner asserts that claim 4 contains “temporal” limitations (PO Resp. 42–43)
and argues that Marano and Murray fail to disclose those limitations (id.
at 40–45).
The preamble of claim 4 describes the media player/presentation
device relationship as follows: “The first presentation device of claim 2,
where, . . . only the second presentation device is indicated to be utilized for
presentation in connection with the first media player and only the first
presentation device is indicated to be utilized for presentation in connection
with the second media player.” Ex. 1001, 30:27–32. The parties visually
describe this relationship with the diagram shown below.
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Pet. 71; see also PO Resp. 40 (same or similar). The diagram above depicts
the First Media Player presenting on the Second Presentation Device and the
Second Media Player presenting on the First Presentation Device.
Like independent claim 1, dependent claim 4 calls for a device having
processor(s) that execute certain instructions. See Ex. 1001, 28:65–29:3
(preamble of independent claim 1), 29:36–37 (preamble of dependent
claim 2), 30:27–32 (preamble of dependent claim 4). Claim 4 recites, in
pertinent part, the following such instructions:
detect, while the first media stream is being presented via
the second presentation device utilizing the first media player, a
selection of the at least one second input control presented with
the second media player; and
in response to the detection of the selection of the at least
one second input control presented with the second media
player while the first media stream is being presented via the
second presentation device utilizing the first media player,
perform the change in the presentation focus such that the
presentation of the first media stream via only the second
presentation device utilizing the first media player continues
during presentation of the second media stream via only the
first presentation device utilizing the second media player.
Ex. 1001, 30:40–53 (emphasis added). In other words, claim 4 calls
for: 1) detecting an input control (e.g., pressing “play”11) on the second

11 Figure 7 of the ’558 patent depicts “[a]pplication windows 704 [that]
include respective command bars 706 with input controls for receiving user
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media player while the first media player is presenting the first media stream
on the second presentation device, and 2) in response to that input detection,
changing the presentation focus such that the first media stream presentation
continues during presentation of the second media stream from the second
media player to the first presentation device—i.e. the crossed-arrow scenario
depicted above.
Petitioner, relying on the testimony of Dr. Bederson, persuasively
argues that the crossed-arrow scenario (two player/presenter pairs) would
have been obvious in the proposed combination, which involves managing
multiple players and presenters. Pet. 71–72. In support, Petitioner points to
Murray’s prioritization method for controlling multiple media players so as
to avoid interference from each other and points to Murray’s teaching that,
“in some embodiments other media players may play other media at the
same time.” Id. (quoting Ex. 1006 ¶ 51; citing Ex. 1006 ¶¶ 30, 49, 62; Ex.
1002 ¶ 151). Petitioner maintains that, “[w]here a different presentation
device is used for each media player, it would have been obvious to allow
both media players to play, for example where the presentation devices are
in separate rooms, connected to headphones, or where the audio would not
interfere.” Id. at 71–72 (citing Ex. 1002 ¶151).
Patent Owner argues that Petitioner’s two-room, two-player
hypothetical situation is not suggested by Murray because “Murray merely
discloses simultaneous playback in the context of a problem being solved by
pausing one of the players (to avoid such undesired simultaneous

input to change the operational state of the respective media players
represented,” with those command bars including “Play,” “Stop,” “Reverse,”
and “FForward.” Ex. 1001, 17:48–63, Fig. 7.
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playback).” PO Resp. 42. Patent Owner further argues that “[t]here is not
even a suggestion [in Murray] of tackling the problem with simultaneous
playback via different presentation devices.” Id. Patent Owner’s argument,
as we understand it, is that Murray does not suggest the crossed-arrow
relationship between player/presenter pairs. This argument is not persuasive
as it fails to address Petitioner’s proposed combination of two references’
teachings, appears to require an explicit disclosure of the particularly
claimed relationship, fails to address (while characterizing Murray’s
teaching as limited to pausing a player to avoid simultaneous playback)
Murray’s explicit statement that “other media players may play other media
at the same time,” and ignores the ordinary creativity that the ordinary
artisan would bring to bear. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”); see also Pet. Reply 25–27 (Petitioner reiterating that
the ground is based on the combination, not one reference in isolation).
Patent Owner then attacks Marano, arguing “while Petitioner’s cites to
Marano [to] address simultaneous playback via different presentation
devices, they simply do NOT rise to the level of specificity of the ‘temporal’
limitations.” PO Resp. 42. Patent Owner presents two diagrams,
reproduced below, as demonstrative of its argument regarding the
purportedly limited disclose of Marano.

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Id. at 44. The demonstrative diagrams above depict Patent Owner’s
interpretation of timelines showing the relative times when two players are
playing in Marano. Patent Owner then argues that “disclosing, as in
Marano, that a first player plays and a second player plays, as displayed
pictorially above, fails to teach the specific limitations of Claim 4,
particularly in view of the temporal limitations, consistent with [the
crossed-arrow player/presenter relationship].” Id. at 45. Patent Owner does
not elaborate on this argument in the Response or in its Sur-Reply after
Petitioner replied to this argument, Pet. Reply 22–27. We fail to understand
the basis for Patent Owner’s argument that the “temporal” limitations are
missing, particularly where Patent Owner’s own demonstratives above
depict two players playing simultaneously. To the extent that Patent Owner
is arguing that Marano alone fails to explicitly disclose simultaneously
streaming two streams to two presentation devices, this argument is
unpersuasive for the same reasons given in the context of Patent Owner’s
attack on Murray alone.
Petitioner has demonstrated via persuasive argument and evidence,
including credible expert opinion, that all of the limitations of claim 4 are
disclosed and suggested by the combination of Marano and Murray, and that
the claimed subject matter would have been obvious to a person of ordinary
skill in the art at the time of the invention. Pet. 41–50, 70–72; see also Pet.
Reply 22–27.
E. Patent Owner’s Appointments Clause Argument
In its Sur-Reply Brief, Patent Owner “asserts that this proceeding
violates the appointments clause of the U.S. Constitution.” PO
Sur-Reply 17. Specifically, Patent Owner argues that the Administrative
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Patent Judges (APJs) are improperly appointed principal officers and that the
decision of the United States Court of Appeals for the Federal Circuit in
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) was
an erroneous and “ineffective attempt to cure the identified constitutional
violation.” Id. at 17–18. Patent Owner further argues that “the Arthrex
panel did not go far enough in resolving the constitutional infirmity of the
APJs,” that “the only remedy is to declare the entire system constitutionally
flawed and let Congress fix it,” and, “[t]hus, the only proper remedy at this
point is that every ruling from institution forward be addressed de novo by
APJs appointed in a Constitutional manner, which at present is not possible,
making the only real proper remedy the vacating of this entire proceeding
including the institution decision.” Id. at 18–19.
We decline to consider Patent Owner’s constitutional challenge as the
issue has been addressed by the Federal Circuit in Arthrex, Inc. v. Smith &
Nephew, Inc., 941 F.3d 1320, 1328 (Fed. Cir. 2019).
III. CONCLUSION12
Petitioner has shown by a preponderance of the evidence that
claims 1–10, 12, and 13 of the ’558 patent would have been obvious over
Marano and Murray.

12 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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In summary:
IV. ORDER
For the foregoing reasons, it is
ORDERED that claims 1–10, 12, and 13 of the ’558 patent have been
proven to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims
35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–10, 12, 13 103(a) Marano, Murray 1–10, 12, 13
Overall
Outcome
1–10, 12, 13
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PETITIONER:
Matthew Smith
smith@smithbaluch.com

Andrew Baluch
baluch@smithbaluch.com

PATENT OWNER:
Gregory Gonsalves
gonsalves@gonsalveslawfirm.com

George Gordon
andrew@agordonlawfirm.com