Ex Parte 7065417 et al

Patent Trial and Appeal Board

Jan 28, 2014

95000278 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,278 07/12/2007 7065417 2116-3040D1RE 3408
35884 7590 01/28/2014
LEE, HONG, DEGERMAN, KANG & WAIMEY
660 S. FIGUEROA STREET
Suite 2300
LOS ANGELES, CA 90017
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/28/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
APPLE COMPUTER INC.
Requester

v.

MPMAN.COM, INC.
Patent Owner and Appellant
____________________

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Reexamination Control 95/000,278
Patent US 7,065,417 B2
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, JOHN A. JEFFERY, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

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DECISION ON APPEAL
STATEMENT OF THE CASE
In this inter partes reexamination proceeding, Patent Owner
MPMan.com, Inc. appeals under 35 U.S.C. § 134(b) (2002) from the final
decision of the Examiner unfavorable to the patentability of claims 1-54,
each of which are present in, or proposed to be added to, US patent
7,065,417. Appellant‟s representative presented arguments at an oral
hearing on July 24, 2013. Requester Apple Computer Inc. has not filed any
papers in this proceeding after the initial reexamination request. Hearing Tr.
2. We have jurisdiction under 35 U.S.C. § 315 (2002).
We affirm-in-part.

Invention
The '417 patent describes a portable audio player in which encoded
MPEG (Moving Picture Experts Group (MPEG)) audio data may be stored
for playback. '417 patent col. 4, ll. 25-62. The player may include inputs
such as a forward input, a reverse input, and a random input. Id. at col. 5, l.
61 - col. 6, l. 46.

Claims
The '417 patent contains 30 claims. Appellant has submitted
amendments to claims 7, 21, and 23. Proposed claims 31-54 have been
added in this proceeding.
Claims 1, 15, and 54 are independent. Claim 1 is representative.
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1. A portable audio device suitable for reproducing MPEG
encoded data, the portable audio device comprising:

a plurality of inputs, including a forward input, a reverse
input, a play control input, and a random input;

a non-removable data storage to store compressed
digitized audio data;

a display;

an audio output;

at least one processor, responsive to selection of at least
one of the plurality of inputs, to convert selected compressed
digitized audio data stored in the non-removable data storage
for reproduction by the audio output and to provide information
to the display;

a battery; and

wherein, when a first selection of compressed digitized
audio data is being reproduced, the display provides at least one
of the first selection‟s title, type, remaining playtime, and
reproduction time;

wherein, when a second selection of compressed
digitized audio data is being reproduced and in response to
selection of the forward input for a first amount of time, the
portable audio device advances to another selection of
compressed digitized audio data;

wherein, when a third selection of compressed digitized
audio data is being reproduced, in response to selection of the
reverse input for a second amount of time, the portable audio
device begins playing the third selection from a beginning of
the third selection of compressed digitized audio data;

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wherein, when a fourth selection of compressed digitized
audio data is being reproduced, in response to selection of the
play control input, the portable audio device stops playing the
fourth selection of compressed digitized audio data;

wherein, in response to selection of the random input, the
portable audio device reproduces selections of the compressed
digitized audio data stored in the non-removable data storage in
a random order; and

wherein, when the portable audio device is in a selected
mode of operation and a voltage of the battery falls below a
selected level, the display provides an indication relating to a
power level of the battery.

Prior Art
Janky US 5,914,941 June 22, 1999
Ozawa et al. (“Ozawa”) US 5,870,710 Feb. 9, 1999
Norris et al. (“Norris”) US 5,491,774 Feb. 13,1996
Daberko et al. (“Daberko”) US 5,839,108 Nov. 17,1998
Suetomi US 5,740,143 Apr. 14,1998
The Sony Compact Disc
Compact Player (“Sony
Manual”)
Operating Instructions,
Sony Corporation
1996

Appellant’s Contentions
Appellant contends that the Examiner erred in entering six grounds of
rejection, as reproduced below.
Claim 54 is rejected under 35 U.S.C. § 314(a) (2002) as enlarging the
scope of the claims of the patent.
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In addition, references are applied in rejections under 35 U.S.C.
§ 103(a) against the claims as follows:

References

Claims
Janky, Sony Manual 1-9, 14-23, 28-34, 43-48, 50, 53
Janky, Sony Manual, Ozawa 10-13, 24-27
Janky, Sony Manual, Norris 35-41, 51, 52
Janky, Sony Manual, Daberko 42, 49
Sony Manual, Suetomi 1, 3-7, 9, 15, 17-21, 23, 30, 34,
43-48

ANALYSIS
Section 314(a)
Claim 1 of the '417 patent recites that “the display provides at least
one of the first selection‟s title, type, remaining playtime, and reproduction
time.” According to the Examiner, proposed claim 54 contains at least all
the limitations of patent claim 1, except that claim 54 does not contain the
above-quoted “display” recitation. Claim 54 recites, instead, that “the
display provides the first selection‟s title and reproduction time.” Ans. 35-
38. In particular, the Examiner submits that while claim 54 is narrower than
claim 1 in some respects, claim 54 is broader in one respect; namely, “new
claim 54 does not require „the first selection‟s type‟ and „remaining
playtime.‟” Id. at 37.
However, the plain language of patent claim 1 does not require the
first selection‟s type and remaining playtime. The type and remaining
playtime are options, rather than requirements. The only requirement of the
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recitation is that the display provides “at least one of” the first selection‟s (1)
title, (2) type, (3) remaining playtime, and (4) reproduction time. Although
one of the named elements must be present, the language of claim 1 does not
require the presence of any particular one of the four elements. Proposed
claim 54 is narrower than claim 1 in the aspect that two of the four elements
have been specified as being present, thus further limiting the scope of the
claimed subject matter.
We therefore agree with Appellant that proposed claim 54 does not
enlarge the scope of the claims of the '417 patent. We do not sustain the
§ 314(a) rejection applied against claim 54.

Section 103(a)
Janky
Figure 5 of Janky is reproduced below.
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Figure 5 of Janky illustrates a portable storage/playback apparatus 44.
Janky col. 12, ll. 53-55. Audio data encoded in an MPEG format, such as
MPEG-1 (preferably layer 3, or MP3 format), is stored in the apparatus.
User-activated controls include select/display 82, playback 120, pause/book-
mark 121, stop 122, fast forward 123, and fast rewind 124. Id. at col. 12, l.
55 - col. 13, l. 3.

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Janky and Sony Manual
I. Independent Claims 1 and 15
Appellant submits that the Examiner has not given patentable weight
to the preamble phrase recited in claim1 and claim 15, “[a] portable audio
device suitable for reproducing MPEG encoded data.” App. Br. 18.
However, in our review of the rejection over Janky and Sony Manual we
need not determine whether the preamble phrase represents a limitation. We
can presume that it does. Janky describes a portable audio device suitable
for reproducing MPEG encoded data. See Janky section, supra.
Appellant argues that Janky and Sony Manual fail to teach or suggest
all the features of claims 1 and 15. Appellant argues, in particular, that the
references fail to teach or suggest: (1) in response to selection of the random
input, the portable audio device reproduces selections of the compressed
digitized audio data stored in the non-removable data storage in a random
order (claim 1); and (2) in response to selection of the repeat input, the
portable audio device reproduces at least one selection of the compressed
digitized audio data stored in the non-removable data storage in a repetitive
manner (claim 15). App. Br. 19.
Appellant acknowledges that Sony Manual describes a random
(“shuffle play”) and a “repeat” feature, but argues that the features are
associated with a compact disc player, which uses a removable storage
medium. Id. The Examiner, however, finds that Janky discloses a portable
audio device suitable for reproducing MPEG encoded data. Ans. 8. The
Examiner finds, further, that the addition of a random and a repeat input as
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taught by Sony Manual would yield a predictable result when added to the
non-removable MPEG memory system disclosed by Janky. Id.
Appellant submits that it “appears” the Examiner is relying on a
rationale in which the MPEP requires that each element in the combination
merely performs the same function as it does separately, with the combined
elements having no change in their respective functions. App. Br. 20.
According to Appellant, the random and repeat inputs described by Sony
Manual function with a removable storage medium, and would function in a
different manner if used to modify Janky, with its non-removable storage.
Id.
However, we agree with the Examiner (Ans. 26-27) that the
“functions” of the random and repeat inputs as taught by Sony Manual
would be unchanged when used to modify the Janky system. That is, the
random input would allow for playing tracks in a random order, and the
repeat input would allow for repeating a track. One of ordinary skill in the
art knew how to reproduce audio signals, such as music, when the
underlying data was stored on a removable medium (Sony Manual) and
when the data was stored on a non-removable medium (Janky). The
combination of Janky and Sony Manual as proposed would yield the
predictable results of playing tracks in a random order and repeating a track
in response to the corresponding selection or input. A selected track would
be rendered for audio play, or would play again, regardless of whether the
underlying data resides on a removable or a non-removable storage medium.
Merely determining which track to next play is not dependent on whether
the digitally encoded audio data resides in a directly selectable file on a non-
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removable storage medium (Janky) or in a directly selectable file on a
removable storage medium (Sony Manual).
1

Appellant also submits that Sony Manual “teaches away” from claims
1 and 15 because it teaches compact discs that may be removed from the
disc player. App. Br. 21. As such, Appellant fails to point to any actual
“teaching away” in Sony Manual.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. A reference does not teach away,
however, if it merely expresses a general preference for an
alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention claimed.

Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (internal quotations omitted). Sony Manual does not warn
against, or discourage the artisan from, storing encoded audio files (e.g.,
MPEG files) in a non-removable storage medium. We agree with the
Examiner that Appellant has not identified any material in Sony Manual that
“teaches away” from the invention.
2

1
Unlike recordings on audio tape, audio files, whether stored in a memory in
MP3 format or on a compact disc, “can be directly selected.” Ex. 21at 1.
2
We have not considered Appellant‟s untimely argument in the Rebuttal
Brief (at 2, § A.1), which alleges error in one of the Examiner‟s findings in
the Action Closing Prosecution (“ACP,” mailed Jan. 15, 2010). See 37
C.F.R. § 47.71(b) (content of owner‟s rebuttal brief). In any event, claims 1
and 15 require only one of the “first selection‟s title, type, remaining
playtime, and reproduction time.” Appellant does not allege or show error
in the finding (e.g., ACP 74) that Sony Manual also teaches display of the
remaining playtime.
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II. Dependent Claims 7 and 21
Appellant submits that dependent claim 7 is representative of
dependent claim 21. App. Br. 22. Claim 7, as proposed to be amended,
recites “wherein the first and second times are less than approximately 1
second and the [[second]] third and fourth times are greater than
approximately 1 second.” The Examiner finds that Sony Manual (at 4)
discloses that pressing the double forward arrow on the player finds the
beginning of the next track and pressing the double backward arrow finds
the beginning of the current track, which correspond to the claimed “first”
and “second” times. Ans. 28. The Examiner further finds that Sony Manual
(at 4) teaches that holding down the double forward arrow allows going
forward quickly, while holding down the double backward arrow allows
going backward quickly, which correspond to the “third” and “fourth” time.
Id.
Appellant does not dispute the Examiner‟s mappings with respect to
the buttons and the corresponding “times,” but argues that Sony Manual
discloses no specific time periods. App. Br. 22. Appellant submits that the
Examiner has not established the facts necessary to demonstrate that the
device described by Sony Manual would inherently (i.e., necessarily)
operate in accordance with the claimed “1 second” terms. Id.
We agree with the Examiner that, at the least, one of ordinary skill in
the art would reasonably infer, from the Sony Manual disclosure, that a user
“pressing” a button would be for a time less than “approximately one
second,” while “holding down” a button would be for a time that is greater
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than “approximately one second.” Ans. 28; Sony Manual 4. What a
reference teaches is a question of fact. In re Baird, 16 F.3d 380, 382 (Fed.
Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992). We are not
persuaded of error in the Examiner‟s findings with respect to Sony Manual‟s
teachings.

Janky, Sony Manual, Ozawa
The Examiner rejects claims 10-13 and 24-27 under 35 U.S.C.
§ 103(a) over the combined teachings of Janky, Sony Manual, and Ozawa.
As Appellant does not argue the limitations of any claim in particular, we
will decide the appeal as to this ground of rejection on the basis of claim 10.
See 37 C.F.R. § 41.67(c)(1)(vii).
In response to the rejection, Appellant submits that an “intended
purpose” of Ozawa was to reduce skipping by external vibrations when
using compact discs and to facilitate the compilation of desired pieces of
music using a portable playback device, citing column 1, lines 26 through 45
of the reference. App. Br. 23. Appellant cites the Manual of Patent
Examining Procedure (MPEP) and In re Gordon, 733 F.2d 900 (Fed. Cir.
1984), and submits that the Examiner‟s proposed combination would render
Ozawa unsatisfactory for its intended purpose. In particular, Appellant
argues that “the Sony Manual‟s use of compact discs to store audio material
renders Ozawa unsatisfactory for Ozawa‟s intended purpose.” App. Br. 23.
Even if we were to presume that Ozawa‟s “intended purpose” is that
alleged by Appellant, we agree with the Examiner that the proposed
combination does not use compact discs to store audio material. The
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rejection is based not on using the compact discs described by Ozawa to
store audio material, but on using the non-removable storage as described by
Janky. Ans. 29-30. Appellant‟s argument concerning Ozawa is thus not
responsive to the Examiner‟s § 103(a) rejection and is therefore not
persuasive.

Secondary Considerations
I. Commercial Success

A prima facie case of nexus is generally made out when
the patentee shows both that there is commercial success, and
that the thing (product or method) that is commercially
successful is the invention disclosed and claimed in the patent.
When the thing that is commercially successful is not
coextensive with the patented invention -- for example, if the
patented invention is only a component of a commercially
successful machine or process -- the patentee must show prima
facie a legally sufficient relationship between that which is
patented and that which is sold.

Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). However, “if the commercial success is due to an
unclaimed feature of the device” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006).
Appellant proffers a declaration by Dr. G. Stephen Jizmagian in
support of showing commercial success of the patented invention. Dr.
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Jizmagian refers to an article (Ex. 3)
3
which reports that a Korean company
sold 50,000 units of a portable MP3 player (MPMan) during the first nine
months of sales. Jizmagian Decl. ¶ 5. However, there is no indication with
respect to why the sales might represent commercial success in the relevant
market. Gross sales figures do not show commercial success absent
evidence of market share. Cable Elec. Prods., Inc. v. Genmark, Inc., 770
F.2d 1015, 1026-27 (Fed. Cir. 1985), overruled on other grounds by
Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359
(Fed. Cir. 1999) (en banc). Neither the Declaration nor the article reports
how 50,000 units might compare to the total number of units of portable
audio players that were sold in the relevant market in the relevant time
period. Nor is there any indication of relative profitability that the 50,000
units might have represented in the relevant market. Moreover, other
evidence provided by Appellant indicates that the selling of the first 50,000
units represented “sluggish” sales. Ex. 19 at 2 (unnumbered page).
Dr. Jizmagian‟s Declaration points out that the article (Ex. 3) reports
that the company had an expectation of exporting 500,000 units in 1999.
Again, there is no indication of how 500,000 units might compare in the
total export of portable audio players. In any event, we give little weight to
a report of an expectation that was expressed in 1998, when the actual
exports or sales would have been known at the time of submission of
Appellant‟s evidence in support of commercial success -- about ten years
after publication of the relied-upon article.

3
In this opinion, “Exhibit” and “Ex.” will refer to the corresponding exhibit
in the Evidence Appendix of the Appeal Brief.
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Further, Appellant‟s Appeal Brief and Dr. Jizmagian‟s Declaration
allege that the Apple iPod and Apple iPhone have achieved commercial
success, which we can accept as fact. However, that the Apple products are
alleged to fall within the scope of the '417 patent claims does not
demonstrate sufficient nexus between the merits of the claims and the
commercial success of the products. The Examiner has shown how the
claimed invention is not coextensive with, but only a component of, the
marketed Apple systems and products. See Ans. 13-17; cf. Demaco Corp.,
463 F.3d at 1312. Appellant might have a better position if, for example, the
Apple iPod had been sold as an MPEG portable player pre-loaded with
audio selections that could not be modified, with no mechanism for
replacing or adding audio content. Further, while it is true that some of the
earlier iPod players may not have contained all the features pointed out by
the Examiner (Rebuttal Br. 7), the '417 patent does not claim a video display
or scrolling device, which is present in essentially all of the alleged
corresponding iPod players (see Ex. 6). Moreover, the patent does not claim
phone functionality, such that the claimed invention is simply and clearly
not coextensive with the iPhone.
Because the thing(s) that is/are commercially successful is/are not
coextensive with the patented invention, Appellant must show prima facie a
legally sufficient relationship between that which is patented and that which
is sold, Demaco Corp, 851 F.2d at 1392, which Appellant has not done. We
disagree with the suggestion (Rebuttal Br. 6) that merely showing a
“correlation” between a claim and a commercially successful product
demonstrates nexus between the claimed invention and the commercial
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success. There is no “burden” on the Examiner or Requester to rebut the
prima facie case of nexus between the patented invention and the
commercial success (id. at 8-9) because a prima facie case has not been
established.
Moreover, the Apple iPod was developed in 2001 (see Ex. 11 at 4-5).
Portable MP3 players were known in the prior art (e.g., see Janky section,
supra). Any commercial success of the Apple iPod that is due to provision
of a portable MP3 player is not pertinent. See Ormco Corp. v. Align Tech.,
Inc., 463 F.3d at 1312. Even if we were to assume that commercial success
of the iPod is relevant, Appellant has failed to show that the success is due to
features claimed in the '417 patent that include elements that were not
known in the prior art.

II. Industry Recognition and Awards
Dr. Jizmagian refers to a 2005 Popular Mechanics article that listed
the top fifty inventions of the past fifty years, which included the MP3
player, with specific mention of MPMan and the Diamond Rio. Jizmagian
Decl. ¶ 25; Ex. 16 at 4. However, the article is incorrect to the extent that
MPMan and the Diamond Rio may be thought to represent the first
invention of the MP3 player. According to this record, Janky was a prior
inventor of the portable MP3 player. See Janky section, supra. Similarly,
other publications to which Dr. Jizmagian refers (Decl. ¶ 26) relate to early
marketing and commercialization of portable MP3 players in Korea and
Japan, rather than to recognition of the merits as to improvements (e.g.,
various inputs) that are claimed. Further, Exhibit 17 indicates that the key
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reason why the MPMan player might be expected to “take off” is its Internet
link, which is not claimed.
With respect to awards, Dr. Jizmagian refers (Decl. ¶¶ 29-31) to
awards presented in Korea for “MPMan.” Of the evidence provided for the
awards, a Korean newspaper reports: “MPMan.com‟s MPMan received a
KT mark from the Korea Industrial Technology Association and the IR52
Chang Young-shil Award. The latter is the highest honor that can be given
to domestic industrial breakthroughs” (emphasis added). Ex. 22 at 3
(unnumbered page). No evidence is provided, however, with respect to the
particular features of the portable MP3 player that contributed to selection
for the awards, or with respect to the particular models of the commercial
MP3 player that were considered. Also important, the awards were for
domestic (Korean) products or inventions, without direct comparison to non-
domestic inventions (e.g., Janky‟s portable MP3 player).
A Korean newspaper (Ex. 22) also reports that the MPMan product
“was selected as the Best Multimedia Hardware Finalist by Byte, an
internationally recognized personal computer magazine, of those exhibited in
the CeBIT 98, held in Hanover, Germany in March 1998 (emphasis added).”
Ex. 22 at 2 (unnumbered page). The evidence does not show the products
that competed with the MPMan player. Nor does the newspaper specify the
features that the MPMan player in competition possessed, beyond portability
and the ability to play MP3 files, although the preceding paragraph in the
article suggests that the player contained flash memory and the ability to
store data files in various formats -- which are features not claimed. Nor
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does a copy of a press release from a related U.S. company (Ex. 23) tell
what was considered in determining the finalists for the “Byte” award.
Thus, while the evidence of industry recognition and awards may
demonstrate recognition of first market entry of a commercially available
portable MP3 player, the evidence lacks in showing that the recognition and
awards were due to the merits of the invention that is claimed. The evidence
is entitled to little weight in support of nonobviousness.

III. Copying
Copying “requires evidence of efforts to replicate a specific product.”
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). However,
even if proved, the mere fact that copying occurred is not entitled to much
weight in support of nonobviousness. See In re GPAC, Inc., 57 F.3d 1573,
1580 (Fed. Cir. 1995) (“„[M]ore than the mere fact of copying by an accused
infringer is needed to make that action significant to a determination of the
obviousness issue.‟”), quoting Cable Electric Products, Inc. v. Genmark,
Inc., 770 F.2d at 1028.
Dr. Jizmagian testifies that “it appears that Apple first became aware
of the inventors‟ RIO product and obtained information from their engineers
to copy the product.” Jizmagian Decl. ¶ 19. The evidence, however,
suggests that an individual who was not involved in development of the
Apple iPod contacted RIO engineers in 1998 for the purpose of developing
an application to sync (interface) the RIO player with an Apple brand
computer (Ex. 13 at pp. 48-50, 53-54; Ex. 14), rather than to copy the
product.
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Moreover, the Apple iPod was developed during 2001. Ex. 11 at 4-5.
Several commercial embodiments of MP3 players were available at that
time. Declarant does not address the evidence that is contrary to the notion
of Apple‟s copying with respect to any of the portable MP3 players then
available -- Appellant‟s evidence elsewhere states that the “Apple brass” had
concluded that “[e]very single one of them sucked.” Ex. 13 at 53.

IV. Licensing
Dr. Jizmagian testifies that the “presently claimed invention” of the
'417 patent has been licensed “by the Patentee to Apple, SanDisk, and
Samsung. Exhibit 15.” Jizmagian Decl. ¶ 22.
Exhibit 15, which is in the form of a press release by patent licensing
company Texas MP3 Technologies, Ltd., states that Apple, SanDisk, and
Samsung have been sued for patent infringement. The text does not identify
the patents at issue, although it reports that Texas MP3 is “the assignee of
patents that were issued to [the instant co-inventors], who are widely
recognized as the co-inventors of the first mp3 player.” Ex. 15 at 1. In any
event, the document states that Texas MP3 entered into a “Settlement and
License Agreement” with SanDisk Corporation and with Apple, Inc., but
that the terms of the agreements are confidential. There is no mention of a
license agreement with Samsung.
In Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317,
1324 (Fed. Cir. 2004), the patentee proffered evidence that three competitors
entered into license agreements for the patent at issue. Our reviewing court
attached little weight to the evidence because the patentee “[did] not explain
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the terms of the licenses nor the circumstances under which they were
granted, except to concede that two were taken in settlement of litigation.”
Id. The controlling cases “specifically require affirmative evidence of nexus
where the evidence of commercial success presented is a license, because it
is often „cheaper to take licenses than to defend infringement suits.‟” Id.
(quoting EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir.
1985)).
Because the evidence presented does not demonstrate a nexus
between any licensing agreements and the merits of the claimed invention of
the '417 patent, we find the evidence of licensing in support of
nonobviousness to be entitled to little weight.

V. Failure of Others
Appellant‟s purported evidence of “failure by others” before
introduction of the MPMan player, quite simply, does little to support
nonobviousness of the claimed invention. Jizmagian Decl. 27; Ex. 21.
Exhibit 21 relates the story of the early failure and later success of an IC
manufacturer to develop and to find a licensee for a single-chip MP3
decoder. Ex. 21 at 1-2 (unnumbered pages). The evidence does not
demonstrate “failure by others” to invent a portable MP3 player -- see Janky
-- or to add particular claimed features to a portable MP3 player. The
Exhibit may indicate that some companies were reluctant to enter the market
with a portable MP3 player, but does not show any reluctance that was based
on any particular recognized technical problems that might have contributed
to the reluctance.
Appeal 2013-005775
Reexamination Control 95/000,278
Patent US 7,065,417 B2

21

Conclusion -- Section 103(a) and Claims 1-53
We have considered representative claims (1, 7, 10, and 15) as
presented by Appellant in response to the § 103(a) rejections over Janky and
Sony Manual, and further in view of Ozawa, Norris, or Daberko. We find
that the character and weight of the evidence, by a preponderance, supports
the Examiner‟s conclusion that claims 1-53 are unpatentable for
obviousness. As all the claims rejected over prior art are unpatentable, we
do not reach the additional § 103(a) rejection over Sony Manual and
Suetomi.

DECISION
The Examiner‟s decision unfavorable to the patentability of claims 1-
54 is affirmed with respect to claims 1-53 but reversed with respect to claim
54.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED-IN-PART

Appeal 2013-005775
Reexamination Control 95/000,278
Patent US 7,065,417 B2

22
Patent Owner:

LEE, HONG, DEGERMAN, KANG & WAIMEY
660 S. FIGUEROA STREET
Suite 2300
LOS ANGELES, CA 90017

Third Party Requester:

Tracey Druce
Novak, Druce & Quigg, LLP
1300 Eye Street NW
Suite 1000 West Tower
Washington, DC 20005

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