The U.S. Court of Appeals for the Federal Circuit affirmed a district court grant of a post-KSR renewed summary judgment on obviousness (after denying a pre-KSR motion).  Friskit, Inc. v. Real Networks, Inc., Case No. 07-1583 (Fed. Cir., Jan. 12, 2009) (Bryson, J.) (non-precedential). 

The asserted claims relate to a system for delivering streaming media content that permits users to search and play back online media content.  All of the essential components of the claimed inventionsearching archived digital media files, building playlist from the search results and sequentially playing back the playlist—pre-date the patents-in-suit, but were limited in their application to streaming media. 

Some prior art media players offered their own integrated mini-browsers, giving users a single interface with which to navigate to music sites, create a playlist of desired music files, download the music files and play them back in their designated order. Friskit contended that the inventive step of the patents-in-suit was the combination of pre-existing media search and playback technologies to create an on-demand, digital music service.

At the district court, Real Networks moved for summary judgment that the asserted claims were invalid for obviousness.  Although the district court initially denied the motion, Real Networks renewed its motion in light of the Supreme Court’s intervening decision in KSR.  After the trial court granted the renewed motion, Friskit appealed. 

Friskit argued that the district court overlooked disputed issues of material fact concerning the content of the prior art and failed to address evidence of secondary considerations indicative of non-obviousness.  Specifically, Friskit argued that the district court erred in construing the term “programmatic control” and that, properly construed, the prior art does not teach that limitation.  The Federal Circuit disagreed, noting that under either the district court’s construction or the one posited by Friskit the prior art rendered the claims unpatentable based on Real Network’s unrebutted evidence that HTML and Javascript commands sent from a server would programmatically control the playback of network-accessible music files. 

Friskit also challenged the district court’s conclusion that the “direct control” claim limitation is disclosed in the prior art.  Again, the Federal Circuit disagreed noting that the term, “directly controllable” means “that the search module must control the media player ‘without intervention from other modules or components.’”  The Court went on to find that the prior art included an integrated “mini-browser” designed to search for and retrieve music files from online music portals and included the capability of constructing a playlist from any links selected by the mini-browser. 

The district court accepted Real Network’s argument that the operating system serves merely as a relay without affecting the server’s control over media playback because the prior art practices the same drag-and-drop method that, according to Friskit, infringed the “direct control” limitation.   Here, the Federal Circuit agreed with Friskit that the district court erred in concluding that there was no genuine dispute as to whether the “direct control” limitation was found in the prior art.

Notwithstanding this dispute, the Court affirmed the district court’s summary judgment on obviousness.   In connection with Real Networks’ first motion for summary judgment Friskit argued that its patents “deliver the glue to put existing technologies together into a single application.”  However, the Court noted that characterization of the claimed invention “did not overcome the showing of obviousness” because, according to KSR, “the predictable use of prior art elements according to their established functions is likely to be within the grasp of one of ordinary skill in the art.”  Thus, when Real Networks filed its post-KSR motion for summary judgment on obviousness, Friskit argued that the novel aspect of the claimed invention was the manner in which integration was achieved and that the “fundamentally new feature” of the invention was the “programmatic control” of a media player through executable code communicated by a server network.

However, the Court noted that even if “programmatic control” and “direct control” were not literally present in the prior art, “the evidence before the district court made it clear that it would have been trivial for one of ordinary skill in the art, starting with the prior art devices, to develop the control mechanisms described in the claims at issue,” noting the use of web browsers in combination with media players demonstrated a form of direct but remote operation and that programming tools for implementing such control were well known at the time of the invention. 

Friskit also argued that the district court failed to address the objective indicia of non-obviousness, the so-called “secondary considerations.”  On this issue, the Court noted that “secondary consideration evidence” such as commercial success, copying and long-felt need does not necessarily overcome a strong showing of obviousness, as was made in the present case.  Friskit had failed to show that the success of the accused Real Networks products was attributable to the subject matter that it contends is non-obviousprogrammatic control of the media player by the server module and direct control by the search module. 

As for alleged copying of the Friskit products, the Court noted that “[c]opying by the accused infringer, has limited probative value in the absence of evidence of failed development efforts by the infringer.”