                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                       2007-1583


                                     FRISKIT, INC.,

                                                       Plaintiff-Appellant,

                                            v.


                      REALNETWORKS, INC. and LISTEN.COM,

                                                       Defendants-Appellees.
                                                             .

      Munir R. Meghjee, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis,
Minnesota, argued for plaintiff-appellant. With him on the brief were Damien A. Riehl
and Cristina Parra Herrera.

       Charles K. Verhoeven, Quinn Emanuel Urquhart Olive & Hedges, LLP, of
Justice, of San Francisco, California, argued for all defendants-appellees. With him on
the brief were David A. Perlson, J. Toji Calabro; and Edward J. DeFranco, of New York,
New York; and Evette D. Pennypacker, of Redwood Shores, California. Of counsel was
Deepak Gupta, of San Francisco, California.

Appealed from: United States District Court for the Northern District of California

Senior Judge William W. Schwarzer
                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit


                                        2007-1583

                                      FRISKIT, INC.,

                                                 Plaintiff-Appellant,

                                            v.

                      REALNETWORKS, INC. and LISTEN.COM,

                                                 Defendants-Appellees.

   Appeal from the United States District Court for the Northern District of California
            in case no. 03-CV-05085, Senior Judge William W. Schwarzer.
                          ___________________________

                            DECIDED: January 12, 2009
                            ___________________________


Before BRYSON, LINN, and PROST, Circuit Judges.

BRYSON, Circuit Judge.

       Friskit, Inc., owns several patents that are directed to the search, retrieval, and

playback of multimedia files from a computer network such as the Internet.            The

overlapping specifications of the patents disclose a system for delivering media content

in which a server enables a search for network-accessible media files, creates a playlist

from the search results, and causes a media player on the user’s computer to play the

files on the playlist sequentially.   The use of server-side control of the search and

playback functions has application in the field of on-demand digital media services in

which users have the ability to access, but not to download, networked media content.
       Real Networks, Inc., (“Real”) was conceived as a developer of digital media

software. After acquiring Listen.com in 2003, however, Real expanded its offerings to

include subscriptions to online databases of digital music and video files.            Friskit

subsequently brought an action in the United States District Court for the Northern

District of California, alleging that Real’s multimedia players and subscription services

infringed several of Friskit’s patents. 1 Following discovery, Real moved for summary

judgment that the asserted claims were invalid for obviousness. Although the district

court initially denied the motion, Real later renewed its motion in light of the Supreme

Court’s intervening decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727

(2007). The trial court granted the renewed motion based in part on KSR. We affirm.

                                              I

       Friskit challenges the district court’s judgment that claims 35 and 52 of the ’467

patent, claims 6 and 16 of the ’275 patent, and claim 12 of the ’628 patent would have

been obvious in view of the prior art. Friskit’s principal argument is that the district court

overlooked disputed issues of material fact concerning the content of the prior art. In

particular, Friskit argues that three limitations of the asserted claims were absent from

the prior art: (1) “programmatic control” of the media player by the server; (2) “direct

control” of the media player by the search module; and (3) an integrated client module

that controls the media player and includes a user interface to receive search requests.

Friskit also contends that the district court failed to address evidence of secondary

considerations indicative of nonobviousness.




       1
            The patents at issue in this appeal are U.S. Patent Nos. 6,389,467 (“the ’467
patent”); 6,725,275 (“the ’275 patent”); and 6,735,628 (“the ’628 patent”).


2007-1583                                     2
                                           A

       Friskit contends that the district court erred by failing to construe the term

“programmatic control” in claims 35 and 52 of the ’467 patent and claim 12 of the ’628

patent. Under the proper construction, Friskit argues, the prior art does not teach that

limitation. We need not address Friskit’s claim that the case should be remanded to the

district court to construe the term “programmatic control,” because we conclude that the

prior art technology known as IUMA Radio satisfies that limitation even under Friskit’s

definition of the term.

       According to Friskit, “programmatic control” entails the communication of

commands “from one module to another to be executed by the other module in order to

control media playback.” The specification of the ’467 patent describes how the server

module controls the media player by passing instructions and data to the application

program interface of the media playback component.          One example of a set of

instructions and data that might be sent from the server module in that fashion is

“play(URL),” which instructs the media player to play the file located on the network at

the corresponding uniform resource locator (“URL”). Friskit insists that a “programmatic

control” mechanism does not employ the operating system of the user’s computer,

because a direct “conduit” is created between the server module and the media player.

       Real introduced unrebutted evidence that HTML and Javascript commands sent

from a server for the internet service IUMA Radio would programmatically control the

playback of network-accessible music files. IUMA.com was an online music portal that

allowed users to browse, search, and download digital music posted to the website by

unsigned artists. The IUMA Radio feature of the website used HTML and Javascript to




2007-1583                                  3
launch a small browser window containing an embedded media player and a drop-down

menu, from which the user would select a particular genre of music. Once the user

picked a genre, the server would select a music file of that genre and send the

corresponding URL link to the IUMA Radio browser for playback. At the conclusion of

each song, the IUMA Radio browser would query the server for more music of the

specified genre, and the server would select another music file and return the URL link

for that file to the browser. The IUMA browser provided the URLs to the embedded

media player, a RealPlayer Internet Explorer plug-in, and it controlled the media player

using its application programming interface.

      The only difference between the method of controlling the media player in the

IUMA Radio system and the method described in the specification of the ’467 patent

was the source of each playback instruction associated with a particular URL. In the

’467 patent, the server is responsible for sending a playback command to the media

player along with each URL link; in the IUMA Radio system, once the server opened a

local browser window, the browser controlled the embedded media player to play back

the content from each successive URL passed down from the server. That distinction is

immaterial   for   present   purposes   because   Friskit’s   proposed   construction   of

“programmatic control” does not require the continuous transmission of instructions from

the server. The step of downloading a “program” in the form of HTML and Javascript

code necessarily entails the initial transmission of a set of commands executable by the

embedded media player.

      Real argues that the “programmatic control” limitation of the claims was also

taught by prior art media players such as Winamp, but Friskit offered evidence that




2007-1583                                  4
those prior art media players did not teach that limitation. Real’s evidence showed that

when a user navigated a web browser to a music portal, such as mp3.com or

IUMA.com, and clicked on a link for streaming media, the default media player

associated with the web browser, such as Winamp, would automatically play back

music in the order designated by the website’s servers.            According to Real, that

operation reflected “programmatic control” of the media player by a network server.

However, Friskit’s expert, Ken Tola, described the playback operation in greater detail,

pointing out that the act of clicking on a link to streaming audio resulted in an M3U file

being downloaded to the user’s computer. Mr. Tola insisted that the network server in

that arrangement was passive because the M3U file specified only the network

locations of the audio files to be played and did not provide the “commands” or

processing instructions necessary for their playback.         Although Real disputes that

characterization of M3U files, Mr. Tola’s expert opinion creates a factual issue

pertaining to the nature of the information communicated to the media player when it is

used to play streaming media content.

       In addition to pointing to expert testimony relating to streaming media

applications, Friskit suggests that Real conceded the absence of the “programmatic

control” limitation in the prior art. Real’s expert, Julius Smith, stated that “[i]t is almost

unheard of that the server would control the client” and that he could “only think of one

example and that would be what’s disclosed in the patents.” However, the context of

Dr. Smith’s statements makes clear that he was applying his own definition of the term

“programmatic control” to mean “without user intervention,” a definition that was neither

advanced by Friskit nor adopted by the district court. For purposes of his obviousness




2007-1583                                     5
analysis, Dr. Smith applied the construction proposed by Friskit’s expert and found

IUMA Radio to be invalidating prior art.

      Friskit also argues that one of Real’s witnesses admitted that the Javascript in

IUMA Radio was used to “relay[] user input to the media player within the web browser.”

As Real points out, however, nothing in the claims or the specification precludes some

measure of user control over playback, as long as the server also “programmatically

controls” the media player. Indeed, the specification of the ’467 patent describes a user

interface or terminal that can be used to “control playback settings such as volume,

pause, seek and retrieve additional media clip information.”

                                            B

      Claims 6 and 16 of the ’275 patent recite “a media player directly controllable by

the search module” to receive media resource locators. Friskit challenges the district

court’s conclusion that the “direct control” limitation was disclosed by the use of the

mini-browser feature in Winamp.

      There is no serious dispute that, as Friskit suggests, the “directly controllable”

limitation is best interpreted to mean that the search module must control the media

player “without intervention from other modules or components.” The prior art Winamp

program included an integrated “mini-browser” designed to search for and retrieve

music files from online music portals, such as mp3.com and IUMA.com. The parties are

in agreement that, when properly configured, Winamp was capable of automatically

constructing a playlist from any links selected by the mini-browser.     Friskit’s expert

contended, however, that Winamp could not independently stream audio files without

the assistance of the operating system on the user’s computer. He explained that the




2007-1583                                   6
operating system was responsible for communicating the location of the downloaded

M3U file to Winamp and that, if certain file-type associations were disabled in the

operating system, Winamp would be incapable of playing back the search results.

Real’s expert expressed the contrary opinion that the operating system serves merely

as a relay without affecting the server’s control over media playback.

       The district court accepted Real’s argument because Winamp practiced the

same drag-and-drop method that, according to Friskit, infringed the “direct control”

limitation. The evidence of Winamp’s reliance on the operating system, however, calls

into question whether the control exercised by Winamp’s search module was sufficiently

“direct” to satisfy the “direct control” limitation. For that reason, we agree 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.       Accordingly, we

disagree with that portion of the district court’s summary judgment analysis.

                                             C

       Friskit next argues that the prior art cited by Real does not disclose the critical

element in claim 12 of the ’678 patent, “a client module being executable to (i) provide

one or more interfaces . . . to receive a search request; and (ii) control a media player.”

The Winamp interface includes both user controls for the media player (e.g., play, stop,

and pause), which satisfy the “executable to . . . control a media player” limitation, and a

mini-browser pane, which may be used to search websites such as mp3.com or

IUMA.com.     Indeed, the mini-browser standing alone qualifies as a “client module”

because it is operable to search for media files as well as to play back files from any

links selected in the browser window. Friskit insists, however, that the mini-browser




2007-1583                                    7
cannot “control” the media player. It bases that contention on its expert’s assertion that

the operating system of the user’s computer acts as an intermediary between the media

player and the mini-browser. While that assertion is relevant to the “direct control”

limitation, claim 12 requires only that that the “client module . . . control a media player”;

it does not require “direct control.” In order to give effect to the adjective “direct,” the

use of the noun “control” by itself must encompass indirect control of the type that the

mini-browser exercises over the media player. We therefore agree with the district court

that the contested limitation was taught by Winamp.

                                              II

       Having addressed these preliminary points, we turn to the ultimate question

whether Friskit’s invention would have been obvious to one of ordinary skill in the art.

Given the insignificant differences between the prior art media players and the claims,

the advanced state of the art at the time, and the lack of persuasive secondary evidence

to justify a contrary result, we affirm the district court’s summary judgment that the

claims at issue would have been obvious at the time of the invention.

                                              A

       The asserted claims describe 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 invention—searching archived digital media files, building

playlists from the search results, and sequentially playing back the playlist—pre-dated

the patents-in-suit, but were limited in their application to streaming media. At the most

rudimentary level, websites such as mp3.com and IUMA.com offered users the ability to

search online databases of music and download any of the search results. If a default




2007-1583                                     8
media player was designated, simply clicking on the search results in the user’s web

browser would download the music and create a playlist. Some media players, such as

Winamp, offered their own integrated mini-browsers, giving users a single interface with

which to navigate to sites such as mp3.com or IUMA.com, create a playlist of desired

music files, download the music files, and play them back in their designated order.

       The inventor of the patents-in-suit proposed to integrate search-and-playback

capabilities into a streaming media system, which was a new approach as of the priority

date of the patents. With the exception of IUMA Radio, streaming media systems in the

prior art generally relied on downloaded M3U files to point the media player to the

location of the individual media file or stream that was intended for playback. When a

user clicked on a link to an M3U file in a standard or mini-browser, the M3U file would

be downloaded to the user’s computer.           If the media player had been properly

configured, the music files located at the network addresses specified by the M3U files

would then be automatically played back in the predetermined sequence. IUMA Radio

deviated from that model in that it also automated the process of updating the playlist.

Once the user had selected a genre, the local browser window would automatically

retrieve more songs and control the media player to play them back. Because the

selection and order of the songs was fixed by the server, neither IUMA Radio nor the

use of the M3U file format permitted a user to create original playlists from selected

media files.

       Throughout most of the litigation, 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. Friskit acknowledged that it




2007-1583                                   9
did not invent streaming media, playlists or media players, but emphasized that its

patents “deliver the glue to put existing technologies together into a single application.”

That characterization of the claimed invention did not overcome the showing of

obviousness, however, because, as the Supreme Court noted in 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. KSR, 127 S. Ct. at 1740.

       By the time of Real’s second motion for summary judgment of invalidity, Friskit’s

theory of nonobviousness had shifted. Since then, Friskit has argued that the novel

aspect of the claimed invention was the manner in which integration was achieved.

According to Friskit, the “fundamentally new feature” of the invention was the

“programmatic control” of a target module, such as the media player, through

executable code communicated to the target module by a signaling module, such as the

network server. Friskit also suggests that “direct control” of the media player by the

search module is a critical limitation of the claimed invention.

       As we have noted, IUMA Radio exhibited “programmatic control.” That is, the

server module transmitted a program consisting of Javascript and HTML code, which

caused a local browser window to open and controlled the embedded media player.

Even if “programmatic control” and “direct control” were not literally present in the IUMA

Radio system, 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. Although it is true

that server-side control, as emphasized in the asserted claims, was contrary to the then-

conventional computer architectures in which the client controlled the server, server




2007-1583                                    10
control was plainly the alternative to the client-server model. Moreover, the use of web

browsers in combination with media players demonstrated a form of remote operation

distinct from client control. And with programming tools such as Java, Javascript, and

ActiveX in widespread use, the benefits of network control of local processes and the

methods for implementing such control were well known at the time of the invention.

Indeed, as early as October 1995, Real touted the expanded functionality of its media

player that had been made possible by granting third-party application developers

access to the application programming interface. Real specifically noted that media

content providers interested in offering “music on demand” over the Internet would be

able to “plug their own interface” into the media player, “embed instructions” into the

data stream, and allow users “to browse, select and play back audio or audio-based

multimedia content on demand, in real time.” Facilitating “programmatic” and “direct”

control of the media player by networked software modules was the intended purpose of

exposing the application programming interface. In light of IUMA Radio and the state of

the art at the time of the invention, we agree with the district court that a system

employing “programmatic control” and “direct control” of the media player by the

network-based server would have been obvious to one of ordinary skill in the art.

                                           B

      Friskit argues that the district court failed to address the objective indicia of

nonobviousness, the so-called “secondary considerations.” We have frequently stated

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. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d




2007-1583                                  11
1157, 1162 (Fed. Cir. 2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir.

2007); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 719-20 (Fed. Cir. 1991). In any

event, Friskit’s secondary consideration evidence does not provide persuasive support

for the nonobviousness of “programmatic” and “direct” control.

       With respect to commercial success, although Real frequently advertised the

benefits of integrating media search and playback functionality in the accused products,

Friskit failed to show that the success of those products was attributable to the subject

matter that it contends is nonobvious—programmatic control of the media player by the

server module and direct control by the search module.         See Asyst Techs., Inc. v.

Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); In re Grasselli, 713 F.2d 731, 743

(Fed. Cir. 1983).   Friskit’s inability to relate the success of Real’s products to the

manner in which integration was accomplished is fatal to its claim that the commercial

success of the invention is evidence of nonobviousness.

       Friskit introduced evidence that Real had copied its products after Real had been

shown several live demonstrations of the Friskit products’ ability “to create playlists out

of media search results” and to prioritize “catalogs of streaming media such as from

Real’s content partners . . . within search results.” Copying by the accused infringer,

however, has limited probative value in the absence of evidence of failed development

efforts by the infringer, B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577,

1583 (Fed. Cir. 1996); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 317 (Fed.

Cir. 1985), or of “more compelling objective indicia of other secondary considerations,”

Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1381 (Fed. Cir. 2000) (citing

cases). As the district court noted, Friskit failed to make such a showing, and it also




2007-1583                                   12
failed to introduce sufficient evidence to show that the copied technology fell within the

scope of the asserted claims. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239

F.3d 1343, 1366 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1580-81 (Fed. Cir.

1995).     The trial court therefore properly gave little weight to Friskit’s evidence of

copying.

         Finally, Friskit sought to show that there was a long-felt need for the invention

and that prior art technology taught away from the claimed method. To do so, Friskit

pointed to market forces that allegedly discouraged software developers from creating

on-demand media services. Some of the concerns affecting developers of streaming

media applications included the risk of infringing copyrights in the downloaded media

files, the poor sound quality of streaming media over the dial-up modems used by most

internet customers at the time of the invention, and a market focus on promoting

consumer demand through increased compatibility.          But none of Friskit’s evidence

suggested that Friskit’s approach presented any technical challenge to one of ordinary

skill in the art once market forces had created a demand for integrated, streaming

media services. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013

(Fed. Cir. 1983) (“[T]he fact that the two disclosed apparatus would not be combined by

businessmen for economic reasons is not the same as saying that it could not be done

because skilled persons in the art felt that there was some technological incompatibility

that prevented their combination.       Only the latter fact is telling on the issue of

nonobviousness.”); see also KSR, 127 S. Ct. at 1740 (cautioning against rewarding

obvious variations precipitated by “design incentives and other market forces”); Joy

Tech., Inc. v. Manbeck, 751 F. Supp. 225, 232 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed.




2007-1583                                   13
Cir. 1992) (experts’ expressed skepticism was entitled to little weight as evidence of

nonobviousness because it “was directed to economic and commercial factors, not the

technical merit of [the claimed invention]”).   Streaming media became increasingly

viable when copyright owners recognized that digital media content could be sold and

when dial-up modem connections with their bandwidth limitations gave way to

broadband connections such as cable-modem and DSL. Friskit may have predicted a

business trend that would have proved profitable had its commercial embodiments

remained competitive in the marketplace. That, however, is not a sufficient basis to

overcome the strong prima facie showing of obviousness that was made in this case.

       Because we have concluded that the asserted claims are invalid for obviousness,

we do not address Real’s arguments that the claims are invalid because the term

“substantially automatic” is fatally indefinite or that Real’s products do not infringe

Friskit’s patents.




2007-1583                                 14
