Trials@uspto.gov
`571-272-7822
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` Paper 49
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` Entered: March 18, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
`
`v.
`
`
`
`
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00594
`Patent 8,050,652 B2
`____________
`
`
`Before BRIAN J. MCNAMARA, STACEY G. WHITE, and PETER P.
`CHEN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 49
`
`
` Entered: March 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
`
`v.
`
`
`
`
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00594
`Patent 8,050,652 B2
`____________
`
`
`Before BRIAN J. MCNAMARA, STACEY G. WHITE, and PETER P.
`CHEN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2013-00594
`Patent 8,050,652 B2
`
`
`I.
`
`INTRODUCTION
`
`Yamaha Corporation of America (“Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1–4, 6–8, 10, 11, 13, 14, 21, 22,
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`24–29, 31, 32, 34, 35, 42–45, 47–50, 52, 53, 55, and 56 of U.S. Patent No.
`
`8,050,652 B2 (Ex. 1001, “the ’652 Patent”) pursuant to 35 U.S.C. §§ 311–
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`319. Paper 1 (“Pet.”). Black Hills Media, LLC (“Patent Owner”) filed a
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`Preliminary Response. Paper 10. On March 20, 2014, we instituted an inter
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`partes review of claims 1–4, 6–8, 10, 11, 13, 21, 22, 24–29, 31, 32, 34, 42–
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`45, 47–50, 52, and 53, on three of the grounds unpatentability alleged in the
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`Petition. Paper 17 (“Dec. to Inst.”). After institution of trial, Patent Owner
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`filed a Patent Owner’s Response (Paper 27, “PO Resp.”), to which Petitioner
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`filed a Reply to Patent Owner’s Response (Paper 31, “Reply”). Patent
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`Owner filed a Motion to Exclude (Paper 35, “Mot. to Excl.”), to which
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`Petitioner filed an Opposition (Paper 40, “Opp. Mot. to Exclude”) and Patent
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`Owner filed a Reply (Paper 41).
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`A consolidated oral hearing for IPR2013-00593, IPR2013-00594,
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`IPR2013-00597, and IPR2013-00598, each involving the same Petitioner
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`and the same Patent Owner, was held on October 20, 2014. The transcript of
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`the consolidated hearing has been entered into the record. Paper 46 (“Tr.”).
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`The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
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`Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73, we determine Petitioner has shown by a preponderance of the
`
`evidence that challenged claims 1–4, 6–8, 10, 11, 13, 21, 22, 24–29, 31, 32,
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`34, 42–45, 47–50, 52, and 53 are unpatentable. Patent Owner’s Motion to
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`Exclude is dismissed as moot.
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`2
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`IPR2013-00594
`Patent 8,050,652 B2
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`A. Related Proceedings
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`Petitioner indicates that the ’652 Patent is at issue in Black Hills
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`Media, LLC v. Yamaha Corp. of America, No. 2:13-cv-006054 (C.D. Cal.).
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`Pet. 2–4. In addition, Patent Owner has pending cases concerning the ’652
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`Patent in the United States District Court for the District of Delaware and the
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`Central District of California, and an investigation before the U.S.
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`International Trade Commission, Certain Digital Media Devices, Including
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`Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and
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`Mobile Phones, Components Thereof and Associated Software, Inv. No.
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`337-TA-882 (USITC). Patent Owner’s Supplemental Mandatory Notice
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`(Paper 48) 1–3. The ’652 Patent is the subject of two other petitions for
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`inter partes review.1 Id. at 3. In addition, U.S. Patent No. 8,045,952 B2 is
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`related to the ’652 Patent and is the subject of three petitions for inter partes
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`review.2 Id.
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`B. The ’652 Patent
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`The ’652 Patent is directed to methods and apparatuses that allow
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`users to receive and play audio from various sources and to assign playlists
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`over a network to a network-enabled audio device. Ex. 1001, Abstract. The
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`Specification lists several problems with prior art systems such as the cost
`
`and technical complexity associated with listening to streaming audio over
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`the Internet and playing songs on a PC. Id. at 1:52–2:12. The ’652 Patent
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`purports to alleviate such issues “by providing a network-enabled audio
`
`
`1 Cases IPR2014-00737 and IPR2015-00334.
`2 Cases IPR2013-00593, IPR2014-00740 and IPR2015-00340.
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`3
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`device for listening to a variety of audio sources with substantially equal
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`convenience.” Id. at 2:15–19.
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`In Internet radio mode, the inventive device receives and plays a
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`broadcast from an Internet radio station. Id. at 10:3–12, 10:49–57. The
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`inventive device also may work in conjunction with a computer. Id. at
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`16:32–35. In that embodiment, software may be used to assign a playlist of
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`songs to a network-enabled audio device. Id. This embodiment is illustrated
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`in Figures 15 and 19B of the ’652 Patent.
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`Figure 15 is reproduced below:
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`
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`Figure 15 is a block diagram illustrating the configuration between network-
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`enabled audio devices and a stereo web site. Ex. 1001, 6:4–6. Figure 15
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`illustrates two network-enabled audio devices (1510 and 1520) connected to
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`Internet Personal Audio Network (“IPAN”) server site 1104. Id. at 21:40–
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`43. Storage spaces (1512 and 1522) of network-enabled audio devices
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`(1510 and 1520) are used to store IPAN software 1526, playlists (1528 and
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`4
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`1530), and associated URLs and songs. Id. at 21:43–57. Server site 1104
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`includes IPAN software 1433 and playlists (1528 and 1530). Id. at 21:52–
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`57.
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`Figure 19B of the ’652 Patent is reproduced below:
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`Figure 19B shows the process for assigning a playlist to a device. Ex. 1001,
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`6:60–61. At step 1908, a user assigns a playlist to first device 1510. Id. at
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`28:14–16. The system then determines if the entire playlist is stored on the
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`hard drive of first device 1510. Id. at 28:20–22. If the entire playlist is not
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`5
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`stored on the first device 1510, IPAN 1433 will formulate a list of remaining
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`songs and check the hard drive of second device 1520 to determine whether
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`any of the remaining songs may be found on that device. Id. at 28:24–30. If
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`any of the remaining songs is found on second device 1520, then IPAN 1433
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`will provide first device 1510 a URL for the song (or songs), and first device
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`1510 will attempt to download the songs from second device 1520. Id. at
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`28:30–40.
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`C. Illustrative Claim
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`Claim 1 of the ’652 Patent (Ex. 1001, 34:6–35), reproduced below, is
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`illustrative of the claims at issue:
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`1. An electronic device comprising:
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`a) a network interface enabling the electronic device to
`receive an Internet radio broadcast and being further
`adapted to communicatively couple the electronic device
`to a central system;
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`b) a system enabling playback of audio content from a
`playlist assigned to the electronic device via the central
`system; and
`
`c) a control system associated with the network interface
`and the system enabling playback of the audio content
`indicated by the playlist, and adapted to:
`
`i) enable a user of the electronic device to select a
`desired mode of operation from a plurality of
`modes of operation comprising an Internet radio
`mode of operation and a playlist mode of
`operation;
`
`ii) receive and play the Internet radio broadcast
`when the desired mode of operation is the Internet
`radio mode of operation; and
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`iii) when the desired mode of operation is the
`playlist mode of operation:
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`receive the playlist assigned to the electronic
`device from the central system, the playlist
`identifying a plurality of songs, wherein
`ones of the plurality of songs are not stored
`on the electronic device;
`
`receive information from the central system
`enabling the electronic device to obtain the
`ones of the plurality of songs from at least
`one remote source;
`
`obtain the ones of the plurality of songs
`from the at least one remote source; and
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`play the audio content indicated by the
`playlist.
`
`
`
`D. Alleged Grounds of Unpatentability Instituted for Trial
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`The following table summarizes the challenges to patentability that
`
`were instituted for inter partes review (Dec. to Inst. 33):
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`
`
`Reference
`
`Qureshey3 and Berman
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`Basis
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`§ 103
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`Claims Challenged
`
` 1–4, 6–8, 10, 13, 21, 22, 24–29,
` 31, 42–45, 47–50, and 52
`
`Qureshey, Berman4, and Leeke5
`
`§ 103
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` 11, 32, and 53
`
`White6
`
`§ 103
`
` 1–4, 6, 7, 13, 21, 22, 24, 25, 27
` 28, 34, 42–45, 47, and 48
`
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`3 WO 99/38266, published July 29, 1999 (Ex. 1011).
`4 US 6,502,194 B1, Dec. 31, 2002, filed Apr. 16, 1999 (Ex. 1012).
`5 US 6,587,127 B1, July 1, 2003, filed Nov. 24, 1998 (Ex. 1010).
`6 US 7,187,947 B1, Mar. 6, 2007, filed Mar. 28, 2000 (Ex. 1014).
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`7
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`II. ANALYSIS
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`A. Claim Interpretation
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim
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`terms are given their “ordinary and customary meaning” as would be
`
`understood by one of ordinary skill in the art at the time of the invention and
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`in the context of the entire patent disclosure. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`In the Decision to Institute, we construed the terms “playlist,”
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`“playlist assigned to the electronic device,” and “wherein ones of the
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`plurality of songs are not stored on the electronic device.” Dec. to Inst. 10–
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`14. Neither party challenges our construction of the wherein phrase.
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`Having considered whether the construction set forth in the Decision to
`
`Institute should be changed in light of evidence introduced during trial, we
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`are not persuaded that any modification is necessary. Therefore, we
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`maintain the construction of “wherein ones of the plurality of songs are not
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`stored on the electronic device” as “wherein at least one of the plurality of
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`songs is not stored on the electronic device.” See id. at 14.
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`1. “Playlist”
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`In the Decision to Institute, we construed playlist to mean “a list of
`
`audio files or URLs of where the audio files were retrieved from.” Dec. to
`
`Inst. 13. Patent Owner argues that the term should be construed as “a list
`
`referencing media items arranged to be played in a sequence.” PO Resp. 13.
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`Petitioner argues that Patent Owner’s proposed construction is too narrow
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`and that the proper construction is “a list of audio files.” Reply 4. We are
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`persuaded by Petitioner’s arguments.
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`In the Decision to Institute, we based our construction on a passage
`
`from the Specification of the ’652 Patent, which defines “playlist 1528 . . .
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`[as] a list of audio files and associated URLs of where the audio files were
`
`retrieved from.” Ex. 1001, 21:63-65. Petitioner persuasively argues that the
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`Specification and the claims reflect that the playlist and associated URLs are
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`separate items. Reply 5–6. For example, the Specification discusses a
`
`server having “a playlist for the Device 1110” and also “maintain[ing] a list
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`of URL’s from which the device 1110 received audio files listed in the
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`playlists.” Ex. 1001, 16:67–17:6; see also Reply 5–6 (citing Ex. 1001,
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`21:63–65, 21:45–46, 21:49, 21:51–52, Fig. 15) (pointing out examples in the
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`Specification that discuss the playlist and URLs as separate items); Ex. 2011
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`¶¶ 68–72, 77, 78, 77–86 (explanation by Patent Owner’s declarant, Mr. Ivan
`
`Zatkovich, as to why a list of URLs is not a playlist). Thus, we are
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`persuaded that URLs are not part of the playlist. Therefore, the broadest
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`reasonable construction of playlist is “a list of audio files.”
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`Patent Owner appears to agree that the playlist is a list of songs (or
`
`media items), but further argues that the construction of the term should go
`
`beyond the content of the list (i.e., songs or media items) to also include the
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`arrangement of the contents of the playlist. See PO Resp. 18; Ex. 2011 ¶ 31
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`(describing the’652 Patent’s “centrally-managed playlist, identifying a
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`plurality of songs aggregated from one or more remote sources”). Patent
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`Owner argues that the Specification is consistent with its construction. In
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`particular, Patent Owner points to the discussion of the ’652 Patent’s Figure
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`17B, which illustrates the display of an audio player window 1792. PO
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`Resp. 17 (citing Ex. 1001, 24:31–43). We are not persuaded that this Figure,
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`depicting a constellation of buttons on an audio player and the description of
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`the function of those buttons, defines the playlist that may be played on that
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`device.
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`Patent Owner also cites a number of extrinsic references that discuss
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`the sequencing of titles in the playlist. PO Resp. 13–15. Patent Owner’s
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`declarant, Mr. Ivan Zatkovich, supports Patent Owner’s argument by stating
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`that one of ordinary skill in the art would have understood that
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`the term “playlist” denoted a list of media items (e.g., songs) to
`be played in a sequence, one after another as a group, without
`having to select individual songs for playback. Indeed, the two
`parts of the word itself make the meaning of the term self-
`evident: “play” and “list.” In all cases, the operative function is
`“play,” which means the songs will be played as a group, not
`individually. If the songs in a playlist must be selected and
`played individually, the purpose of the playlist would be lost.
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`Ex. 2011 ¶ 60.
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`Petitioner persuasively argues that this limitation as to the order of
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`songs is a function of the device used to play the songs on the playlist and
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`not a defining characteristic of the playlist itself.
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`MR. FEHRMAN: Oh, certainly a playlist can be employed by a
`player to play an order depending upon the nature of the player
`and the software that’s used to control it. But the term that’s
`being construed is playlist, and what that is. How that playlist
`is used and employed is not part and parcel of the playlist,
`per se.
`
`Tr. 10:21–25. Indeed, Patent Owner’s counsel questioned Petitioner’s
`
`declarant, Dr. V. Michael Bove, Jr., as to his “aware[ness] of any software
`
`or digital media player that has a playlist function that doesn’t permit one to
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`10
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`play the items in the list in a continuous fashion.” PO Resp. 15–16 (citing
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`Ex. 2015, 66:18–22) (emphasis added). Dr. Bove responded that to his
`
`recollection “all [players] will allow playing in a sequence as displayed.” Id.
`
`at 15 (citing Ex. 2015, 66:24–25) (emphasis omitted). Patent Owner
`
`characterizes this exchange about the player functionality as a concession as
`
`to the definition of a playlist. Id.; see also Reply 6 (emphasizing that Dr.
`
`Bove’s testimony stated that “a player determines how songs in the list are
`
`played”). We are persuaded that the manner in which songs are played is a
`
`function of the player and not a defining feature of the playlist itself. Thus,
`
`we do not construe the term playlist to include any limitations as to the order
`
`or sequence of songs on the playlist.
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`2. “Playlist assigned to the Electronic Device”
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`In our Decision to Institute, we construed the phrase “playlist assigned
`
`to the electronic device” to be “a list of audio files or URLs of where the
`
`audio files were retrieved from directed to a particular device selected by a
`
`user.” Dec. to Inst. 13. Patent Owner argues that “assigned to the electronic
`
`device” should be construed to mean “directed to the electronic device.” PO
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`Resp. 24 (citing Ex. 2011 ¶ 87). According to its argument, “the [’652]
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`Patent specifically contemplates that playlists are assigned without requiring
`
`user selection of a particular device to which the playlist is directed.” Id. at
`
`25 (citing Ex. 2011 ¶ 92). Patent Owner supports this argument by citing a
`
`portion of the Specification that discusses Figure 17I. Id. This discussion,
`
`however, does not support its argument. Figure 17I “shows a display for
`
`allowing a user to add a device to the IPAN.” Ex. 1001, 6:32–33. As
`
`depicted, this is the display for adding a particular device (elements 1771
`
`and 1772 depict the name and serial number of the device) to the network.
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`Id. at Fig. 17I. Included in this display is a checkbox that allows the user to
`
`select whether new files should be updated automatically to this specific
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`device. Id. at 25:53–56. This is in accord with the passages we cited in the
`
`Decision to Institute that show the repeated description of assignment of a
`
`playlist to a particular device selected by the user. Dec. to Inst. 12 (citing
`
`Ex. 1001, 4:57–58, 22:39–40, 24:45–48, 28:16, Figs.19B, 19C1). Thus, in
`
`light of the record, we determine that the broadest reasonable construction of
`
`“playlist assigned to the electronic device” is “a list of audio files directed to
`
`a particular device selected by a user.”
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`B. Level of Ordinary Skill in the Art
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`Petitioner proposes that the level of ordinary skill in the art is “at least
`
`a bachelor’s degree in computer science or electrical engineering, and at
`
`least one year of practical experience with networked multimedia.”
`
`Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring a person with a
`
`“Bachelor’s degree in computer science or electrical engineering or its
`
`equivalent and 1–2 years of experience with media file sharing.” PO Resp.
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`9–10 (citing Ex. 2011 ¶ 26). We find this dispute between the parties to be
`
`of little value. An express definition of the level of ordinary skill is not
`
`required in all situations, as the level of ordinary skill in the art can be
`
`reflected in the cited prior art references. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the
`
`level of skill in the art does not give rise to reversible error where the prior
`
`art itself reflects an appropriate level and a need for testimony is not
`
`shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995). Neither party has provided a sufficient explanation as to
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`how their specific proposal regarding the level of ordinary skill (and in
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`particular the importance of the inclusion or exclusion of “at least”) changes
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`the analysis in this case. We find the level of ordinary skill in the art to be
`
`reflected in the cited references, and we determine that no express statement
`
`of the level of ordinary skill in the art is required.
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`C. Obviousness over Qureshey (Ex. 1011) and Berman (Ex. 1012)
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`Petitioner alleges that claims 1–4, 6–8, 10, 13, 21, 22, 24–29, 31, 42–
`
`45, 47–50, and 52 of the ’652 Patent are unpatentable under 35 U.S.C. § 103
`
`over Qureshey and Berman. Pet. 27–39.
`
`For the reasons discussed below, we conclude that Petitioner has
`
`proved by a preponderance of the evidence that claims 1–4, 6–8, 10, 13, 21,
`
`22, 24–29, 31, 42–45, 47–50, and 52 would have been obvious over
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`Qureshey and Berman.
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`1. Overview of Qureshey
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`Qureshey is directed to “an intelligent radio apparatus that is adapted
`
`to allow a user to receive Web radio broadcasts in a manner similar to the
`
`ease and low cost with which a user receives a regular radio broadcast.” Ex.
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`1011, 1:28–30.
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`Figure 1 is reproduced below:
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`
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`Figure 1 shows a perspective view of an embodiment of tabletop intelligent
`
`radio 100. Ex. 1011, 5:3, 3:12. A variety of user controls are provided on
`
`the face of radio 100. Id. at 5:9–18. In particular, “[t]he button bar 120
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`provides buttons to select an audio source, including, for example, ‘AM’
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`radio, ‘FM’ radio, ‘Web’ radio, ‘Cassette’, and ‘External’ input.” Id. at
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`5:11–12. Intelligent radio 100 may receive input from other sources
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`including “an audio CD, a DVD, [or] a digital audio tape unit . . . .” Id. at
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`6:25–27. The user can select a web radio station from a list of available web
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`broadcasts. Id. at 4:8–12, 8:18–25, Fig. 3E. In some embodiments, a data
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`storage device may be used to provide storage for audio material. Id. at
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`5:24–25. Intelligent radio 100 may be operated using a wireless remote 135
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`and also may include a wireless transceiver. Id. at 4:26–32, 12:21–13:5,
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`Fig. 1 (element 135); see also id. at Fig. 10 (depicting an embodiment
`
`including transceiver 1010).
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`2. Overview of Berman
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`Berman is directed to a playback unit that retrieves audio data from a
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`remote server and plays songs that have been selected by the user. Ex. 1012,
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`Abstract. An embodiment of Berman’s playback unit is depicted in Figure
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`1, which is reproduced below:
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`
`
`Figure 1 is a block diagram of Berman’s playback unit 100. Ex. 1012, 4:17–
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`19. Playback unit 100 receives audio material from audio material server
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`104 and access rights to this material are controlled by Directory and User
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`List (“DUL”) server 107. Id. at 4:51–53, 4:63–65. Playback unit 100
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`includes network interface 110 that facilitates communication with the
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`servers over the Internet. Id. at 5:11–14. Memory 116 temporarily stores
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`audio for playback and processing. Id. at 6:6–8. In certain embodiments,
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`the user may record a song to memory. Id. at 8:4–6. Berman’s playback
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`unit may receive input from a wireless remote control. Id. at 5:46–49. The
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`remote control unit may be used to move through the song list and search for
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`songs. Id. at 5:54–61, 13:51–64, Figs. 2, 13.
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`The operation of the playback unit is illustrated in Figures 3 and 4,
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`which are reproduced below:
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`
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`Figures 3 and 4 are processing flow diagrams depicting the steps executed to
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`request and receive audio material. Ex. 1012, 4:22–25. At step 302, the user
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`selects a music category or type of song. Id. at 6:64–7:4. The playback unit
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`then contacts the DUL server to confirm that the playback unit’s song list is
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`up to date. Id. at 7:4–6, Fig. 3 (step 304). If the song list is not up to date,
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`the DUL server will send an updated song list to the device. Id. at 7:14–19,
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`Fig. 3 (steps 306 and 308). In certain embodiments, the song list may be
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`updated to reflect the user’s preferred songs. Id. at 13:9–15. The user
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`selects a song from the song list. Id. at 7:22–24. The DUL server then sends
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`playback unit 100 to the network address or URL for the requested song. Id.
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`at 7:30–41. Playback unit 100 then uses that URL to obtain the requested
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`sound file or streaming audio from the appropriate audio material server. Id.
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`at 7:41–45, 8:32–34, Fig. 4 (steps 402 and 412).
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`3. Analysis
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`Petitioner argues that Qureshey and Berman teach or suggest every
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`limitation of claim 1. Pet. 29–33. Specifically, Petitioner’s obviousness
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`ground relies on Qureshey’s teachings directed to Internet radio and
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`Berman’s teachings regarding an on demand system for playing songs from
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`a playlist via a network. Id. at 27–33. Petitioner asserts that an ordinarily
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`skilled artisan “would have easily recognized that the Internet radio receiver
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`of Qureshey could have been improved by including the audio on demand
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`features of Berman.” Id. at 31. Dr. Bove supports Petitioner’s argument by
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`opining that at the time of the invention of the ’652 Patent, such an artisan
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`would have been aware of PCs that access both Internet radio and audio on
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`demand and would have understood that adding audio on demand to an
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`Internet radio device “would, for the most part, only involve modifying the
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`user interface software to allow selecting between the functions, and
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`programming additional server addresses into the system.” Ex. 1002 ¶ 22.
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`We agree with Petitioner’s contentions regarding the teachings of Qureshey
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`and Berman, and we credit Dr. Bove’s testimony regarding the rationale for
`
`combining the teachings of these references.
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`Patent Owner argues that Petitioner’s asserted ground should fail,
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`because Berman does not receive a playlist assigned to the electronic device;
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`instead, Berman merely discloses audio material that is selected and played
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`on the playback unit itself. PO Resp. 49–50. According to Patent Owner,
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`Berman’s song list is not a playlist, because it “merely represents a list of
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`possible songs that can be selected.” Id. at 50–51 (citing Ex. 2011 ¶ 114).
`
`Patent Owner’s argument is predicated on its proposed construction of
`
`playlist, which we have rejected. See Section II.A.1 (construing playlist to
`
`be “a list of audio files”). We, however, determine that Berman’s song list
`
`falls squarely within our construction of playlist.
`
`Patent Owner also argues that Berman’s song list does not reflect a list
`
`of songs selected for playback on a device. PO Resp. 52–54. This,
`
`however, is not required by our construction. Even if it were required,
`
`Berman does disclose some song selection by the user. Claim 15 of Berman
`
`discloses the user “selecting an available music category” and the system
`
`“sending a current song list version for the selected music category.”
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`Ex. 1012, 17:60–67. At Oral Hearing, Patent Owner’s counsel described
`
`this claim language from Berman as “loose wording” that does not have any
`
`meaning. Tr. 50:6–25 (“MR. ENGELLENNER: I don’t think it has any
`
`meaning. It’s just describing, perhaps loosely, what’s going on in that
`
`function there.”). The reference’s disclosures are what they are, and we see
`
`no reason to disregard them as “loose wording.” Berman’s song list falls
`
`squarely within our construction of playlist, and, thus, we do not find Patent
`
`Owner’s arguments persuasive.
`
`For the foregoing reasons, we determine that Petitioner has
`
`demonstrated by a preponderance of the evidence that independent claim 1
`
`is unpatentable over Qureshey and Berman. Independent claims 21 and 42
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`recite limitations similar to those of claim 1 and, therefore, for similar
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`reasons as to those discussed for claim 1, we determine that Petitioner
`
`has demonstrated by a preponderance of the evidence that claims 21 and
`
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`42 would have been rendered obvious by Qureshey and Berman. See Pet.
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`27–38.
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`In regards to dependent claims 2–4, 6–8, 10, 13, 22, 24–29, 31, 43–45,
`
`47–50, and 52, we determine that Petitioner has demonstrated by a
`
`preponderance of the evidence that these claims also would have been
`
`obvious over Qureshey and Berman. See Pet. 27–39. Patent Owner proffers
`
`no additional arguments regarding the patentability of these dependent
`
`claims. PO Resp. 55.
`
`D. Obviousness over Qureshey (Ex. 1011), Berman (Ex. 1012) and
`Leeke (Ex. 1010)
`
`Petitioner asserts that claims 11, 32, and 53 of the ’652 Patent would
`
`have been rendered obvious by the teachings of Qureshey, Berman, and
`
`Leeke. Pet. 39. Claims 11, 32, and 53, respectively, depend from claims 1,
`
`21, and 42. These claims each recite that supplemental information related
`
`to a song is received and displayed in response to a request.
`
`Leeke is directed to a content player and server. Ex. 1010, Abstract.
`
`Leeke teaches displaying auxiliary information in response to a user request.
`
`Id. at 14:30–33, 20:64–21:2. “The auxiliary information can include specific
`
`information for the current title such as album cover graphics, liner notes,
`
`tray back images, images of the artist(s), producer and writer credits, and
`
`distribution label information, for example.” Id. at 21:2–6, 14:34–37.
`
`Petitioner asserts that these teachings, in conjunction with those of Qureshey
`
`and Berman, would have rendered obvious dependent claims 11, 32, and 53.
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`Pet. 39. Dr. Bove opines that it would have been obvious to provide Leeke’s
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`supplemental information along with Berman’s audio on demand. Ex. 1002
`
`¶ 24. He states that this combination entails applying a known technique to
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`a known device. Id. We credit Dr. Bove’s testimony and find Petitioner’s
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`arguments to be persuasive.
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`Patent Owner argues that Petitioner’s ground is insufficient because
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`there is no reason to assume that Leeke’s auxiliary information is obtained
`
`by sending a request to a remote server in real-time while a song is playing
`
`as required by the challenged claims. PO Resp. 56. Mr. Zatkovich opines
`
`that “[i]t is plausible (and far more likely) that Leeke envisioned retrieval of
`
`additional information, such as the song name, artist, etc. from the audio file
`
`itself or local storage.” Ex. 2011 ¶ 127. Petitioner argues that Patent
`
`Owner’s contention is without merit, because Leeke describes the auxiliary
`
`information as being obtained for the current song being played and notes
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`that there is a discussion of an option to purchase that song. Reply 13–14
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`(citing Ex. 1010, 14:31–51). We agree with Petitioner’s assertion that,
`
`because the request is for the auxiliary information of the current song, the
`
`information is being requested in real-time. As to Patent Owner’s argument
`
`that Leeke plausibly could have envisioned that the information would be
`
`requested from a local source and not a remote server, we note that in
`
`obviousness determinations the cited references must not be read in
`
`isolation. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1987).
`
`We must instead examine the combined teachings of the references. Berman
`
`describes “a system for playback of network audio material on demand”
`
`whereby a playback unit obtains on demand audio material via a server
`
`connected to the playback unit over the Internet. Ex. 1012, 3:33–39.
`
`Petitioner asserts persuasively that Berman may be modified to include the
`
`information described in Leeke. Pet. 39. Thus, we determine that these
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`teachings taken together support Petitioner’s contention that requesting such
`
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`audio material from a remote server in real-time would have been obvious.
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`Therefore, we determine that Petitioner has demonstrated by a
`
`preponderance of the evidence that claims 11, 32, and 53 would have been
`
`obvious over Qureshey, Berman, and Leeke.
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`E. Obviousness over White (Ex. 1014)
`
`Petitioner alleges that claims 1–4, 6, 7, 13, 21, 22, 24, 25, 27, 28, 34,
`
`42–45, 47, and 48 of the ’652 Patent are unpatentable under 35 U.S.C. § 103
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`over White. Pet. 51–59.
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`For the reasons discussed below, we conclude that Petitioner has
`
`proved by a preponderance of the evidence that claims 1–4, 6, 7, 13, 21, 22,
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`24, 25, 27, 28, 34, 42–45, 47, and 48 would have been obvious over White.
`
`1. Overview of White
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`White is directed to a system and method for communicating selected
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`information to an electronic device. Ex. 1014 ¶ Abstract. Selected
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`information includes “audio information such as . . . songs, on-line radio
`
`stations, on-line broadcasts, streaming audio, or other selectable
`
`information.” Id. at 3:59–61. White discloses “allow[ing] a radio listener to
`
`create a personal playlist and to listen to this playlist in a wireless
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`atmosphere while enjoying CD quality sound.” Id. at 2:7–10.
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`White’s Figure 4 is reproduced below:
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`
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`Figure 4 shows graphical user interface 400 for displaying selectable audio
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`information. Id. at 11:6–15. Interface 400 may be displayed as a web page.
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`Id. This interface allows users to view radio dial 412 or “a current playlist
`
`selected by the user or the status of [a] wirelessly communicated playlist.”
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`Id. at 11:26–33. Programming interface 413 is used to specify items to be
`
`displayed by radio dial 412. Id. at 12:29–30. These items may include
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`Internet and broadcast radio stations or playlists. Id. at 12:30–36.
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`White’s Figure 8 is reproduced below:
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`
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`Figure 8 depicts a method for providing selected audio information to an
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`electronic device. Ex. 1014, 3:40–42. At step 800, the user accesses a web
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`page such as the home page shown in Figure 4. Id. at 15:64–67. Then at
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`step 801, the user selects “a single song, a plurality [of] different songs, an
`
`entire album, a broadcast station, streaming audio, etc. or
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