Trials@uspto.gov
`571-272-7822
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`Paper 17
`Entered: March 20, 2014
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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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
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`
`
`Paper 17
`Entered: March 20, 2014
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2013-00594
`Patent 8,050,652 B2
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`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Yamaha Corporation of America (“Petitioner”) filed a petition to
`institute an inter partes review of claims 1-4, 6-8, 10, 11, 13, 14, 21, 22, 24-
`29, 31, 32, 34, 35, 42-45, 47-50, 52, 53, 55, and 56 (“challenged claims”) of
`U.S. Patent No. 8,050,652 B2 (Ex. 1001, the “’652 Patent”) pursuant to 35
`U.S.C. §§ 311-319. Paper 1 (“Pet.”). Black Hills Media, LLC (“Patent
`Owner”) filed a preliminary response. Paper 10 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 12-14):
`Reference(s)
`Basis Claims challenged
`Leeke1
`§102
`1, 2, 4, 6, 7, 10, 11, 13, 14, 21, 22,
`§103
`24, 25, 28, 31, 32, 34, 35, 42, 43,
`45, 47, 48, 52, 53, 55, and 56
`§103 1-4, 6-8, 10, 13, 21, 22, 24-29, 31,
`42-45, 47-50, and 52
`
`Qureshey2 and Berman3
`
`
`1 U.S. Patent No. 6,587,127 B1, July 1, 2003, filed Nov. 24, 1998
`(Ex. 1010).
`2 WO 99/38266, published July 29, 1999 (Ex. 1011).
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`2
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`Reference(s)
`Qureshey, Berman, and
`Leeke
`Lansonic DAS-7504
`
`Lansonic DAS-750
`
`White5
`
`Basis Claims challenged
`§103 11, 32, and 53
`
`§102 1-4, 6, 7, 10, 21, 22, 24, 25, 27-29,
`31, 42-45, 47, 48, and 52
`§103 1-4, 6-8, 10, 21, 22, 24-29, 31, 42-
`45, 47-49, and 52
`§103 1-4, 6, 7, 13, 21, 22, 24, 25, 27,
`28, 34, 42-45, 47, and 48
`
`For the reasons described below, we determine that the present record
`demonstrates a reasonable likelihood that Petitioner will prevail in
`establishing the unpatentability of all but four of the challenged claims.
`Accordingly, we grant the Petition for inter partes review of the ’652 Patent
`as to claims 1-4, 6-8, 10, 11, 13, 21, 22, 24-29, 31, 32, 34, 42-45, 47-50, 52,
`and 53 based on the authorized grounds, as discussed below. We deny the
`Petition as to claims 14, 35, 55, and 56.
`
`B.
`
`Related Matters
`
`Petitioner indicates that the ’652 Patent is at issue in Black Hills
`Media, LLC v. Yamaha Corp. of America, No. 2:13-cv-006054 (C.D. Cal.)
`Pet. 2-4. In addition, Patent Owner also has pending cases concerning the
`’652 Patent in the United States District Court for the District of Delaware
`involving Sharp (1:13-cv-00804), Toshiba (1:13-cv-00805), Panasonic
`(1:13-cv-00806) and LG Electronics Inc. (1:13-cv-00803-RGA); a case in
`the Eastern District of Texas against Samsung (2:13-cv-00379); cases in the
`
`3 U.S. Patent No. 6,502,194 B1, Dec. 31, 2002, filed Apr. 16, 1999
`(Ex. 1012).
`4 Web pages describing the Lansonic DAS-750 (Ex. 1013).
`5 U.S. Patent No. 7,187,947 B1, Mar. 6, 2007, filed Mar. 28, 2000
`(Ex. 1014).
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`Central District of California involving Pioneer (2:13-cv-05980), Logitech
`International (2:13-cv-06055), and Sonos, Inc. (2:13-cv-06062); and an
`investigation before the U.S. International Trade Commission, Certain
`Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home
`Theater Systems, Tablets and Mobile Phones, Components Thereof and
`Associated Software, Inv. No. 337-TA-882 (USITC). Pet. 3-4; Mandatory
`Notice (Paper 5) 1-2. Also, U.S. Patent No. 8,045,952 B2 is related to the
`’652 Patent and is the subject of a separate petition for inter partes review,
`which currently is pending before the Board.6 Pet. 2-3.
`
`C.
`
`Real Party-in-Interest
`
`Patent Owner alleges that Petitioner fails to identify all real parties-in-
`interest and thus, the Petition should be dismissed for noncompliance with
`35 U.S.C. § 312(a) and 37 C.F.R. § 42.8(b)(1). Prelim. Resp. 2, 6. Patent
`Owner asserts that Pioneer Corporation and Pioneer Electronics (USA) Inc.
`(collectively “Pioneer”) should have been identified in the Petition as real
`parties-in-interest. Id. at 3. Patent Owner and Pioneer currently are engaged
`in a patent infringement lawsuit in parallel with the patent infringement
`lawsuit between Patent Owner and Petitioner. Id. AV receivers, networked
`Blu-Ray players, and home theater systems from Pioneer and Petitioner are
`alleged to infringe claim 1 of the ’652 Patent. Id. Thus, according to Patent
`Owner, Pioneer and Petitioner are aligned with respect to claim construction
`and invalidity of the claims asserted in the district court litigation. Id. at 3-4.
`Patent Owner also argues that Petitioner’s counsel in this proceeding has
`spoken on behalf of Petitioner and Pioneer at a district court technology
`
`6 Case IPR2013-00593.
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`tutorial directed to the ’652 Patent. Id. at 4. Finally, Patent Owner states
`that Pioneer’s counsel agreed to be bound by the outcome of this proceeding
`if the district court would agree to stay the district court litigation. Id. at 4-5;
`Ex. 2008.
`We are not persuaded that Pioneer is a real party-in-interest in this
`matter. A determination as to whether a non-party to an inter partes review
`is a real party-in-interest is a “highly fact-dependent question,” based on
`factors such as whether the non-party “exercised or could have exercised
`control over a party’s participation in a proceeding” and the degree to which
`a non-party funds, directs, and controls the proceeding. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759-60 (Aug. 14, 2012). In other
`words, the question before us is whether there is a non-party “at whose
`behest the petition has been filed” or a relationship “sufficient to justify
`applying conventional principles of estoppel and preclusion.” Id. at 48,759.
`On the record currently before us, we are not persuaded that Pioneer is
`in position to exercise control over Petitioner’s involvement in this
`proceeding. It is common for one lawyer to speak on behalf of multiple
`parties at a technology tutorial. Often, this is done for efficiency purposes
`and by itself does not signify control over the various entities in the lawsuit.
`In addition, while Pioneer and Petitioner both may be interested in the
`patentability of the ’652 Patent claims, this does not mean that the parties
`have the same interests. Litigation alliances may arise for numerous
`reasons, including, but not limited to, parties having a similar perspective on
`one or more issues in a case. The existence of such alliances alone generally
`does not rise to the level that would require naming the ally/co-defendant as
`a real party in interest. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,760 (Aug. 14, 2012). We, therefore, will not deny the Petition for failure
`to comply with 35 U.S.C. § 312(a) and 37 C.F.R. § 42.8(b)(1).
`
`D.
`
`The ’652 Patent7 (Ex. 1001)
`
`The ’652 Patent is directed to methods and apparatuses that allow
`users to receive and play audio from various sources and to assign playlists
`over a network to a network-enabled audio device. Ex. 1001, Abstract. The
`specification lists several problems with prior art systems such as the cost
`and technical complexity associated with listening to streaming audio over
`the Internet and playing songs on a PC. Id. at 1:52-2:12. The invention of
`the ’652 Patent was intended to alleviate such issues “by providing a
`network-enabled audio device for listening to a variety of audio sources with
`substantially equal convenience.” Id. at 2:15-19.
`In Internet radio mode, the inventive device receives and plays a
`broadcast from an Internet radio station. Id. at 10:3-12, 10:49-57. The
`inventive device also may work in conjunction with a computer. Id. at
`16:32-35. In that embodiment, software may be used to assign a playlist of
`songs to a network-enabled audio device. Id. This embodiment is illustrated
`in Figures 15 and 19B of the ’652 Patent. Figure 15 is reproduced below:
`
`
`7 The ’652 Patent shares a specification with the ’952 Patent, which is the
`subject of a separate petition for inter partes review that currently is pending
`before the Board. See IPR2013-00593.
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`Figure 15 is a block diagram illustrating the configuration between network-
`enabled audio devices and a stereo web site. Ex. 1001, 6:4-6. Figure 15
`illustrates two network-enabled audio devices (1510 and 1520) connected to
`Internet Personal Audio Network (“IPAN”) server site 1104. Id. at 21:40-
`43. Storage spaces (1512 and 1522) of network-enabled audio devices
`(1510 and 1520) are used to store IPAN software 1526, playlist (1528 or
`1530), and associated URLs and songs within the playlist. Id. at 21:43-57.
`Server site 1104 includes IPAN software 1433 and playlists (1528 and
`1530). Id. at 21:52-57.
`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,
`6:60-61. At step 1908, a user assigns a playlist to first device 1510. Id. at
`28:14-16. The system then determines whether all of the songs on the
`playlist are stored on the hard drive of first device 1510. Id. at 28:20-22. If
`any of the songs are missing from first device 1510, IPAN 1433 forms a list
`of remaining songs and checks the hard drive of second device 1520 to
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`determine whether any of the remaining songs may be found on that device.
`Id. at 28:24-30. If any of the songs is found on second device 1520, then
`IPAN 1433 will provide first device 1510 with URLs for those songs, and
`first device 1510 will attempt to download the songs from second device
`1520. Id. at 28:30-40.
`
`E.
`
`Illustrative Claim
`
`Claim 1 of the ’652 Patent is illustrative of the claims at issue:
`1. An electronic device comprising:
`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;
`
`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
`
`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
`
`play the audio content indicated by the
`playlist.
`
`F.
`
`Claim Interpretation
`
`We must determine the meaning of the claims before we analyze the
`proposed grounds of unpatentability. Consistent with the statute and
`legislative history of the America Invents Act8, we interpret claims of an
`unexpired patent using the broadest reasonable construction consistent with
`the patent specification. 37 C.F.R. § 42.100(b); see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner seeks
`construction of the following terms: (1) “playlist assigned to the electronic
`device” and (2) “wherein ones of the plurality of songs are not stored on the
`
`
`8 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
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`electronic device.” Pet. 7-13. Patent Owner responds to Petitioner’s
`proposed constructions and proposes a construction for the term “playlist.”
`Prelim. Resp. 17-20.
`
`1. “Playlist”/“Playlist Assigned to the Electronic Device”
`
`Independent claims 1, 21, and 42 each recite the term “playlist
`assigned to the electronic device.” Petitioner asserts that the term should be
`construed as “a list of songs that is to be transferred to a particular device
`selected by the user.” Pet. 8-9 (citing Ex. 1002 ¶¶ 12-14.). Patent Owner
`argues that “playlist” should be construed separately and its construction
`should be “a list referencing media items arranged to be played in a
`sequence.” Prelim. Resp. 17. In addition, Patent Owner asserts that
`“assigned to the electronic device” requires no further construction, but if
`the Board decides that a construction is necessary Patent Owner proposes
`that the proper construction is “directed to the electronic device.” Id. at 19.
`The specification of the ’652 Patent defines “playlist 1528 . . . [as] a
`list of audio files and associated URLs of where the audio files were
`retrieved from.” Ex. 1001, 21:63-65. Patent Owner argues that the term
`also includes a requirement that the playlist be “arranged to be played in a
`sequence.” Prelim. Resp. 17-18 (citing Ex. 1001, 24:31-43). In support of
`this argument Patent Owner cites the discussion of Figure. 17B. Id. This
`portion of the specification discusses audio player window 1792, which
`includes shuffle button 1796 and repeat button 1798. Ex. 1001, 24:31-43.
`These buttons may be used to vary the order of songs to be played and to
`play repeatedly songs indicated by the playlist. Id. On the current record,
`we are not persuaded that this description of audio player window 1792
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`narrows the previously cited definition of a playlist. In addition, we note
`that the claims require that the system be able to play the “audio content
`from a playlist.” Id. at 34:11-12; see also id. at 35:38-41 (reciting a
`commensurate limitation) and 37:21 (reciting playback of “audio content
`indicated by the playlist.”). Thus, the claims require the system to play
`content from the playlist as opposed to playing the playlist itself. Therefore,
`on the record currently before us, we construe playlist to mean “a list of
`audio files or URLs of where the audio files were retrieved from.”
`The parties also dispute whether the playlist must be transferred to a
`device or directed to a device. The specification describes an embodiment
`that does not have storage space for a playlist. Ex. 1001, 4:4-9. In this
`embodiment the playlist is stored on the IPAN Manager or a PC. Id.
`Petitioner’s expert, Dr. Bove opines that in this embodiment the playlist is
`not assigned to the device. Ex. 1002 ¶ 17. We, however, are not persuaded
`by his statement. The ’652 Patent specifically contemplates a scenario
`where the playlist is resident on one device and used by another device to
`play songs. On the current record, we are not persuaded that this term
`should be narrowed to exclude this embodiment. Thus, based on the record
`currently before us, we agree with Patent Owner’s proposal that the playlist
`is “directed to” rather than “transferred to” a device.
`Finally, the parties dispute whether a user is required to select the
`device. The specification repeatedly describes assignment of a playlist to a
`particular device selected by a user. See e.g., Ex. 1001, 4:57-58, 22:39-40,
`24:45-48, 28:16, Fig.19B, and Fig. 19C1; see also Ex. 1002 ¶ 14 (noting that
`assignments are made to user selected devices). Patent Owner asserts that
`Petitioner is attempting to read an embodiment from the specification into
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`the claim limitations and to exclude other embodiments. Prelim. Resp. 18.
`Patent Owner cites a portion of the specification discussing Figure 17E as an
`example of an embodiment excluded by Petitioner’s proposed construction.
`Id. (quoting Ex. 1001, 25:3-8). Figure 17E illustrates the screen presented to
`a user in order to schedule a particular time or day to play a playlist. Ex.
`1001, Fig. 17E. It shows the name of the playlist (“Favorites”) and it also
`has a drop down box allowing the user to select the particular device to play
`this playlist. Id. Thus, even in this embodiment the user selects the
`particular device. Therefore, on the record currently before us, we construe
`“playlist assigned to the electronic device” to mean “a list of audio files or
`URLs of where the audio files were retrieved from directed to a particular
`device selected by a user.”
`
`2. “Wherein Ones of the Plurality of Songs Are Not Stored on the
`Electronic Device”
`
`Petitioner proposes that the plain meaning of “wherein ones of the
`plurality of songs are not stored on the electronic device” implies that the
`electronic device be capable of storing songs. Pet. 9. According to
`Petitioner, this term would have no meaning if no songs could be stored on
`the device. Id. Patent Owner asserts that this proposal “is both illogical and
`contrary to the teachings of the [’]652 Patent.” Prelim. Resp. 19. As an
`alternative, Patent Owner proposes that the disputed term mean “wherein at
`least one of the plurality of songs is not stored on the electronic device.” Id.
`at 20. Independent claims 1, 21, and 42 each recite the disputed language
`and each of these claims have dependent claims that recite electronic devices
`that playback songs from data storage devices or optical disks. Ex. 1001,
`34:39-45, 36:18-19, 37:27-33. In addition, as both parties acknowledge, the
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`specification describes an embodiment that does not have storage for songs.
`See Prelim. Resp. 19, Pet. 10 (citing Ex. 1001, 3:57-4:9); see also Ex. 1001,
`4:5-9 (“This embodiment provides for a low-cost system that can play songs
`from playlists stored on the IPAN Manager or on the PC’s storage space
`without having to store the audio files locally.”). Thus, on the record
`currently before us, we are persuaded that the broadest reasonable
`interpretation of the disputed language in light of the specification is
`“wherein at least one of the plurality of songs is not stored on the electronic
`device.”
`
`3. Remaining Claim Terms
`
`All other terms in the challenged claims are given their ordinary and
`customary meaning and need no express construction at this time.
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`Patent Owner’s arguments in its Preliminary Response to determine whether
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`A.
`
`Asserted Obviousness Ground Based on White (Ex. 1014)
`
`1. Overview of White
`
`White is directed to a system and method for communicating selected
`information to an electronic device. Ex. 1014 ¶ Abstract. Selected
`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
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`create a personal playlist and to listen to this playlist in a wireless
`atmosphere while enjoying CD quality sound.” Id. at 2:7-10.
`White’s Figure 4 is reproduced below:
`
`
`Figure 4 shows graphical user interface 400 for displaying selectable audio
`information. Id. at 11:6-15. Interface 400 may be displayed as a web page.
`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.”
`Ex. 1014, 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
`Internet and broadcast radio stations or playlists. Id. at 12:30-36.
`Figure 8 is reproduced below:
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`Figure 8 depicts a method for providing selected audio information to an
`electronic device. Ex. 1014, 3:40-42. At step 800, the user accesses a web
`page such as the home page shown in Figure 4. Id. at 15:64-67. Then at
`step 801, the user selects “a single song, a plurality [of] different songs, an
`entire album, a broadcast station, streaming audio, etc. or other selectable
`audio information.” Id. at 16:3-6. A playlist is created at step 802 reflecting
`the user’s audio selections. Id. at 16:6-9. In certain embodiments, the
`playlist may be composed of songs selected by a friend or group of friends.
`Id. at 17:56-18:19. A list of information is compiled at step 803 including
`information associated with the playlist, such as network or URL locations
`for the selected audio information. Id. at 16:12-14. At step 804, the user
`then selects a device such as “a[n] automobile audio system, a home stereo
`system, a home computer, an electronic device coupled to a home network
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`or computer system, etc.[,] or other locations or devices operable to receive
`the selected audio information.” Ex. 1014, 16:24-28. The playlist and
`associated information are communicated to the electronic device via a
`wired or wireless connection. Id. at 16:35-45. Once the information is
`communicated to the electronic device, the user may execute the playlist. Id.
`at 17:7-18.
`White’s electronic device “may be integrated into an audio component
`such as a radio receiver” or “coupled to a home audio system, a portable
`radio system or other system thereby providing a versatile electronic device
`operable to receive wirelessly communicated selected audio information.”
`Id. at 9:53-57, 10:38-42. In certain embodiments, White’s electronic device
`may be coupled to an optical disc player such as a CD player or “storage
`medium 303 such as a high speed buffer, programmable memory, or other
`devices operable to store information.” Id. at 18:46-50, 8:46-52; 8:67-9:5.
`
`2. Analysis of Asserted Ground of Obviousness over White
`
`Petitioner contends that White would have rendered obvious claims 1-
`4, 6, 7, 13, 21, 22, 24, 25, 27, 28, 34, 42-45, 47, and 48 of the ’652 Patent.
`Pet. 51-59. Petitioner relies on claim charts and the Declaration of Dr.
`V. Michael Bove, Jr. to show how this reference allegedly teaches or
`suggests the claimed subject matter. Id.; Ex. 1002.
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`a)
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`Independent Claim 1
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`Independent claim 1, in part, recites a control system adapted to
`receive the playlist assigned to the electronic device from the
`central system, the playlist identifying a plurality of songs,
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`wherein ones of the plurality of songs are not stored on the
`electronic device.
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`Petitioner argues that White teaches a playlist created from user selections
`that is transmitted to an electronic device selected by the user. Pet. 53
`(citing Ex. 1014, Figs. 4 and 8, 11:66-12-7, 15:62-16-28). Petitioner further
`asserts that the playlist may contain one or more songs. Id. at 54 (citing Ex.
`1014, 16:3-4). In addition, Petitioner maintains that one or more of those
`songs “may be obtained from many different sources such as URLs, network
`addresses, hard drives, databases comprised of audio information, etc.” Id.
`(quoting Ex. 1014, 16:11-19). Claim 1, in part, further recites a control
`system adapted to
`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.
`
`Petitioner argues that White teaches a web site that provides URLs to the
`electronic device that are associated with the songs on the playlist. Id.
`(citing Ex. 1014, 16:12-19).
`Patent Owner9 argues that White acquires information associated with
`the playlist prior to the user assigning the playlist to a device. Prelim. Resp.
`45 (citing Ex. 1014, 16:20-22, 16:35-37). Thus, the URLs referred to in
`“White cannot represent information received by the device (103) that
`enables the device (103) to obtain songs, because these URLs are utilized to
`
`9 We note that Patent Owner states that White does not “anticipate” the ’652
`Patent claims under 35 U.S.C. § 102(e). Prelim. Resp. 43-47. Petitioner,
`however, argues that White is available as prior art under 35 U.S.C. § 102(e)
`and that it would have rendered the ’652 Patent claims obvious under 35
`U.S.C. § 103. Pet. 51. We analyze Patent Owner’s arguments concerning
`White as opposing Petitioner’s asserted ground of obviousness.
`
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`obtain the songs from a remote source prior to the device (103) even being
`selected.” Id. at 46-47.
`We are not persuaded by Patent Owner’s arguments. “[A]s a general
`rule the claim is not limited to performance of the steps in the order recited,
`unless the claim explicitly or implicitly requires a specific order.” Baldwin
`Graphic Sys, Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008)
`(citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
`1342-43 (Fed. Cir. 2001)). This is particularly true here because claim 1
`recites an electronic device and not a method. Claim 1 recites, in relevant
`part, an apparatus with a control system adapted (1) to receive the assigned
`playlist and (2) to receive information enabling the device to obtain songs
`not stored on the device. On this record, we are not persuaded that claim 1
`requires the recited apparatus to be adapted to receive these items in a
`specific order. Petitioner, on the record currently before us, has persuaded
`us that White teaches a device adapted to receive a playlist and to receive
`URLs that may be used to obtain songs not resident in the device’s memory.
`Thus, Petitioner has shown sufficiently that White teaches this limitation.
`As to the remaining limitations of claim 1, we have reviewed
`Petitioner’s supporting evidence and determine that Petitioner has met the
`threshold standard of 35 U.S.C § 314(a). On this record, we are persuaded
`that there is a reasonable likelihood that Petitioner will prevail in showing
`that claim 1 would have been rendered obvious by White.
`
`b)
`Independent Claims 21 and 42
`Independent claims 21 and 42 recite limitations similar to those of
`claim 1 and, therefore, we are persuaded that there is a reasonable likelihood
`
`
`
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`that Petitioner will prevail in showing that claims 21 and 42 would have
`been rendered obvious by White. For example, claim 42 is a method claim
`that recites, in relevant part:
`i) receiving a playlist assigned to the electronic device via a
`central system, the playlist identifying a plurality of songs,
`wherein ones of the plurality of songs are not stored on the
`electronic device;
`
`ii) receiving information from the central system enabling the
`electronic device to obtain the ones of the plurality of songs
`from at least one remote source;
`
`On the record currently before us, we are not persuaded that the steps of this
`method claim are required to be performed in a specific order. Thus, for
`reasons stated above, we are persuaded that White teaches these limitations.
`On this record, we are persuaded by Petitioner’s assertion that there is a
`reasonable likelihood that it will prevail in showing that claims 21 and 42
`would have been rendered obvious by White.
`
`c)
`Dependent Claims
`With respect to the remaining dependent claims 2-4, 6, 7, 13, 22, 24,
`25, 27, 28, 34, 43-45, 47, and 48, we have reviewed Petitioner’s supporting
`evidence and determine that Petitioner has met the threshold standard of 35
`U.S.C § 314(a). For example, claim 2 depends from claim 1 and recites
`“wherein the control system is further adapted to enable playback from a
`broadcast radio source.” Petitioner argues that White teaches an electronic
`device that includes a radio receiver. Pet. 55 (citing Ex. 1014, 9:53-
`57;10:32-42; 13:4-29). Patent Owner has not challenged this assertion. On
`the current record, we are persuaded that Petitioner’s interpretation of
`White’s teaching is reasonable. Accordingly, we are persuaded that there is
`
`
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`a reasonable likelihood that Petitioner will prevail in showing that claim 2
`would have been rendered obvious by White.
`Based on the foregoing, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it will prevail in establishing the
`unpatentability of claims 1-4, 6, 7, 13, 21, 22, 24, 25, 27, 28, 34, 42-45, 47,
`and 48 as obvious over White.
`
`B. Grounds Based on Qureshey (Ex. 1011) and Berman (Ex. 1012)
`
`1. Overview of Qureshey
`
`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.
`1011, 1:28-30. Figure 1 is reproduced below:
`
`
`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
`provides buttons to select an audio source, including, for example, ‘AM’
`radio, ‘FM’ radio, ‘Web’ radio, ‘Cassette’, and ‘External’ input.” Id. at
`
`21
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`5:11-12. Intelligent radio 100 may receive input from other sources
`including “an audio CD, a DVD, [or] a digital audio tape unit . . . .” Id. at
`6:25-27. The user can select a web radio station from a list of available web
`broadcasts. Id. at 4:8-12, 8:18-25, Fig. 3E. In some embodiments, a data
`storage device may be used to provide storage for audio material. Id. at
`5:24-25. Intelligent radio 100 may be operated using a wireless remote 135
`and also may include a wireless transceiver. Id. at 4:26-32, 12:21-13:5, Fig.
`1 element 35; see also id. at Fig. 10 (depicting an embodiment including
`transceiver 1010).
`
`2. Overview of Berman
`
`Berman is directed to a playback unit that retrieves audio data from a
`remote server and plays songs that have been selected by the user. Ex. 1012,
`Abstract. An embodiment of Berman’s playback unit is depicted in Figure
`1, which is reproduced below:
`
`
`Figure 1 is a block diagram of Berman’s playback unit 100. Ex. 1012, 4:17-
`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 list
`(“DUL”) server 107. Id. at 4:51-53, 4:63-65. Playback unit 100 includes
`network interface 110 that facilitates communication with the servers over
`the Internet. Id. at 5:11-14. Memory
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