`
`
`
`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 No. IPR2013-00594
`U.S. Patent 8,050,652
`___________________
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`UPDATED TABLE OF EXHIBITS ......................................................................... v
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`STATEMENT OF RELIEF REQUESTED ................................................... 1
`
`III.
`
`PETITIONER’S BURDEN OF PROOF ........................................................ 2
`
`IV. BACKGROUND OF THE ‘652 PATENT .................................................... 3
`
`A. Network-Enabled Electronic Device .................................................... 4
`
`B.
`
`Receiving a Playlist Assigned to the Electronic Device and
`Obtaining the Audio Content for Playback .......................................... 5
`
`V.
`
`CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ........ 6
`
`A.
`
`B.
`
`Legal Standard ...................................................................................... 7
`
`A Person Having Ordinary Skill In The Art ........................................ 9
`
`1.
`
`Dr. Bove’s declaration does not delineate the level of
`“ordinary” skill in the art and is entitled to no weight ............. 10
`
`C.
`
`Construction of “Playlist” .................................................................. 12
`
`1.
`
`2.
`
`Plain and Ordinary Meaning of “Playlist” in the Media
`File Sharing Arts ...................................................................... 13
`
`The Specification of the ‘652 Patent Uses “Playlist”
`Consistent with Its Plain and Ordinary Meaning ..................... 17
`
`D.
`
`Construction of “assigned to the electronic device” .......................... 24
`
`VI. WHITE DOES NOT RENDER OBVIOUS THE CHALLENGED
`CLAIMS ....................................................................................................... 26
`
`A.
`
`Legal Standard .................................................................................... 26
`
`-i-
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`Page
`
`Dr. Bove’s Declaration does not delineate the level of
`“ordinary” skill in the art and is entitled to no weight ............. 28
`
`1.
`
`B.
`
`Summary of White ............................................................................. 29
`
`C. White does not render obvious independent claims 1, 21,
`and 42 ................................................................................................. 31
`
`1.
`
`2.
`
`3.
`
`No electronic device of White that plays a song receives
`information from a central system enabling the electronic
`device to obtain a song ............................................................. 33
`
`No electronic device of White obtains the songs from a
`remote source ........................................................................... 37
`
`No electronic device of White receives a playlist ................... 38
`
`D. White does not render obvious claims 13 and 34 .............................. 40
`
`VII. QURESHEY AND BERMAN DO NOT RENDER OBVIOUS THE
`CHALLENGED CLAIMS ........................................................................... 42
`
`A.
`
`B.
`
`C.
`
`Petitioner does not demonstrate that it would have been obvious
`to combine Qureshey and Berman ..................................................... 42
`
`Summary of Qureshey ........................................................................ 43
`
`Summary of Berman .......................................................................... 44
`
`D. Qureshey and Berman do not render obvious the challenged
`claims .................................................................................................. 47
`
`VIII. QURESHEY, BERMAN, AND LEEKE DO NOT RENDER
`OBVIOUS CLAIMS 11, 32, AND 53 .......................................................... 55
`
`IX. CONCLUSION ............................................................................................. 57
`
`
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`-ii-
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`

`IPR2013-00594
`U.S. Patent 8,050,652
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308 (Fed. Cir. 1999) ........................ 29, 42
`
`Page(s)
`
`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) .......................................................... 7
`
`In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999) .................................................. 7, 22
`
`Environmental Designs Ltd v. Union Oil, 713 F.2d 693 (Fed. Cir. 1983) .............. 12
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ....................................................... 29
`
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902 (Fed.
`Cir. 1988) ............................................................................................................ 27
`
`Intellicall Inc. v. Phonometrics, Inc., 952 F.2d 1384 (Fed. Cir. 1992) ............... 8, 18
`
`In Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183, Paper
`No. 12 at 9 (July 31, 2013) ................................................................................. 27
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745, *58 ...... 27
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 26-29
`
`Motorola Mobility LLC, et al. v. Arendi S.A.R.L., IPR2014-00203, Paper No.
`10 (June 5, 2014) ................................................................................................ 28
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 27
`
`In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992) ........................................................... 2
`
`On-line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133
`(Fed. Cir. 2004) ............................................................................................... 9, 25
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ..................................... 8, 23
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) ....................................... 8
`
`Superguide Corp. v. DirectTV Enters, 358 F.3d 870 (Fed. Cir. 2004) ...................... 8
`
`-iii-
`
`

`

`Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313 (Fed. Cir.
`2002) ..................................................................................................................... 8
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`Page(s)
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 8
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 26
`
`Wowza Media Systems, LLC et al. v. Adobe Systems, Inc., IPR2013-00054,
`Paper No. 12 (Apr. 8, 2013)................................................................................ 28
`
`STATUTES
`
`35 U.S.C. § 103(a) ............................................................................................. 28, 42
`
`35 U.S.C. § 311-319................................................................................................... 1
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 2
`
`35 U.S.C. § 316(e) ..................................................................................................... 2
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.104(b) ................................................................................................ 2
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`77 Fed. Reg. 48,756 ................................................................................................... 7
`
`MPEP § 2111 ............................................................................................. 2, 7, 12, 23
`
`MPEP § 2141 ..................................................................................................... 10, 26
`
`MPEP § 2142 ............................................................................................................. 2
`
`-iv-
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`

`IPR2013-00594
`U.S. Patent 8,050,652
`
`Exhibit #
`
`2003
`
`2003 [sic]
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`
`
`
`
`UPDATED TABLE OF EXHIBITS
`
`Exhibit Description
`
`First Amended Complaint in Black Hills Media, LLC
`v. Yamaha Corp. of America, D. Del. 1:12-cv-00635.
`
`Declaration of Thomas Engellenner in Support of
`Motion for Admission Pro Hac Vice
`
`First Amended Complaint in Black Hills Media, LLC
`v. Pioneer Corp., et al., D. Del. 1:12-cv-00634.
`
`Black Hills Media Technology Tutorial Presented to
`Court at Scheduling Conference on November 12,
`2013, in in Black Hills Media, LLC v. Yamaha Corp.
`of America, C.D. Ca. 2:13-cv-06054 and Black Hills
`Media, LLC v. Pioneer Corp., et al., C.D. Ca. 2:13-
`cv-05980.
`
`Transcript of the November 12, 2013, Scheduling
`Conference in Black Hills Media, LLC v. Yamaha
`Corp. of America, C.D. Ca. 2:13-cv-06054 and Black
`Hills Media, LLC v. Pioneer Corp., et al., C.D. Ca.
`2:13-cv-05980.
`
`Pioneer’s Notice of Election Regarding Certain Inter
`Partes Reviews in Black Hills Media, LLC v. Pioneer
`Corp., et al., C.D. Ca. 2:13-cv-05980.
`
`Summons Returned Executed by Black Hills Media,
`LLC on Yamaha Corporation of America in Black
`Hills Media, LLC v. Yamaha Corp. of America, D.
`Del. 1:12-cv-00635.
`
`Summons Returned Executed by Black Hills Media,
`LLC on Pioneer Electronics (USA) Inc. in Black Hills
`Media, LLC v. Pioneer Corp., et al., D. Del. 1:12-cv-
`00634.
`
`-v-
`
`

`

`
`
`UPDATED TABLE OF EXHIBITS (CONTINUED)
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`Previously filed (continued)
`
`Exhibit Description
`
`Summons Returned Executed by Black Hills Media,
`LLC on Pioneer Corporation in Black Hills Media,
`LLC v. Pioneer Corp., et al., D. Del. 1:12-cv-00634.
`
`Exhibit #
`
`2010
`
`New
`
`Exhibit Description
`
`Exhibit #
`
`Declaration of Ivan Zatkovich
`
`TerraTec M3PO High Quality Audio
`Decoder Manual (May 18, 2000)
`
`Siren Juken Operating Manual (2000)
`
`Microsoft Windows Media Player 7 Handbook, Ch. 2
`(October 4, 2000)
`
`Bove Deposition Transcript and Exhibits, May 30,
`2014
`
`Bove Deposition Transcript and Exhibits, May 29,
`2014
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`
`
`-vi-
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`

`
`
`PATENT OWNER RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`I.
`
`INTRODUCTION
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`Pursuant to 37 C.F.R. § 42.120, the Patent Owner, Black Hills Media, LLC,
`
`(“Black Hills”) hereby submits this Response to the Petition seeking inter partes
`
`review of U.S. Patent No. 8,050,652 (the ‘652 Patent), and to the grounds for
`
`which a trial was instituted in the Institution Decision dated March 20, 2014
`
`(“Institution Decision”). This filing is timely under 35 U.S.C. §311-319 and 37
`
`C.F.R. 42.120 because it was filed by June 13, 2014, in accordance with the
`
`parties’ joint notice of stipulation to amend the scheduling order. (Paper No. 24).
`
`II.
`
`STATEMENT OF RELIEF REQUESTED
`
`The Institution Decision instituted a trial only as to the alleged obviousness
`
`of claims 1-4, 6, 7, 13, 21, 22, 24, 25, 27, 28, 34, 42-45, 47, and 48 over U.S.
`
`Patent No. 7,187,947 of White (Ex. 1014; “White”), obviousness of claims 1-4, 6-
`
`8, 10, 13, 21, 22, 24-29, 31, 42-45, 47-50, and 52 over PCT Pub. No. WO99/38266
`
`of Qureshey (Ex. 1011, “Qureshey”) and U.S. Patent No. 6,502,194 of Berman
`
`(Ex. 1012, “Berman”), and obviousness of claims 11, 32, 53 over Qureshey,
`
`Berman, and U.S. Patent No. 6,587,127 of Leeke (Ex. 1010, “Leeke”).
`
`Patent Owner respectfully requests that the Board find that: claims 1-4, 6, 7,
`
`13, 21, 22, 24, 25, 27, 28, 34, 42-45, 47, and 48 are not invalidated as obvious over
`
`White; claims 1-4, 6-8, 10, 13, 21, 22, 24-29, 31, 42-45, 47-50, and 52 are not
`
`1
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`

`

`
`invalidated as obvious over Qureshey and Berman; and that claims 11, 32, 53 are
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`not invalidated as obvious over Qureshey, Berman, and Leeke. As detailed below,
`
`the Petitioner has failed to show by a preponderance of the evidence that any of the
`
`challenged claims for which the petition was granted.
`
`III. PETITIONER’S BURDEN OF PROOF
`“[T]he petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). The
`
`legal standard of “a preponderance of evidence” requires the evidence to be more
`
`convincing than the evidence which is offered in opposition to it. MPEP § 2142.
`
`The ultimate determination of patentability is based on the entire record, by a
`
`preponderance of evidence, with due consideration to the persuasiveness of the
`
`arguments and any secondary evidence. In re Oetiker, 977 F.2d at 1445.
`
`To prove unpatentability, the Petitioner is required to file a petition that must
`
`identify with particularity: 1) the statutory grounds on which the challenge to each
`
`claim is based, and 2) evidence that supports the grounds for the challenge to each
`
`claim, including “such other information as the Director may require by
`
`regulation.” 35 U.S.C. § 312(a)(3). Consistent with these statutory requirements,
`
`Rule 42.104(b) requires that the petition must: 1) “specify where each element of
`
`the claim is found in the prior art patents or printed publications relied upon”; and
`
`2) provide “the relevance of the evidence to the challenge raised.”
`
`2
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`

`

`
`IV. BACKGROUND OF THE ‘652 PATENT
`In 2000, when the provisional application disclosing the subject matter that
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`was ultimately claimed in the ‘652 Patent was filed, the industry was primarily
`
`focused on the significance of audio content in digital content distribution systems.
`
`By way of example, audio player devices were developed to have large amounts of
`
`storage (e.g., personal digital assistants (PDAs)) that enabled a user to aggregate
`
`personal content on their own local player device. Other products at the time were
`
`instead focused on aggregating audio content centrally such that a user’s player
`
`device could receive for playback centrally-stored audio content selected by a user
`
`on that user’s player device. (Zatkovich Decl. Ex. 2011, ¶¶30-31).
`
`The ‘652 Patent is generally directed to methods and systems that provide a
`
`user with access to audio content from a variety of remote sources, e.g., networked
`
`remote sources or web sites (Ex. 1001, Abstract and 2:16-20,58-63), and one of the
`
`more significant innovations described and claimed in the ‘652 Patent is its focus
`
`on the role of the playlist (as opposed to the audio content itself) in the
`
`management of audio content. (Zatkovich Decl. Ex. 2011, ¶31). Specifically, the
`
`‘652 Patent provides that the receipt of an assigned playlist by a network-enabled
`
`electronic device allows the playlist-receiving device to obtain and play the audio
`
`content indicated by the playlist, for example, to “provide[] people who are or are
`
`not comfortable with computers a way of taking music from various sources and
`
`3
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`

`
`putting it into one place for listening pleasure.” (Ex. 1001, 3:20-24). Another core
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`innovation of the ‘652 Patent is the notion of a dual mode device that not only has
`
`the ability to have a playlist assigned thereto, but also has the ability to receive
`
`Internet radio streams. (Ex. 1001, Figures 1-2, 7:28-67, 8:1-57).
`
`A. Network-Enabled Electronic Device
`In an exemplary embodiment of the ‘652 Patent, a network-enabled audio
`
`device is provided that allows a user to store files, to play standard audio CDs, to
`
`play MP3 encoded CDs, to record songs from CDs, to receive digitized radio
`
`broadcasts over the World Wide Web (Web), and to receive assignments of
`
`playlists of songs from other network-enabled audio devices. (Ex. 1001, 2:58-63).
`
`Figure 11 of the ‘652 Patent, which is reproduced herein, shows one
`
`embodiment of a computing environment for a network-enabled audio device. The
`
`network includes network-enabled
`
`electronic ‘Device A’ (1108), network-
`
`enabled electronic ‘Device B’ (1110), and
`
`personal computer (1106). These
`
`electronic devices interact with a server
`
`(1104) “through the network 1102 (such
`
`as the Internet).” (Ex. 1001, 16:56-60).
`
`4
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`

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`IPR2013-00594
`U.S. Patent 8,050,652
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`B. Receiving a Playlist Assigned to the Electronic Device and
`Obtaining the Audio Content for Playback
`
`The electronic devices (e.g., devices (1108) and (1110)) can receive playlists
`
`over a network (e.g., the Internet or a local home network), and can retrieve
`
`content indicated by the playlists through the network connection. (Ex. 1001,
`
`30:19-26). For example, the ‘652 Patent describes a process that allows a user
`
`logged into a central server (which may authorize the user based on a password) to
`
`assign a centrally-managed playlist, which identifies a plurality of songs
`
`aggregated from one or more remote sources, to a local electronic device. (Ex.
`
`1001, 23:35-45 and 24:8-12). Alternatively, the ‘652 Patent provides that playlists
`
`can be assigned to one or more playback devices when those devices connect to the
`
`IPAN Server, for example. (Ex. 1001, 25:53-58; Zatkovich Decl. Ex. 2011, ¶45).
`
`A copy of the playlist can then be transmitted from the server to the device, such
`
`that the playlist-receiving device takes control to obtain audio content indicated by
`
`the playlist from the one or more remote sources and can play the songs identified
`
`by the playlist. (Ex. 1001, Figures 19B-19C and 27:47-30:18; Zatkovich Decl. Ex.
`
`2011, ¶31). When an electronic device obtains and plays back the audio content
`
`corresponding to a song within a playlist, the audio content can be streamed to, or
`
`downloaded by, the electronic device. (Zatkovich Decl. Ex. 2011, ¶48; Ex. 1001,
`
`21:65-22:4). In some embodiments, the electronic device does not include local
`
`5
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`

`

`
`storage and therefore can only stream the audio content corresponding to the songs
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`IPR2013-00594
`U.S. Patent 8,050,652
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`of a playlist from a remote source. (Ex. 1001, 3:57-58; Zatkovich Decl. Ex. 2011,
`
`¶48).
`
`The ‘652 Patent indicates that three distinct pieces of information are
`
`received or obtained by the electronic device in order to play songs in an assigned
`
`playlist: i) a playlist identifying a plurality of media items (e.g., by song title) (Ex.
`
`1001, 4:29-30 and 22:48-50); ii) information enabling the electronic device to
`
`obtain the media items (e.g., a location or source from which a song identified in a
`
`playlist may be obtained) (Ex. 1001, 4:30-31 and 22:48-50); and iii) the media
`
`items themselves (e.g., an audio file to be streamed or downloaded) (Ex. 1001,
`
`4:32-33, 21:65-22:4, and 22:50-54). (Zatkovich Decl. Ex. 2011, ¶32). Though
`
`these three pieces of information are distinct and can be received independently
`
`from one another (see, e.g., Ex. 1001, 4:50-5:3), the ‘652 Patent also describes
`
`embodiments in which the information enabling the electronic device to obtain the
`
`song is received together with the information identifying the songs (see, e.g., Ex.
`
`1001, 21:62-65 and 22:48-50). (Zatkovich Decl. Ex. 2011, ¶33).
`
`V. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`Each of independent claims 1, 21, and 42 recites a method or device
`
`involving a “playlist assigned to the electronic device. . ., the playlist identifying a
`
`6
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`

`

`
`plurality of songs. . . .” Below, the Patent Owner submits constructions for the
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`terms “playlist” and “assigned to the electronic device.”
`
`The construction of these various claim terms are supported by the plain
`
`language of the claims and the intrinsic evidence provided by the specification, as
`
`well as by the declaration testimony of Ivan Zatkovich, an expert in the relevant art
`
`and well qualified to testify as to the broadest reasonable interpretation of the
`
`claims from the vantage point of one of ordinary skill in the art at the time of the
`
`invention in light of the ‘652 Patent.
`
`A. Legal Standard
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`“The broadest reasonable interpretation of the claims must also be consistent
`
`with the interpretation that those skilled in the art would reach. In re Cortright,
`
`165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999). . . . [T]he focus of
`
`the inquiry regarding the meaning of a claim should be what would be reasonable
`
`from the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc.,
`
`603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364 (Fed. Cir.
`
`2007).” Manual of Patent Examining Procedure (MPEP) § 2111.
`
`7
`
`

`

`Claim terms are given their ordinary and customary meaning, as would be
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`
`
`
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “The ordinary
`
`and customary meaning of a term may be evidenced by a variety of sources,
`
`including ‘the words of the claims themselves, the remainder of the specification,
`
`the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” See MPEP §
`
`2111 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en
`
`banc)). “Where an inventor chooses to be his own lexicographer and to give terms
`
`uncommon meanings, he must set out his uncommon definition in some manner
`
`within the patent disclosure.” Intellicall, Inc. v. Phonometrics, Inc., 952 F. 2d
`
`1384, 1388 (Fed. Cir. 1992). “In the absence of an express intent to impart a novel
`
`meaning to claim terms, an inventor's claim terms take on their ordinary meaning.”
`
`Teleflex, Inc. v. Ficosa North America Corp., 299 F. 3d 1313,1325 (Fed. Cir.
`
`2002).
`
`As noted in Superguide Corp., v. DirectTV Enters, 358 F.3d 870, 875 (Fed.
`
`Cir. 2004), it is improper for a claim construction to read out a written embodiment
`
`of the invention. Similarly, it would be improper to limit the construction of the
`
`term “assigned to” by requiring that the playlist be directed to “a particular device
`
`selected by a user” in light of the concrete embodiments discussed above.”. See
`
`8
`
`

`

`
`also On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133,
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`1138 (Fed. Cir. 2004) (“[A] claim interpretation that excludes a preferred
`
`embodiment from the scope of the claim is rarely, if ever, correct.”
`
`B. A Person Having Ordinary Skill In The Art
`Petitioner has proposed an open-ended definition for a person having
`
`ordinary skill in the art (also referred to as “PHOSITA”) as having “at least a
`
`bachelor’s degree in computer science or electrical engineering and at least one
`
`year of practical experience with networked multimedia.” (Bove Decl. Ex. 1002,
`
`¶8, emphasis added). Petitioner’s definition is improper because it would include
`
`persons who are overqualified to be considered of “ordinary skill in the art.” For
`
`example, someone with a PhD and 40 years of practical experience in industry
`
`would far exceed the level of “ordinary skill” of someone with a bachelor’s degree
`
`and one year of experience. Patent Owner proposed a close-ended definition.
`
`(Paper No. 10, p. 16). The Institution Decision, however, reflects no finding with
`
`regard to the level of skill of the person of ordinary skill in the art.
`
`Patent Owner submits that the Petitioner’s definition of PHOSITA should be
`
`constrained to exclude those of “extraordinary” skill. Specifically, Patent Owner
`
`proposes that the definition of PHOSITA should be a close-ended definition as
`
`follows: “a Bachelor’s degree in computer science or electrical engineering or its
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`equivalent and 1-2 years of practical experience with media file sharing.”
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`(Zatkovich Decl. Ex. 2011, ¶26). Patent Owner’s proposed definition is supported
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`U.S. Patent 8,050,652
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`by the declaration of Ivan Zatkovich, and takes into account various factors to be
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`considered in determining this hypothetical person such as the type of problems
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`encountered in the art at the time of the invention, the sophistication of the
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`technology, and the education level and professional capabilities of active workers
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`in the field. MPEP §2141(II)(C); (Zatkovich Decl. Ex. 2011, ¶27).
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`1.
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`Dr. Bove’s declaration does not delineate the level of
`“ordinary” skill in the art and is entitled to no weight
`During his deposition,1 Dr. Bove admitted that his definition of PHOSITA
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`does not present a ceiling as to the level of ordinary skill in the art:
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`Q: But you would agree that at some point there needs to be a closed end
`if you're going to distinguish between someone of ordinary skill and
`someone of extraordinary skill?
`
`It might have to be judged on a case-by-case basis. There may be
`A.
`people in the field for 30 years who are still ordinary, but -- so that's the
`other complication. You know, I'm really looking at this from the
`perspective of saying what are the minimum qualifications one needs to
`have in order to achieve a particular understanding of these issues, and not
`
`
`1 A combined cross-examination deposition of Petitioner’s expert for IPR2013-
`00593 and IPR2013-00594 was taken on May 30, 2014. (Ex. 2015). A deposition
`of Dr. Bove in connection with cases IPR2013-00597 and IPR2013-00598
`involving the same parties was taken on May 29, 2014. (Ex. 2016).
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`opining on what are the maximum qualifications one should have while still
`retaining that understanding. Because I think that's a very difficult
`judgment to make.
`
`Q. But isn't it necessary to define that person to make the difficult
`judgement [sic] of what is obvious? . . .
`
`[A]: Well, as I've said, I understand this is a threshold, that there is a
`threshold one crosses at which point one has sufficient understanding to
`appreciate the issues and to form what I would regard as a correct opinion
`about the issues.
`
`Q. But you have no opinion as to where the other threshold is, where
`someone crosses from ordinary to extraordinary?
`
`A.
`
`I have no such opinion.
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`(Bove Tr. Ex. 2015, at 50:12-51:22, emphasis added).
`
`Dr. Bove’s stated belief that the determination of the PHOSITA reflects
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`when a person has “sufficient understanding to appreciate the issues and to form
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`what I would regard as a correct opinion about the issues” is misguided. The
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`PHOSITA inquiry is not “whether” one understands the issues sufficiently to form
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`a “correct” opinion, but instead what one of ordinary skill in the art understands,
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`regardless of whether that understanding or opinion is correct according to a
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`person purported to be of “extraordinary” skill in the art.
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`Indeed, Dr. Bove’s indication that he “ha[s] no such opinion” on the
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`difference between an “ordinary” and an “extraordinary” level of skill implicates
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`the entirety of the analysis contained within the Bove Report and relied upon in the
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`IPR2013-00594
`U.S. Patent 8,050,652
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`Petition as being contrary to the black letter law of claim construction,2 as well as
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`that of anticipation and obviousness. A determination of the person having
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`“ordinary” skill does not merely provide a floor (i.e., to exclude “laymen”), but
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`also a ceiling so as to exclude the “geniuses” in the relevant art when applying the
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`relevant legal standards to the challenged claims. Environmental Designs Ltd v.
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`Union Oil, 713 F.2d 693 (Fed. Cir. 1983).
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`Because Dr. Bove concedes that his opinions do not distinguish between the
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`level of “ordinary” and “extraordinary” skill, and thus, do not necessarily reflect
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`the understanding of the PHOSITA, the Bove Declaration should be entitled to no
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`weight.
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`C. Construction of “Playlist”
`Based on the record following the Patent Owner Preliminary Response, the
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`Board concluded in its Institution Decision that a “playlist” is “a list of audio files
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`or URLs of where the audio files were retrieved from.” (Paper No. 17, p. 12). The
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`Board also indicated that on the current record, the term “playlist” does not require
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`that the items are arranged to be played in a sequence. (Paper No. 17, p. 13).
`
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`2 See, e.g., Phillips v. AWH Corp., 415 F.3d at 1316 (claim construction is based on
`the specification “as it would be interpreted by one of ordinary skill in the art”)
`(emphasis added); see also MPEP § 2111.
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`Patent Owner respectfully requests reconsideration of the Board’s
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`
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`preliminary construction in light of the evidence submitted herewith as to the plain
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`and ordinary meaning of the term “playlist” to a person having ordinary skill in the
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`art, as well as the use of the term “playlist” in the ‘652 Patent consistent with this
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`meaning. Specifically, Patent Owner submits that the broadest reasonable
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`interpretation of “playlist” from the vantage point of one of ordinary skill in the art
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`at the time of the invention of the ‘652 Patent is “a list referencing media items
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`arranged to be played in a sequence.”
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`1.
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`Plain and Ordinary Meaning of “Playlist” in the Media File
`Sharing Arts
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`“Playlist” is a term that was generally understood in the media file sharing
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`arts at the time of the invention of the ‘652 Patent to mean a list referencing media
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`items arranged to be played in a sequence. (Zatkovich Decl. Ex. 2011, ¶57, 73).
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`This customary meaning is exemplified in the publications cited as Exhibits 2012-
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`2014, which were published around the time of the invention of the ‘652 Patent.
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`(Zatkovich Decl. Ex. 2011, ¶57-59, 74-76).
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`The TerraTec M3PO High Quality Audio Decoder Manual dated May 18,
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`2000 (“TerraTec Manual”), for example, provides that “[t]he playlist is a pre-
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`selected sequence of titles you wish the m3po to play.” (Zatkovich Decl. Ex. 2011,
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`¶57; Ex. 2012, p. 10). “In DJ mode, you can pre-select titles, which will then be
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`played in the sequence you selected them, basically, it is a mini-playlist (up to 10
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`IPR2013-00594
`U.S. Patent 8,050,652
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`titles), i.e. in case you need to go and get some more drinks, or are involved in a
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`chit-chat you wish would never end. . . . Playback of the selected song starts
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`automatically after the current one.” (Zatkovich Decl. Ex. 2011, ¶57; Ex. 2012, p.
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`20 (emphasis added).
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`Similarly, in describing the SIREN™ Jukebox, the operator’s manual
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`(published in 2000) indicates that “Siren always performs playback using the songs
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`and sequence displayed in the Current Playlist,” though “users can specify whether
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`the Current Playlist is generated using the original order, or with a random
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`order…[or] whether Current Playlist Playback occurs once, or is looped infinitely.”
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`(Zatkovich Decl. Ex. 2011, ¶57; Ex. 2013, p. 41, 43, emphasis added). In order to
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`playback music from a custom playlist, a user is instructed to “[s]elect the desired
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`playlist. The playlist’s songs are listed…Siren begins playing the first song in the
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`list and continues through the playlist.” (Zatkovich Decl. Ex. 2011, ¶57; Ex. 2013,
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`p. 45, emphasis added).
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`The Microsoft Windows Media™ Player 7 Handbook, published October 4,
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`2000, likewise provides that “[a] playlist is a convenient way to organize groups of
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`audio and video files. The term comes from the radio industry and refers to the list
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`of songs that a disc jockey plays on a particular radio program.” (Zatkovich Decl.
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`Ex. 2011, ¶57; Ex. 2014, p. 49, emphasis added). The Microsoft Handbook also
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`provides that selecting the “Repeat” button “