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
`
`
`Patent No. 8,050,652
`Issue Date: November 1, 2011
`Title: METHOD AND DEVICE FOR AN INTERNET RADIO CAPABLE OF
`OBTAINING PLAYLIST CONTENT FROM A CONTENT SERVER
`_______________
`
`Inter Partes Review No. IPR2013-00594
`____________________________________________________________
`
`PETITIONER YAMAHA CORPORATION OF AMERICA’S
`REPLY TO PATENT OWNER RESPONSE
`
`
`
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`la-1255288
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Yamaha Corporation of America
`Petitioner
`
`v.
`
`Black Hills Media, LLC
`Patent Owner
`
`
`Patent No. 8,050,652
`Issue Date: November 1, 2011
`Title: METHOD AND DEVICE FOR AN INTERNET RADIO CAPABLE OF
`OBTAINING PLAYLIST CONTENT FROM A CONTENT SERVER
`_______________
`
`Inter Partes Review No. IPR2013-00594
`____________________________________________________________
`
`PETITIONER YAMAHA CORPORATION OF AMERICA’S
`REPLY TO PATENT OWNER RESPONSE
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .................................................................................. ii
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`PETITIONER’S EXHIBIT LIST ........................................................................... iii
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`I.
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`INTRODUCTION .......................................................................................... 1
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`II.
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`REPLY TO PATENT OWNER’S ARGUMENTS ........................................ 3
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`A.
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`Claim Construction And Level Of Ordinary Skill ............................... 3
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`1.
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`2.
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`“Playlist” .................................................................................... 4
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`“Playlist Assigned to the Electronic Device” .......................... 10
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`B.
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`The Claims Are Obvious In View Of Qureshey And Berman,
`Or In View Of Qureshey, Berman, And Leeke .................................. 10
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`1.
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`2.
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`Berman Receives a Playlist for a Particular Music
`Category ................................................................................... 11
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`The Combinations of (a) Qureshey and Berman and (b)
`Qureshey, Berman and Leeke Render the Claims
`Obvious .................................................................................... 13
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`C.
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`The Claims Are Obvious In View Of White ...................................... 14
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`III. CONCLUSION ............................................................................................. 15
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Apple Inc. v. Achates Reference Publ’g, Inc.,
`IPR2013-00081, 2014 Pat. App. LEXIS 3470 (P.T.A.B. Jun. 2, 2014) ..................3
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`Ecolab, Inc. v. Envirochem, Inc.,
`264 F.3d 1358 (Fed. Cir. 2001) .........................................................................................7
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`Hauser, Inc. v. Hawk Measurement Sys. PTY Ltd.,
`122 F.3d 1040 (Fed. Cir. 1997) .........................................................................................4
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00010, 2014 Pat. App. LEXIS 1189 (P.T.A.B. Feb. 24, 2014) ............3
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .........................................................................................3
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc).......................................................................5
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`Schwing Gmbh v. Putzmeister Aktiengesellschaft & Putzmeister,
`305 F.3d 1318 (Fed. Cir. 2002) .........................................................................................7
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`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d. 1352 (Fed. Cir. 2011) ........................................................................................3
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.23 ........................................................................................................................1
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 8,050,652*
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`Exhibit Description
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`Exhibit #
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`U.S. Patent No. 8,050,652 to Qureshey et al.
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`Declaration of Dr. V. Michael Bove, Jr.
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`U.S. Patent Application No. 09/805,470
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`U.S. Provisional Patent Application No. 60/072,127
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`U.S. Patent Application No. 09/096,703
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`U.S. Provisional Patent Application No. 60/246,842
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`Office Action dated May 23, 2011
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`Patent Owner ITC Claim Chart re Toshiba
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`Office Action dated February 2, 2011
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`U.S. Patent No. 6,587,127 to Leeke et al.
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`PCT Publication WO 99/38266 to Qureshey et al.
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`U.S. Patent No. 6,502,194 to Berman et al.
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`Lansonic DAS-750 Reference Materials
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`U.S. Patent No. 7,187,947 to White et al.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`Exhibit Description
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`Transcript of July 29, 2014 Deposition of Ivan Zatkovich (“Zatkovich
`Dep.”)***
`Additional excerpts of Microsoft Windows Media Player 7 Handbook
`that were not submitted by Patent Owner as part of Exhibit 2014, but
`which were marked as Exhibit 7 at Zatkovich Deposition
`U.S. Patent Appl. No. US2004/0267899 (filed by assignee Microsoft
`Corp. on June 27, 2003)
`
`U.S. Patent No. 6,728,729 (filed by assignee Apple Computer Inc. on
`April 25, 2003)
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`File history of U.S. Patent No. 6,502,194 to Berman (including April
`16, 1999 application with original claim 15 on page 40)
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`Declaration of Ivan Zatkovich, filed as Exhibit 2013 in CBM2013-
`00004 on June 5, 2013, with discussion of POSITA in ¶ 8
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`“Nomad Jukebox User Guide On-line Version” (Copyright © 2000
`by Creative Technology Ltd.)
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`Complete Introduction and Chapter 1 of Microsoft Windows Media
`Player 7 Handbook (see Ex. 1016)
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`Exhibit #
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`1015**
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`*Petitioner’s Exhibits 1001 – 1014 were previously filed and are listed again here
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`based on 37 C.F.R. § 42.63.
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`**Petitioner’s Exhibits 1015 – 1022 are newly filed.
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`***A combined cross-examination deposition of Patent Owner’s expert declarant
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`for both this proceeding and IPR2013-00593 was taken July 29, 2014.
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`Petitioner Yamaha Corporation of America (“Petitioner”) provides this
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`Reply under 37 C.F.R. § 42.23 to the June 13, 2014 “Patent Owner Response”
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`(Paper No. 27; “Response”). With this Reply and its Petition filed on September
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`18, 2013 (Paper No. 1), Petitioner requests relief through the cancellation of claims
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`1-4, 6-8, 10, 11, 13, 21, 22, 24-29, 31, 32, 34, 42-45, 47-50, 52, and 53 of U.S.
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`Patent No. 8,050,652 (“the '652 patent”; Ex. 1001).
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`I.
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`INTRODUCTION
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`The Board instituted inter partes review based upon (1) White (Ex. 1014),
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`(2) Qureshey (Ex. 1011) in view of Berman (Ex. 1012), and (3) Qureshey in view
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`of Berman and Leeke (Ex. 1010). (See Decision (Paper No. 17) at 28.) In its
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`Response, Patent Owner seeks to overcome the instituted grounds by arguing claim
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`construction and the content of the prior art references. Both arguments are wrong.
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`First, the Patent Owner asserts a claim construction for “playlist” that
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`requires items to be “arranged to be played in a sequence.” This is not the broadest
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`construction consistent with the specification. It is also not reasonable. The claim
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`language itself defines the broadest reasonable construction, and the specification
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`supports it. Patent Owner’s reliance on extrinsic evidence to support its misguided
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`argument to narrow the meaning of “playlist” is belied by that same evidence.
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`Patent Owner’s arguments with respect to Berman are essentially premised
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`upon its narrow construction and are irrelevant under the proper construction.
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`Moreover, the Patent Owner, through its expert Ivan Zatkovich, has ignored
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`the clear disclosures of both Berman and White and mischaracterized their content.
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`With respect to Berman in particular, Mr. Zatkovich repeatedly asserts that Berman
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`does not disclose individual playlists for different categories of songs, but instead
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`discloses only a single “song list” that is a catalog of all songs available to the user.
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`(Zatkovich Decl. (Ex. 2011) ¶¶ 97, 111, 113 and 115.) This assertion is flatly
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`contradicted by Berman, which discloses at 6:50-7:38 that song lists relate to
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`specifically selected music categories and not to the entire catalog of available
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`songs. In fact, this is explicitly claimed in Berman, which claims “selecting an
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`available music category” and “sending a current song list version for the selected
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`music category to a network server and receiving an updated song list if the current
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`song list is in need of updating[.]” (Berman, claim 15 (emphasis added).) The
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`Patent Owner’s characterization of the song list in Berman is wrong, and all of its
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`arguments are based upon its mischaracterization.
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`With respect to White, the Patent Owner and Mr. Zatkovich ignore the
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`repeated disclosure of White that audio information communicated to an electronic
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`device may be represented by a network location such as a URL rather than audio
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`files such as wave or MP3 files; the Patent Owner’s arguments are based upon this
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`studied ignorance. The Patent Owner also ignores the Qureshey reference, and its
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`assertions regarding Leeke are meritless as well.
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`II. REPLY TO PATENT OWNER’S ARGUMENTS
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`A. Claim Construction And Level Of Ordinary Skill
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`The Patent Owner takes issue with Dr. Bove’s assertion that one of ordinary
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`skill in the art would have “at least” a certain level of experience. (Response at 9-
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`12.) However, the Federal Circuit has approved the use of “at least” descriptions
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`in numerous cases. See, e.g., Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d. 1352,
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`1358 (Fed. Cir. 2011); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
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`1332 (Fed. Cir. 2009). The Board similarly makes determinations regarding the
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`level of skill in the art without delineating an upper limit on experience. See, e.g.,
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, 2014 Pat.
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`App. LEXIS 1189 (P.T.A.B. Feb. 24, 2014); Apple Inc. v. Achates Reference
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`Publ’g, Inc., IPR2013-00081, 2014 Pat. App. LEXIS 3470 (P.T.A.B. Jun. 2, 2014).
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`In fact, in another matter before the Board (CBM2013-00004), Mr.
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`Zatkovich applied a definition of a “POSITA” possessing “at least” a certain
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`degree and “at least one to two years of experience.” (Ex. 1020, ¶ 8 (emphasis
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`added).) Here, Dr. Bove’s opinions were similarly proffered from the perspective
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`of a person with “at least one year of practical experience” (Ex. 1002, ¶ 8), which
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`overlaps Mr. Zatkovich’s proposal of “1-2 years of experience” (Ex. 2011, ¶ 26).
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`Tellingly, Patent Owner cites no case disregarding an expert opinion
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`premised on an “at least” formulation, and the Federal Circuit has rejected the
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`notion that a “person of exceptional skill in the art would be disqualified from
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`testifying as an expert because not ordinary enough.” Endress + Hauser, Inc. v.
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`Hawk Measurement Sys. PTY Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997).
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`1.
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`“Playlist”
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`The Board construed “playlist” to mean “a list of audio files or URLs of
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`where the audio files were retrieved from.” (Decision at 11-12.) The Patent
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`Owner asserts that this term should be given the narrow construction of “a list
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`referencing media items arranged to be played in a sequence.” (Response at 12-
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`24.) Petitioner did not propose a separate construction for this term in the Petition.
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`It is now submitted that the broadest reasonable construction of “playlist”
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`consistent with the specification is “a list of audio files,” i.e., the construction
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`provided by the Board, but without reference to URLs.
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`The claim language itself informs the broadest reasonable construction of
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`“playlist.” Claims 1, 21 and 42 specifically recite “the playlist identifying a
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`plurality of songs.” This recitation does not indicate that the songs “are arranged
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`to be played in a sequence.” It simply and broadly states that it identifies songs.
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`As held in Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc),
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`“the claims themselves provide substantial guidance as to the meaning of particular
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`claim terms.” A construction of a “playlist” as “a list of audio files” is fully
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`consistent both with this broad claim language.
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`This construction corresponds to the Board’s construction, with the
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`exception that it does not include reference to URLs. But this stems from the
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`claim language as well. In particular, as noted by the Patent Owner, the claims
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`distinguish between the playlists, information enabling the electronic device to
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`obtain the song (e.g., URLs), and the song itself. (Response at 22-23.) More
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`particularly, the claims separately recite receiving a playlist and receiving
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`information enabling the device to obtain songs. The first receiving is therefore
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`directed to the list identifying the songs, whereas the second receiving is directed
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`to other information, such as URLs.
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`In fact, the statement in the specification relied upon by the Board provides
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`that a playlist is a list of audio files “and” associated URLs. ('652 patent at 21:63-
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`65.) However, the '652 specification is not consistent in this regard, repeatedly
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`referring to playlists separately from URLs just prior to the cited statement. (See
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`id. at 21:45-46 (“a playlist 1528, and associated URL’s”), 21:49 (“a playlist 1528,
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`and associated URL’s”), and 21:51-52 (“a playlist 1534, and associated URL’s”).)
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`Moreover, FIG. 15 illustrates each playlist 1528, 1530, and 1534 as a small box
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`distinct from “SONGS AND ASSOCIATED URL’S.” In view of the language of
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`the claims which recite receiving “information enabling…” separate from
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`receiving a playlist, the broadest reasonable construction of “playlist” consistent
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`with both the claim language and the '652 specification is “a list of audio files.”
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`The Patent Owner’s proposed construction of “playlist” is clearly narrower
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`than the construction set forth above by Petitioner, and is therefore not the
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`broadest reasonable construction consistent with the specification. This alone
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`indicates that Petitioner’s construction is appropriate, even if the Patent Owner’s
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`construction were to be considered reasonable, which it is most certainly not.
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`The term “playlist” is a noun that denotes a thing, i.e., a structure which is a
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`list of data such as song titles. The Patent Owner is improperly attempting to inject
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`a functional requirement into something that is simply a list, by asserting that it
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`references media items “arranged to be played in a sequence.” However, the list
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`does not control how items contained in it are played. Rather, as pointed out by
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`Petitioner’s expert Dr. Bove, a player determines how songs in the list are played.
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`(See, e.g., Response at 18-19, quoting Dr. Bove (“Playing in an order is a function
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`of the player software.”).) In the 2000 timeframe, a single song or several songs
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`could be selected from a list and played. (See, e.g., “Nomad Jukebox User Guide
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`On-line Version” (Ex. 1021) at 2, 9, 11-14.)
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`During the deposition of Patent Owner’s expert (“Zatkovich Dep.”; Ex.
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`1015), he repeatedly referenced the “functionality” or “purpose” or “intent” of a
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`playlist (see, e.g., Zatkovich Dep. at 32:17-24, 34:6-9, 36:18-23, 37:19-20). The
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`“intent” or “purpose” of a how a playlist is used is irrelevant to construing what a
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`playlist is. The claims contain no recitation whatsoever about actually playing
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`songs in the playlist, in an order or otherwise. Again, Patent Owner is attempting
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`to import a functional limitation solely through construction of a recited thing.
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`This is improper. See, e.g., Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367
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`(Fed. Cir. 2001) (“Where the function is not recited in the claim itself by the
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`patentee, we do not import such a limitation.”); Schwing Gmbh v. Putzmeister
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`Aktiengesellschaft & Putzmeister, 305 F.3d 1318, 1323 (Fed. Cir. 2002) (“Where a
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`claim uses clear structural language, it is generally improper to interpret it as
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`having functional requirements.”).
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`The Patent Owner’s resort to extrinsic evidence does not support its position
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`either; in fact, it further refutes it. For example, the Patent Owner cites to excerpts
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`of the Microsoft Windows Media Player 7 Handbook (Ex. 2014) in its Response.
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`However, as noted at page 40, the user can create a new playlist and put only one
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`item in it. (Ex. 2014 at 40.) Thus, a playlist can be formed of just a single item.
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`This is completely contrary to the Patent Owner’s arguments that a playlist must
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`reference items (plural) arranged to be played in a sequence. Of course, a single
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`item cannot be played in a sequence. Indeed, Mr. Zatkovich confirmed at
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`deposition that a playlist cannot be formed by a single song. (Zatkovich Dep. at
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`38:22-39:6.) Thus, the Patent Owner seeks to use only part of the description of
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`“playlist” set forth by Microsoft, while conveniently ignoring broader statements
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`that are inconsistent with its restrictive construction.
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`In addition, the Windows Media 7 Handbook indicates that the media items
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`that can be managed in the Media Library are not limited to audio, but also include
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`video, and specifically movies. The excerpts submitted by the Patent Owner did
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`not include the “Introduction” from the Microsoft Handbook, which states that
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`“Windows Media Player now includes Media Library, which lets you create
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`multiple playlists to organize all your audio and video files.” (Ex. 1016 at xi (bold
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`in original, italics added), marked as Exhibit 7 at the Zatkovich deposition.) Patent
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`Owner also omitted page 3 from Chapter 1, entitled “Getting Started,” where it is
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`stated that playlists are used to organize media, including movies and music:
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`… Windows Media Player has a media library that can help you
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`organize all of your media selections. You can create specific
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`playlists that combine your songs and movies however you like. Keep
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`all your classical music in one playlist and your jazz in another. …
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`(Ex. 1016 at 3 (emphasis added). See Ex. 1022 (complete Introduction and Ch. 1).)
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`When questioned about a playlist that includes five full length feature
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`movies, Mr. Zatkovich flatly stated that the “only purpose” of putting them in a
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`playlist is that they are intended to be played in sequence. (Zatkovich Dep. at
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`43:19-44:8.) He similarly stated that the “only purpose” of having a playlist
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`containing every Beethoven symphony and every Mozart opera is “so that you can
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`play them in a particular sequence.” (Id. at 44:9-45:4.) Mr. Zatkovich concluded
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`his incredible testimony on this topic as follows:
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`Q. Well, isn’t the suggestion here really that you have a library of
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`various media, and this just lets you create a sub library of all
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`classical music in one grouping?
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`A. No.
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`(Id. at 45:17-21.)
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`Notably, Mr. Zatkovich confirmed that the meaning of “playlist” has not
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`changed to the present day. (Id. at 34:13-35:10.) In a 2003 Microsoft patent
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`application (Appl. No. US2004/0267899; Ex. 1017), Microsoft itself indicated that
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`“playlist” is not as narrow as Patent Owner now asserts:
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`A typical media player (e.g., Windows Media Player®) employs a
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`“playlist.” A playlist is a listing of one or more references to one or
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`more media (e.g., video, audio, text, and/or animation data) segments.
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`The playlist may also include information about the media segment(s),
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`such as titles, authors, order of play, and the like.
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`(Ex. 1017 at [0002] (emphasis added).) Apple’s U.S. Patent No. 6,728,729 (Ex.
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`1018), also filed in 2003, defined “playlist” in a similarly unconstrained manner:
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`Playlists are collections of media that may or may not be in any
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`particular order. Users may choose to combine media by genre,
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`mood, artists, audience, or any other meaningful arrangement.
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`(Ex. 1018 at 5:9-12 (emphasis added).)
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`Thus, the Patent Owner’s proposed construction of “playlist” is certainly not
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`the broadest reasonable construction consistent with the '652 claims and
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`specification, and it is inconsistent with its plain and ordinary meaning. The Board
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`should therefore adopt the construction set forth by Petitioner above.
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`2.
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`“Playlist Assigned to the Electronic Device”
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`The Board construed the phrase “playlist assigned to the electronic device.”
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`In the Institution Decision, the Board addressed Patent Owner’s prior argument
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`regarding FIG. 17E, and observed that “even in this embodiment, the user selects
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`the particular device.” (Decision at 13.) Now, the Patent Owner cites to yet
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`another “embodiment” that it asserts supports its construction. (Response at 25,
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`citing '652 patent at 25:53-58.) However, this section contains no discussion
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`whatsoever about assigning playlists, although the '652 specification contains at
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`least 26 other references specifically discussing the assignment of playlists.
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`Moreover, although not disclosed by the Patent Owner, the section argued relates
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`to FIG. 17I; just as with FIG. 17E discussed by the Board, FIG. 17I also indicates
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`that a particular device (“Portable Player” “Diamond Rio PMP500”) is selected.
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`B.
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`The Claims Are Obvious In View Of Qureshey And Berman, Or
`In View Of Qureshey, Berman, And Leeke
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`Patent Owner’s arguments regarding Qureshey and Berman (Response at 43-
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`55) are essentially based upon its narrow construction of “playlist” and arguments
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`regarding Berman. After first mischaracterizing the disclosure of Berman by
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`asserting that the “Song List” of Berman is “a catalog of all available songs
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`contained on the audio material server(s) to which the user has rights” and that it is
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`this master song list that is synchronized and sent from the DUL to the player
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`(Response at 44), Patent Owner then argues that Berman does not receive a
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`“playlist” under the Patent Owner’s construction. (Response at 47-55.)
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`Importantly, the Patent Owner provides no argument regarding Berman under a
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`broader construction that does not include any “in a sequence” requirement.
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`1.
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`Berman Receives a Playlist for a Particular Music Category
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`The Patent Owner’s arguments about Berman are based upon a fundamental
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`mischaracterization of Berman. Patent Owner initially asserts that:
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`when the playback unit (100) is powered on, the DUL server (107)
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`synchronizes its Song List with the Song List maintained on the
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`playback unit (100).
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`(Response at 45, citing “Berman, 6:55-57.”) However, Berman at 6:55-57
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`indicates nothing about synchronization occurring at power on. Instead,
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`synchronization with a song list occurs after a music category has been selected,
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`and after a song list for the selected music category is sent to the server. (Berman,
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`6:64-7:6.) After receiving the selected song list, the DUL server checks for
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`updates and sends an updated song list back to the player. (Berman at 7:14-19.)
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`During his deposition, Mr. Zatkovich confirmed that synchronization does
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`not occur at power on, but instead after the user selects a music category at step
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`302. (Zatkovich Dep. at 53:13-55:8.) Despite this, Mr. Zatkovich continued to
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`maintain the fiction that there is only one song list in Berman and that it contains
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`the entire catalog of songs:
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`A. The song list that is transferred from the server contains the list,
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`the catalog of all available songs on that server, which the user
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`has no part in identifying. They subscribe to the service.
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`Whatever songs, hundreds or thousands of songs are available on
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`that DUL server, that’s what is transmitted down in the song list.
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`(Zatkovich Dep. at 60:10-17.)
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`Berman clearly describes that a song list is sent from the DUL server to the
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`player only after the user has selected a music category; the song list of Berman is
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`therefore a list for the selected category, and not a list of all songs. Due to Mr.
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`Zatkovich’s stubborn insistence otherwise, he was questioned further about
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`Berman, and specifically claim 15, which was part of Berman’s original
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`application (see Ex. 1019 at 40); this claim recites in pertinent part as follows:
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`15. A method of operating a playback apparatus that receives digital
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`audio material from a network server and provides it to a home audio
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`system for playback, comprising the steps of: [¶] selecting an
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`available music category …; [¶] sending a current song list version for
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`the selected music category to a network center and receiving an
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`updated song list if the current song list is in need of updating; ….
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`Berman, claim 15 (emphasis added).) When asked about this claim, Mr. Zatkovich
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`incredibly replied that “Berman only describes one song list version” and “doesn’t
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`describe a song list version for an artist or an album or a genre” and that “this
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`[claim 15] is in agreement with that.” (Zatkovich Dep. at 67:16-69:3.)
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`2.
`
`The Combinations of (a) Qureshey and Berman and (b)
`Qureshey, Berman and Leeke Render the Claims Obvious
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`Not only are the Patent Owner’s arguments regarding Berman based upon an
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`erroneous claim construction, they are based upon a complete mischaracterization
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`of the operation of Berman. Berman undeniably receives a playlist identifying a
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`plurality of songs. The first receiving operation is met. Once the playlist is
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`received, the user can select any or all of the songs in the received playlist for
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`playing. (See Berman at 11:48-49, 66-67.) Tracks that are selected are sent to the
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`DUL server and a network address such as a URL is obtained. (See id. at 7:32-41.)
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`Thus, the second receiving operation is also met. Using the received URLs, the
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`songs are obtained and played. (See id. at 7:41-44; Zatkovich Dep. at 63:16-64:4.)
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`Patent Owner does not provide any separate arguments regarding Qureshey
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`other than its arguments relating to Dr. Bove. (Response at 42-43.) It would have
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`been obvious to combine the teachings of Qureshey and Berman for the reasons set
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`forth in the Petition and noted by the Board. (Petition at 27-39; Decision at 26-27.)
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`With respect to Leeke, Patent Owner argues that the additional information
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`displayed does not come from a server but likely comes from the audio file itself or
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`local storage. (Response at 56.) In view of the fact that the operation described in
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`Leeke at 14:31-51 is “a current song being played by the station,” and includes a
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`purchase option, this assertion is meritless.
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`C. The Claims Are Obvious In View Of White
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`As with Berman, Patent Owner’s arguments regarding White rely upon
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`fundamental misstatements regarding the scope and content of the reference. In
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`particular, Patent Owner’s assertions are premised on Mr. Zatkovich’s statements
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`that only an audio file itself (e.g., MP3 audio) is sent to a playback device and that
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`“White does not disclose that URLs or any other information enabling an
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`electronic device (103/300) of White to obtain the songs are received by the
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`electronic device (103/300).” (Response at 34. See also id. at 35-39.)
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`The Patent Owner completely ignores White’s disclosure regarding what
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`constitutes “audio information.” White states at 4:46-48 that information
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`associated with audio information selected by a user could indeed be songs
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`configured as an audio file such as an MP3 or wave file. However, it is then stated
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`at 4:49-62 that the information may also be “a reference to a network location
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`where an audio file may be stored” and that system 100 “may wirelessly
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`communicate data or information associated with the selected audio information to
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`electronic device 103 thereby providing wireless communication of selected
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`information.” White reiterates this at 7:35-67, stating that information associated
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`with selected audio information and wirelessly communicated to an electronic
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`device may be an audio file such as a wave file or MP3 file or “a network location
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`that comprises a file representing the selected information.”
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`White further discloses a GUI in FIG. 4 that may be provided in various
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`electronic devices (11:6-11), and that playlists may be viewed (11:30-32) and
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`communicated to several different devices (11:66-12:7). Moreover, playlists can
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`be sent to network-connected electronic devices (as discussed in connection with
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`FIG. 8) and may be stored for later playing (17:14-16, 17:37-46). Despite these
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`disclosures, Patent Owner insists that a device that receives a playlist can only
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`receive audio files and is provided no control over the execution of the playlist.
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`Patent Owner’s arguments have no merit, and the claims are obvious over White
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`for the reasons set forth in the Petition and the Board’s Institution Decision.
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`III. CONCLUSION
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`For the foregoing reasons, as well as those set forth in its Petition, Petitioner
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`respectfully requests cancellation of claims 1-4, 6-8, 10, 11, 13, 21, 22, 24-29, 31,
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`32, 34, 42-45, 47-50, 52, and 53 of the '652 patent.
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`Dated: August 12, 2014
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`By /David L. Fehrman/
`David L. Fehrman, Reg. No.: 28,600
`Mehran Arjomand, Reg. No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`(213) 892-5200
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`393032805800
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`I hereby certify that the attached “Petitioner Yamaha Corporation of
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`America’s Reply to Patent Owner Response” was served on the below date on the
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`Patent Owner via e-mail (by consent) to the following counsel of record for the
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`Patent Owner:
`
`Thomas Engellenner (engellennert@pepperlaw.com)
`Reza Mollaaghababa (mollaaghababar@pepperlaw.com)
`PEPPER HAMILTON LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`
`Theodosios Thomas (ted.thomas@sceneralabs.com)
`BLACK HILLS MEDIA, LLC
`5400 Trinity Road, Suite 303
`Raleigh, NC 27607
`
`Christopher Horgan (chris.horgan@concerttechonology.com)
`Concert Technology
`1438 Dahlia Loop
`San Jose, CA 95126
`
`
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`Dated: August 12, 2014
`
`__/Mehran Arjomand/____
`Mehran Arjomand
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