`
`
`By:
`
`
`
`
`
`
`
`
`
`
`Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`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
`Patent 8,050,652
`___________________
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70
`
`
`
`
`
`IPR2013-00594
`U.S. Patent No. 8,050,652
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70
`
`Black Hills Media, LLC (“Patent Owner”) respectfully requests oral
`
`argument in IPR2013-00594 under 37 C.F.R. § 42.70(a). Pursuant to the Revised
`
`Scheduling Order dated August 27, 2014 (Paper 32), oral argument is currently
`
`scheduled for October 20, 2014.
`
`Patent Owner notes that oral argument in the related proceeding of IPR2013-
`
`00593 of U.S. Patent No. 8,045,952 has also been scheduled for October 20, 2014.
`
`Patent Owner requests 90 minutes of total time to present its combined arguments
`
`regarding the ’652 Patent and the ’952 Patent, in view of the common issues to be
`
`addressed with regard to these patents and the cited art.1 Patent Owner requests an
`
`opportunity to reserve time for rebuttal.
`
`
`1 There are two other pending proceedings (IPR2013-00597 and IPR2013-00598)
`
`involving the same Patent Owner and Petitioner and that also have oral argument
`
`scheduled for October 20, 2014. These other proceedings involve an unrelated
`
`patent family, and for the most part, different prior art references. Patent Owner is
`
`concurrently filing requests for oral hearing in the ’597 and ’598 IPRs, again with a
`
`request that 90 minutes be allocated for combined oral arguments in the ’597 and
`
`’598 IPRs and separate from the oral argument in the instant proceeding.
`
`-1-
`
`
`
`Oral argument will focus on patentability of the challenged claims of U.S.
`
`IPR2013-00594
`U.S. Patent No. 8,050,652
`
`
`
`Patent 8,050,652 (the ’652 Patent). The principal issues to be argued by Patent
`
`Owner’s counsel will be as follows:
`
`A. A summary of the ’652 Patent and its contribution to the art.
`
`B.
`
`C.
`
`The proper construction of the term “playlist.”
`
`The teachings of the art relied upon in grounds for which trial was
`
`instituted in IPR2013-00594, i.e., U.S. Patent No. 7,187,947 of White
`
`(Ex. 1014); PCT Pub. No. WO99/38266 of Qureshey (Ex. 1011); U.S.
`
`Patent No. 6,502,194 of Berman (Ex. 1012); and U.S. Patent No.
`
`6,587,127 of Leeke (Ex. 1010).
`
`D.
`
`Petitioner’s failure to prove by a preponderance of the evidence
`
`unpatentability of the challenged claims under any ground for which
`
`trial was instituted, such as:
`
`1.
`
`Obviousness of independent Claims 1, 21, and 42 over White
`
`under 35 U.S.C. § 103, e.g., White fails to disclose “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,” “obtaining the ones of the plurality of
`
`songs from the at least one remote source,” or “receiving a
`
`playlist assigned to electronic device via a central system.”
`
`-2-
`
`
`
`
`
`IPR2013-00594
`U.S. Patent No. 8,050,652
`
`2.
`
`Obviousness of independent Claims 1, 21, and 42 over
`
`Qureshey in view of Berman under 35 U.S.C. § 103, e.g., the
`
`failure of Petitioner’s reliance on Berman to disclose “receiving
`
`a playlist assigned to electronic device via a central system.”
`
`3.
`
`Obviousness of dependent Claims 11, 32, and 53 over
`
`Qureshey, Berman, and Leeke under 35 U.S.C. § 103, e.g., the
`
`failure of Petitioner’s reliance on Leeke and the failure to
`
`demonstrate any motivation or capability to combine the
`
`references.
`
`E.
`
`F.
`
`The unrebutted evidence and testimony provided by Patent Owner.
`
`The weight to be accorded to Petitioner’s proffered evidence and
`
`testimony, such as:
`
`1.
`
`Petitioner’s expert does not present opinions from the
`
`perspective of a person of ordinary skill in the art.
`
`G.
`
`Issues raised in Patent Owner’s motion to exclude.
`
`H. Any additional issues for which the Board requests argument or any
`
`additional issue raised by Petitioner prior to or at oral argument.
`
`Patent Owner additionally requests permission to present handouts of
`
`demonstrative exhibits during the oral argument.
`
`
`
`
`
`
`-3-
`
`
`
`
`Dated: September 12, 2014
`
`IPR2013-00594
`U.S. Patent No. 8,050,652
`
`Respectfully submitted,
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`-4-
`
`
`
`IPR2013-00594
`U.S. Patent No. 8,050,652
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`
`
`
`
`
`I hereby certify that on September 12, 2014, a true and accurate copy of
`
`this paper, PATENT OWNER’S REQUEST FOR ORAL ARGUMENT PURSUANT TO 37
`C.F.R. § 42.70, was served on the following counsel for Petitioner via email:
`
`David L. Fehrman
`Mehran Arjomand
`Morrison & Foerster LLP
`707 Wilshire Boulevard
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`
`Dated: September 12, 2014
`
`dfehrman@mofo.com
`marjomand@mofo.com
`
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`
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