Patent No. 8,050,652
`Petition For Inter Partes Review
`
`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. ______
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 2
`
`III. CO-PENDING LITIGATIONS ...................................................................... 2
`
`IV. RELATED PETITION ................................................................................... 4
`
`V.
`
`THE '652 PATENT ........................................................................................ 4
`
`A.
`
`B.
`
`Background .......................................................................................... 4
`
`Prosecution History .............................................................................. 5
`
`VI. EFFECTIVE FILING DATE AND CLAIM CONSTRUCTION .................. 7
`
`A.
`
`B.
`
`Effective Filing Date ............................................................................ 7
`
`Claim Construction............................................................................... 7
`
`1.
`
`2.
`
`“Playlist Assigned to the Electronic Device” ............................ 8
`
`“Wherein Ones of the Plurality of Songs Are Not Stored
`on the Electronic Device” .......................................................... 9
`
`VII.
`
`IDENTIFICATION OF CHALLENGE ....................................................... 12
`
`A.
`
`B.
`
`C.
`
`Statutory Grounds For The Challenge Of Each Claim ...................... 12
`
`Ground 1 – Anticipation Of Claims 1, 2, 4, 6, 7, 10, 11, 13, 14,
`21, 22, 24, 25, 28, 31, 32, 34, 35, 42, 43, 45, 47, 48, 52, 53, 55,
`And 56 By Leeke ................................................................................ 14
`
`Ground 2 – Obviousness Of Claims 1, 2, 4, 6, 7, 10, 11, 13, 14,
`21, 22, 24, 25, 28, 31, 32, 34, 35, 42, 43, 45, 47, 48, 52, 53, 55,
`And 56 In View Of Leeke .................................................................. 27
`
`D. Ground 3 – Obviousness Of Claims 1-4, 6-8, 10, 13, 21, 22, 24-
`29, 31, 42-45, 47-50, And 52 Based On Qureshey In View Of
`Berman ............................................................................................... 27
`
`1.
`
`2.
`
`Qureshey .................................................................................. 27
`
`Berman ..................................................................................... 29
`
`E.
`
`Ground 4 – Obviousness Of Claims 11, 32, And 53 Based On
`Qureshey In View Of Berman And Leeke ......................................... 39
`
`
`
`
`
`i
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`F.
`
`Ground 5 – Anticipation Of Claims 1, 2, 3, 4, 6, 7, 10, 21, 22,
`24, 25, 27, 28, 29, 31, 42, 43, 44, 45, 47, 48, And 52 Based On
`Lansonic ............................................................................................. 40
`
`G. Ground 6 – Obviousness Of Claims 1, 2, 3, 4, 6, 7, 8, 10, 21,
`22, 24, 25, 26, 27, 28, 29, 31, 42, 43, 44, 45, 47, 48, 49, And 52
`In View Of Lansonic DAS-750 .......................................................... 50
`
`1.
`
`Claims 1, 2, 3, 4, 6, 7, 10, 21, 22, 24, 25, 27, 28, 29, 31,
`42, 43, 44, 45, 47, 48, And 52 .................................................. 50
`
`2.
`
`Claims 8, 26, And 49 ............................................................... 51
`
`H. Ground 7 – Obviousness Of Claims 1-4, 6, 7, 13, 21, 22, 24, 25,
`27, 28, 34, 42-45, 47, And 48 In View Of White .............................. 51
`
`VIII. CONCLUSION ............................................................................................. 60
`
`
`
`
`ii
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`
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`
`
`Exhibit List for Inter Partes Review of U.S. Patent No. 8,050,652
`
`Exhibit Description
`
`Exhibit #
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`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
`
`U.S. Patent No. 8,050,652 to Qureshey et al.
`
`Declaration of Dr. V. Michael Bove, Jr.
`
`U.S. Patent Application No. 09/805,470
`
`U.S. Provisional Patent Application No. 60/072,127
`
`U.S. Patent Application No. 09/096,703
`
`U.S. Provisional Patent Application No. 60/246,842
`
`Office Action dated May 23, 2011
`
`Patent Owner ITC Claim Chart re Toshiba
`
`Office Action dated February 2, 2011
`
`U.S. Patent No. 6,587,127 to Leeke et al.
`
`PCT Publication WO 99/38266 to Qureshey et al.
`
`U.S. Patent No. 6,502,194 to Berman et al.
`
`Lansonic DAS-750 Reference Materials
`
`U.S. Patent No. 7,187,947 to White et al.
`
`
`
`
`iii
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`

`

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`
`
`Petitioner Yamaha Corporation of America (“Petitioner”) respectfully
`
`petitions for inter partes review of claims 1-4, 6-8, 10, 11, 13, 14, 21, 22, 24-29,
`
`31, 32, 34, 35, 42-45, 47-50, 52, 53, 55, and 56 of U.S. Patent No. 8,050,652 (“the
`
`'652 patent” (Ex. 1001)) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R.
`
`§ 42.100 et seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies Yamaha Corporation
`
`of America as the real party-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the related matters in
`
`Sections III and IV.
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel (and a power of attorney accompanies this Petition):
`
`Lead Counsel
`
`Backup Counsel
`
`David L. Fehrman
`dfehrman@mofo.com
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
`
`Mehran Arjomand
`marjomand@mofo.com
`Registration No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`
`
`
`1
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`

`

`
`
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the '652 patent is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`II.
`
`INTRODUCTION
`
`The '652 patent is directed to a device and method for receiving and playing
`
`audio information, such as songs, from several different sources, including an
`
`Internet radio broadcast and an audio content source providing a playlist. The
`
`device receives information enabling it to obtain songs in the playlist from a
`
`remote source and plays the audio content indicated by the playlist.
`
`In this Petition, Petitioner presents numerous references that anticipate or
`
`render obvious various claims. Section V of this Petition summarizes the
`
`'652 patent and its prosecution history. Section VII sets forth the detailed grounds
`
`for invalidity. This showing is accompanied by the Declaration of Dr. V. Michael
`
`Bove, Jr. (“Bove Decl.,” Ex. 1002.) Accordingly, Petitioner respectfully requests
`
`a Decision to institute inter partes review.
`
`III. CO-PENDING LITIGATIONS
`
`On May 22, 2012, the Patent Owner filed suit against Petitioner Yamaha
`
`Corporation of America in the U.S. District Court for the District of Delaware
`
`alleging, inter alia, infringement of the '652 patent and related U.S. Patent
`
`
`
`
`2
`
`

`

`
`
`
`No. 8,045,952 to Qureshey et al. (“the '952 patent”). See Black Hills Media, LLC
`
`v. Yamaha Corp. of America, No. 1:12-cv-00635-RGA (D. Del.). Plaintiff never
`
`served the original Complaint, but instead filed a September 12, 2012 First
`
`Amended Complaint that was not served until September 19, 2012. Thus, this
`
`petition has been filed within one year of Petitioner being served a complaint
`
`alleging infringement of the '652 patent. 35 U.S.C. § 315(b); 37 CFR § 42.101(b).
`
`The Patent Owner has also filed lawsuits alleging infringement of the '652
`
`and '952 patents against Pioneer (1:12-cv-00634), Logitech (1:12-cv-00636),
`
`Sonos (1:12-cv-00637), LG (1:13-cv-00803), Sharp (1:13-cv-00804), Toshiba
`
`(1:13-cv-00805), and Panasonic (1:13-cv-00806) in the District of Delaware, and
`
`against Samsung (2:13-cv-00379) in the Eastern District of Texas. On August 5,
`
`2013, the Delaware Court transferred four of the cases to the Central District of
`
`California, where the Yamaha (2:13-cv-06054), Pioneer (2:13-cv-05980), Logitech
`
`(2:13-cv-06055), and Sonos (2:13-cv-06062) cases are now pending.
`
`The Patent Owner also filed a recently instituted Section 337 action in the
`
`U.S. International Trade Commission against LG, Sharp, Toshiba, Panasonic, and
`
`Samsung alleging, inter alia, infringement of the '652 and '952 patents. See
`
`Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players,
`
`Home Theater Systems, Tablets and Mobile Phones, Components Thereof and
`
`
`
`
`3
`
`

`

`
`
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`Associated Software, Inv. No. 337-TA-882 (USITC). All of the above cases are
`
`currently pending.
`
`IV. RELATED PETITION
`
`The '652 and '952 patents are both continuations of Application No.
`
`09/805,470 (Ex. 1003) and share the same specification. Petitioner is concurrently
`
`filing a petition for inter partes review of the '952 patent.
`
`V. THE '652 PATENT
`
`A. Background
`
`As noted above, the '652 patent is directed to a device and method for
`
`receiving and playing audio content from several sources, including an Internet
`
`radio broadcast and songs comprising a playlist. The device receives information
`
`enabling it to obtain the songs from a remote source, obtains the songs from the
`
`remote source, and plays the audio content indicated by the playlist. In addition to
`
`the Internet radio and playlist sources, the patent also contemplates playing songs
`
`from additional sources such as AM/FM radio broadcasts, cassettes, or CDs.
`
`Exemplary arrangements are illustrated in FIGS. 13A, 15, and 19B.
`
`As described at 10:3-57, the device enables users to select from various
`
`modes of operation. When in the Internet radio mode of operation, the device
`
`recieves and plays the Internet radio broadcast the user has selected.
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`
`
`
`4
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`

`

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`
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`As described at 28:11-30:26 with reference to FIGS. 15, 19B, and 19C,
`
`when in the playlist mode, a user at PC 1508 may log-in to server site 1104 and
`
`assign a playlist to a separate device, e.g., network-enabled audio device 1510.
`
`Each network-enabled audio device (e.g., device 1510 and device 1520) has
`
`storage for storing songs and associated uniform resource locators (URLs). Some
`
`of the songs identified by the playlist may already be stored on device 1510, in
`
`which case no audio data is downloaded. However, some songs may be missing.
`
`After determining that one or more songs on the playlist are not stored on
`
`device 1510, the server site 1104 creates a list of remaining songs that need to be
`
`downloaded to device 1510. The server site determines whether the songs on the
`
`list are present on another network-enabled audio device 1520. If so, device 1510
`
`is provided with a list of URLs of the remaining songs on device 1520. The device
`
`1510 may then download the remaining songs from the device 1520 using the
`
`URLs provided by the server site 1104.
`
`B.
`
`Prosecution History
`
`The '652 patent issued at the end of a chain of applications. The chain began
`
`in 1998 with provisional Application No. 60/072,127 (“the '127 provisional
`
`application,” Ex. 1004) filed on January 22, 1998, and Application No. 09/096,703
`
`(“the '703 application,” Ex. 1005) filed on June 12, 1998. These applications
`
`contain disclosure relating to an internet radio device, and include FIGS. 1-10 (the
`
`
`
`
`5
`
`

`

`
`
`
`'127 provisional application includes FIG. 6 whereas the '703 application includes
`
`FIGS. 6A and 6B). However, playlists were not disclosed in either the original
`
`'127 provisional application or the '703 application.
`
`In 2000-2001, new disclosures, including playlists, were added in
`
`provisional Application No. 60/246,842 (“the '842 provisional application,” Ex.
`
`1006) filed on November 8, 2000 and continuation-in-part Application No.
`
`09/805,470 (“the '470 application,” Ex. 1003) filed on March 12, 2001.
`
`Specifically, playlists were first disclosed in the '842 application, which added 29
`
`sheets of drawings including new FIGS. 11-19, and then in the '470 application,
`
`which added 35 sheets of drawings including new FIGS. 11-21.
`
`The application that issued as the '652 patent was filed on November 27,
`
`2006 as Application No. 11/563,232 (“the '232 application”). The '232 application
`
`was a continuation of the '470 application and claims priority to the '470 and '703
`
`applications, as well as the '127 and '843 provisional applications.
`
`In a May 23, 2011 Office Action during the prosecution of the '232
`
`application (Ex. 1007), all of the claims were provisionally rejected for double
`
`patenting. Claims 1-5, 7-9, 11-16, and 18-20 were also rejected under 35 U.S.C.
`
`§ 102(e) as being anticipated by U.S. Patent No. 5,949,492 to Mankovitz. Claims
`
`6, 10, and 17 were objected to and indicated as containing allowable subject
`
`matter. Each of these claims included limitations regarding receiving a playlist
`
`
`
`
`6
`
`

`

`
`
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`assigned to an electronic device from a central system, with the playlist identifying
`
`plural songs, wherein ones of the songs are not stored on the electronic device.
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`The Applicants amended the independent claims to add the limitations of claims 6,
`
`10, and 17, and filed a terminal disclaimer. The application was then allowed.
`
`VI. EFFECTIVE FILING DATE AND CLAIM CONSTRUCTION
`
`A. Effective Filing Date
`
`Each of the independent claims of the '652 patent recites, inter alia, a
`
`“playlist identifying a plurality of songs.” The original '127 provisional
`
`application and the '703 application were filed in 1998 with FIGS. 1-8 and 1-10,
`
`respectively. Neither the specifications nor the drawings of these applications even
`
`mention the word “playlist.” Disclosure of playlists was not included until the
`
`2000 filing of the '842 provisional application, which added 29 new drawing sheets
`
`and accompanying description. Therefore, the earliest possible effective filing date
`
`of the '652 patent is November 8, 2000, which was the filing date of the '842
`
`provisional application.
`
`B. Claim Construction
`
`Petitioner notes that a claim is given the “broadest reasonable construction in
`
`light of the specification” in inter partes review. See 37 C.F.R. § 42.100(b).
`
`Petitioner submits that the terms of the challenged claims of the '652 patent are to
`
`be given their broadest reasonable interpretation as understood by one of ordinary
`
`
`
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`7
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`

`

`
`
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`skill in the art and consistent with the disclosure. The terms “playlist assigned to
`
`the electronic device” and “wherein ones of the plurality of songs are not stored on
`
`the electronic device,” which, as discussed above, were added to the independent
`
`claims by amendment, warrant additional discussion as to their broadest reasonable
`
`interpretation consistent with the specification.
`
`1.
`
`“Playlist Assigned to the Electronic Device”
`
`The term “playlist assigned to the electronic device” appears in independent
`
`claims 1, 21, and 42. The operation of assigning playlists is described in the
`
`specification in connection with FIGS. 15, 17, and 19 at 4:50-5:3, 21:40-23:5,
`
`24:44-60, and 28:11-30:26.
`
`The Summary of the Invention states that an aspect of the claimed invention
`
`“is a method for assigning playlists of music from one electronic device to
`
`another” and “[t]he software module allows a user to assign a playlist from a first
`
`device to a second device.” (4:50-58.) FIG. 17C illustrates the assigning operation
`
`by selecting “Make available on” and selecting a device. As stated at 24:50-53,
`
`“[t]he user can choose the menu option of ‘Make Available On’ to assign the
`
`playlist from one device to another (e.g., from device 1510 to device 1520).” The
`
`entire discussion of assigning playlists is of assigning a playlist from one device to
`
`another by selecting the device to which the playlist is to be transferred. The term
`
`“playlist assigned to the electronic device” should therefore be construed as a list
`
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`
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`8
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`

`

`
`
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`of songs that is to be transferred to a particular device selected by the user. (Bove
`
`Decl. ¶¶ 12-14.)
`
`In co-pending litigation, the Patent Owner has contended that the term
`
`“playlist assigned to the electronic device” includes a playlist that has been
`
`requested without any device selection, i.e., without any act of assigning to the
`
`device. (See, e.g., “Patent Owner ITC Claim Chart re Toshiba” (Ex. 1008), at 8-9.)
`
`Accordingly, although it is submitted that the Patent Owner’s construction is not
`
`correct, the claim charts in the following sections take into account both the proper
`
`construction presented by Petitioner and the incorrect, broader construction
`
`asserted by the Patent Owner.
`
`2.
`
`“Wherein Ones of the Plurality of Songs Are Not Stored on
`the Electronic Device”
`
`The term “wherein ones of the plurality of songs are not stored on the
`
`electronic device” appears in independent claims 1, 21, and 42 of the '652 patent.
`
`The specification describes network-enabled electronic devices 1510 and 1520,
`
`each having its own storage space to store songs. When a playlist is assigned to a
`
`device, songs not stored on the device are provided to the device and stored. (See,
`
`e.g., FIG. 15; 21:40-22:15.) The plain language of the claims implies that the
`
`electronic device can store songs. Otherwise, the limitation has no meaning. See,
`
`e.g., Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 546 (Fed. Cir. 1994) (“All
`
`limitations of a claim must be considered meaningful.”); see also Bove Decl. ¶ 16.
`
`
`
`
`9
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`

`

`
`
`
`In the Summary of the Invention at 3:57-4:9, it is stated that embodiments of
`
`the audio device may not have storage for songs. However, there is no disclosure
`
`of an implementation of such a device, and this would be inconsistent with the
`
`claim language. Selecting a playlist for playback is not the same operation as
`
`assigning a playlist to a device. The assigning operation is described throughout
`
`the specification as selecting a device and transferring songs to the device for
`
`storage. In this regard, during prosecution of the related '952 patent, the same
`
`Examiner evaluated the same specification and the same claim language as in the
`
`'652 patent and considered that the device had memory to store songs:
`
`Regarding claims 1, 9, and 15, none of the prior arts of record, in
`
`combination or individual, show or make it obvious a network-enable
`
`audio device of identifying ones of the plurality of songs in the
`
`playlist that are not stored on the electronic device and providing
`
`information to the electronic device enabling the electronic device to
`
`obtain the ones of the plurality of songs that are not stored on the
`
`electronic device from at least one remote source (check the electronic
`
`device’s data storage space for songs listed on the assigned playlist
`
`and a network connection is made to upload the file if the songs
`
`needed to from the playlist are not stored on the electronic device’s
`
`data storage space, see specification 0021).
`
`(Office Action at 3-4 (Feb. 2, 2011), Ex. 1009 (emphasis added).)
`
`The manner in which the Examiner read the claim language demonstrates
`
`how one of ordinary skill in the art would have construed the claim. Salazar v.
`
`
`
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`10
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`

`

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`
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`Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) (“Although
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`unilateral statements by an examiner do not give rise to a clear disavowal of claim
`
`scope by an applicant, it does not necessarily follow that such statements are not
`
`pertinent to construing claim terms. Statements about a claim term made by an
`
`examiner during prosecution of an application may be evidence of how one of skill
`
`in the art understood the term at the time the application was filed.”).
`
`Such is also consistent with the prosecution of the '652 patent. As noted
`
`above, both of the “not stored” and “assigned to” limitations were in originally
`
`filed dependent claims and were added to the independent claims in response to a
`
`rejection. The dependent claims clearly track the embodiments of the system
`
`described in the specification which are directed to assignment of playlists and
`
`storage of songs from the playlist, and not to a broader system not having storage.
`
`Accordingly, “wherein ones of the plurality of songs are not stored on the
`
`electronic device,” read consistently with the specification, requires that the
`
`electronic device must have a storage space capable of storing songs. In other
`
`words, “wherein ones of the plurality of songs are not stored on the electronic
`
`device” cannot be construed to encompass an electronic device that has no storage
`
`space for songs at all. (Bove Decl. ¶¶ 15-18.)
`
`In co-pending litigation, the Patent Owner has asserted that certain products
`
`infringe despite the fact that they do not have storage for storing songs. (See, e.g.,
`
`
`
`
`11
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`

`

`
`
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`Ex. 1008.) Once again, although it is submitted that a construction not requiring an
`
`ability to store songs is incorrect, the claim charts in the following sections apply
`
`to both the proper construction presented by Petitioner and the incorrect, broader
`
`construction asserted by the Patent Owner in co-pending litigation.
`
`VII. IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner respectfully requests the
`
`cancellation of claims 1-4, 6-8, 10, 11, 13, 14, 21, 22, 24-29, 31, 32, 34, 35, 42-45,
`
`47-50, 52, 53, 55, and 56 of the '652 patent based on the grounds of invalidity set
`
`forth in this Petition.
`
`A.
`
`Statutory Grounds For The Challenge Of Each Claim
`
`The statutory grounds for the challenge of each claim are set forth below.
`
`All the statutory citations are pre-AIA.
`
`1. Grounds Based on U.S. Patent No. 6,587,127 to Leeke et al.
`
`Ground 1 – Anticipation under 35 U.S.C. § 102(e) of claims 1, 2, 4,
`
`6, 7, 10, 11, 13, 14, 21, 22, 24, 25, 28, 31, 32, 34, 35,
`
`42, 43, 45, 47, 48, 52, 53, 55, and 56 based on U.S.
`
`Patent No. 6,587,127 to Leeke et al. (“Leeke,” Ex.
`
`1010).
`
`Ground 2– Obviousness under 35 U.S.C. § 103(a) of claims 1, 2, 4,
`
`6, 7, 10, 11, 13, 14, 21, 22, 24, 25, 28, 31, 32, 34, 35,
`
`
`
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`12
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`
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`42, 43, 45, 47, 48, 52, 53, 55, and 56 based on Leeke.
`
`2. Grounds Based on PCT Pub. WO 99/38266 to Qureshey et al. and
`
`U.S. Patent No. 6,502,194 to Berman et al.
`
`Ground 3 – Obviousness under 35 U.S.C. § 103(a) of claims 1-4, 6-
`
`8, 10, 13, 21, 22, 24-29, 31, 42-45, 47-50, and 52 based
`
`on PCT Publication WO 99/38266 to Qureshey et al.
`
`(“Qureshey,” Ex. 1011) in view of U.S. Patent No.
`
`6,502,194 to Berman et al. (“Berman,” Ex. 1012).
`
`Ground 4 – Obviousness under 35 U.S.C. § 103(a) of Claims 11,
`
`32, and 53 Based on Qureshey in View of Berman and
`
`Leeke.
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`3. Grounds Based on Lansonic DAS-750
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`Ground 5 – Anticipation under 35 U.S.C. § 102(a) of claims 1, 2, 3,
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`4, 6, 7, 10, 21, 22, 24, 25, 27, 28, 29, 31, 42, 43, 44, 45,
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`47, 48, and 52 based on webpages describing the
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`Lansonic DAS-750 (“Lansonic DAS-750,” Ex. 1013).
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`Ground 6 – Obviousness under 35 U.S.C. § 103(a) of claims 1, 2, 3,
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`4, 6, 7, 8, 10, 21, 22, 24, 25, 26, 27, 28, 29, 31, 42, 43,
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`44, 45, 47, 48, 49, and 52 based on Lansonic DAS-750.
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`13
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`4. Ground Based on U.S. Patent No. 7,187,947 to White et al.
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`Ground 7 – Obviousness under 35 U.S.C. § 103(a) of claims 1-4, 6,
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`7, 13, 21, 22, 24, 25, 27, 28, 34, 42-45, 47, and 48
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`based on U.S. Patent No. 7,187,947 to White et al.
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`(“White” Ex. 1014).
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`Set forth below is a discussion of how the claims are unpatentable under the
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`statutory grounds raised, including claim charts specifying where each element of a
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`challenged claim is met by the prior art. 37 C.F.R. § 42.104(b)(4). The showing in
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`these sections establishes a reasonable likelihood of prevailing as to each ground of
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`invalidity with respect to the challenged claims as to that ground. This showing is
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`accompanied by the Declaration of Dr. V. Michael Bove, Jr. (Ex. 1002) as noted
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`above.
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`B. Ground 1 – Anticipation Of Claims 1, 2, 4, 6, 7, 10, 11, 13, 14, 21,
`22, 24, 25, 28, 31, 32, 34, 35, 42, 43, 45, 47, 48, 52, 53, 55, And 56
`By Leeke
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`Leeke was filed on November 24, 1998, and thus is prior art under 35 U.S.C.
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`§ 102(e) based on the earliest effective filing date of the '652 patent, i.e.,
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`November 8, 2000. Leeke is titled “Content Player Method and Server with User
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`Profile.” The Leeke system is illustrated in FIG. 1, reproduced below (on the next
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`page).
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`As noted at 4:7-19, Leeke is directed to a system for providing audio content
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`via an electronic network 100. The system includes a server 102 and a plurality of
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`client apparatuses 104, one of which is illustrated in more detail at 106. Client
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`apparatus 106 can communicate via the electronic network 100 using a wireless
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`transceiver 126. (4:35-37.)
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`
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`Using one of several different methods, a user of client apparatus 106 selects
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`a playlist of songs available on server 102. For example, using the interface
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`illustrated in FIG. 2 below, the user can select a preset 202:
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`Presets can be used to store access to a list of specific content, such as all songs by
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`a certain artist, and are available across different client apparatuses. (9:61-10:14.)
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`Using the interface of FIGS. 20 and 21, a user may also select from a playlist
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`using attribute selections 214 or track pick list 620. Upon selection of an attribute,
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`a list of songs having the attribute is displayed. (19:48-20:16.) Track indicator 620
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`displays the current track and the number of tracks in the playlist. Clicking on
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`track indicator 620 presents a pick list of tracks in the playlist. (20:43-49.)
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`Regardless of which method is used to receive a playlist of songs from
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`server 102, upon selection of a song from the playlist, the client apparatus uses
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`information in the playlist (e.g., a URL) to obtain the selected song from server
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`102 (or another remote server 144) and play the song for the user. (5:1-4.)
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`As noted at 20:64-21-6 with reference to FIG. 2, upon request, the display
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`region 222 can be used to provide additional information about the currently
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`playing song, including, for example, album cover images and producer and writer
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`credits. Similarly, client apparatus 106 includes a “listening booth” feature that
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`provides new music for the user to listen to upon selection. The music provided is
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`determined though the past listening behavior of the user. (22:1-15; 33:27-34:6.)
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`As illustrated in FIG. 2, client apparatus 106 also allows a user to select
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`from various categories 244-247 (i.e., modes of operation), including radio
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`category 244. (7:63-8:16.) The radio category includes broadcast AM and FM
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`radio and Internet radio broadcasts. (8:3-6.) To play Internet radio the user selects
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`a station from a graphical radio dial, e.g., as shown in FIG. 7 (12:12-13:21.)
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`Leeke discloses each element of claims 1, 2, 4, 6, 7, 10, 11, 13, 14, 21, 22,
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`24, 25, 28, 31, 32, 34, 35, 42, 43, 45, 47, 48, 52, 53, 55, and 56 of the '652 patent,
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`under the Patent Owner’s broad construction of the term “playlist assigned to the
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`electronic device.” According to the Patent Owner, this term encompasses a
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`playlist that has been requested from the device without any actual selection of a
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`device, i.e., without any act of assigning to the device. (See Patent Owner ITC
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`Claim Chart re Toshiba (Ex. 1008) at 8-9.) Leeke discloses Internet radio and
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`playlist modes of operation as claimed. Set forth below is a claim chart that
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`specifies where each element of a challenged claim is met by Leeke.
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`Claim
`1. An electronic device comprising:
`a) a network interface enabling the
`electronic device to receive an
`Internet radio broadcast and being
`further adapted to communicatively
`
`U.S. Patent 6,587,127 to Leeke et al.
`
`
`The basic configuration is illustrated in
`FIG. 1 and described at 4:12-5:48. Client
`apparatus 106 is an electronic device and
`includes a network interface coupling the
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`Claim
`couple the electronic device to a
`central system;
`
`b) a system enabling playback of
`audio content from a playlist
`assigned to the electronic device via
`the central system; and
`
`U.S. Patent 6,587,127 to Leeke et al.
`device to a sever 102, i.e., a central system.
`See, e.g., 4:24:27 (“Regardless of its form,
`the client apparatus 106 typically includes
`. . . a transceiver 126 . . . .”); 4:35-37 (“The
`transceiver 126 can include a modem, a
`network adapter, or a wireless transceiver
`to communicate signals via the electronic
`network 100.”); 4:13-15.
`
`Client apparatus 106 recieves an Internet
`radio broadcast. See, e.g., FIG. 7; 8:3-6
`(“The radio category includes content
`available from over-the-air broadcasts
`(including but not limited to AM and FM
`broadcasts) and Internet broadcast material
`encoded and distributed through the
`electronic network 100.”); 12:51-53.
`Numerous different types of playlists are
`disclosed, including playlists, presets, and
`attribute fields (e.g., category, artist, or
`album). See, e.g., 19:59-20:22 (“The
`graphical user interface provides multiple
`ways to navigate to content in the music
`category. A first way includes using the
`selection attribute indicators 214 to select
`content having chosen attributes…”);
`20:23-29 (“A second way to navigate music
`content is to use a preset.”); 10:5-10
`(“Presets may be used to store access to
`specific content or titles, or may be used to
`specify sets of titles. For example, a first
`preset can specify a set of all stations that
`broadcast jazz, and a second preset can
`specify all recordings of a particular
`artist.”); 20:30-42 (“A third way to
`navigate to music content is to use a smart
`card (either physical or virtual). . . . Smart
`cards also facilitate access to specific titles
`as part of a playlist. In this case, the end
`
`
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`Claim
`
`c) a control system associated with
`the network interface and the system
`enabling playback of the audio
`content indicated by the playlist, and
`adapted to:
`i) enable a user of the electronic
`device to select a desired mode of
`operation from a plurality of modes
`of operation comprising an Internet
`radio mode of operation and a
`playlist mode of operation;
`
`ii) receive and play the Internet radio
`broadcast when the desired mode of
`operation is the Internet radio mode
`of operation; and
`iii) when the desired mode of
`operation is the playlist mode of
`operation: receive the playlist
`assigned to the electronic device
`from the central system, the playlist
`
`U.S. Patent 6,587,127 to Leeke et al.
`user can specify and save a playlist of titles
`to the smart card.”); see also 23:47-24:2;
`FIGS. 2, 20, 21, and 33.
`
`The playlist is assigned to client apparatus
`106. The playlist information can be stored
`on the server and made available, i.e.,
`assigned, to the device with a particular
`virtual smart card. See, e.g., 5:21-24;
`17:27-32; 20:38-42.
`Client apparatus 106 includes control
`processor 122 associated with transceiver
`126. See, e.g., FIG. 1; 4:12-30.
`
`A user can select from plural modes,
`including an Internet radio mode and a
`playlist mode. 7:63-8:2 (“The categorical
`selection controls 200 are designated to
`receive user-initiated actions to choose a
`content category within which audio
`content can be selected. The categorical
`selection controls 200 include a radio
`category control 244, an events category
`control 245, a library category control 246,
`and a music category control 247.”).
`
`The music category includes playlist
`modes. 19:48-20:49. The radio category
`includes Internet radio. See claim 1(a).
`See claim 1(a).
`
`Client apparatus 106 receives a playlist
`assigned to it from server 102. The playlist
`can be stored on server 102 and the server
`10