Trials@uspto.gov Paper No. 10 IPR2013-00593 Paper 45
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`571-272-7822
`IPR2013-00594 Paper 38
`IPR2013-00597 Paper 37
`IPR2013-00598 Paper 42
`Date Entered: September 26, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
`v.
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00593
`Patent 8,045,952
`Case IPR2013-00594
`Patent 8,050,652
`Case IPR2013-00597
`Patent 8,230,099
`Case IPR2013-00598
`Patent 8,214,8731
`____________
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`PETER P. CHEN, Administrative Patent Judges
`____________
`ORDER DENYING AUTHORIZATION FOR PATENT OWNER
`TO FILE MOTION TO STRIKE
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`1 This Order addresses an issue that is identical in the listed cases. We
`exercise our discretion to issue a single paper to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`On September 10, 2014, we conducted a teleconference to address Patent
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`Owner’s request for authorization to file a motion to strike Petitioner’s Reply to the
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`Patent Owner Response in each of the subject proceedings. Black Hills Media LLC
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`(“Patent Owner”) was represented by Lana Gladstein. Yamaha Corporation of
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`America (“Petitioner”) was represented by David Fehrman. Judges McNamara,
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`White, and Chen participated in the conference. A court reporter transcribed the
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`conference.
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`Patent Owner contends that motions to strike in each of the subject
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`proceedings should be authorized because Petitioner’s replies and new evidence
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`presented with them are not responsive to the respective Patent Owner’s Response.
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`During the conference, Patent Owner first argued that in IPR2013-00593 and
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`IPR2013-00594, Petitioner’s replies (Papers 38 and 31, respectively) propose a
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`new claim construction theory not advanced by Petitioner in its Petitions. Papers
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`41 and 34, respectively (“Tr.”) 3–4.
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`For convenience, we address the issues concerning IPR2013-00593 and
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`IPR2013-00594 in the context of IPR2013-00593.2 In IPR2013–00593, instead of
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`the term “playlist,” Petitioner proposed that the term “playlist assigned to the
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`electronic device” be construed to mean “a list of songs that is to be transferred to
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`a particular device selected by the user.” Pet. 8–9. The Patent Owner Preliminary
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`Response proposed that the term “playlist” be construed separately to mean “a list
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`referencing media items arranged to be played in a sequence.” Prelim. Resp. 17.
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`In our Decision to Institute, we construed “playlist assigned to the electronic
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`device” to mean “a list of audio files or URLs of where the audio files were
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`retrieved from directed to a particular device selected by a user.” Dec. to Inst. 12-
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`13. The Patent Owner Response extensively addresses the construction of the term
`
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`2 Unless otherwise indicated, references are to papers in IPR2013-00593.
`2
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`
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`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`“playlist” by proposing a narrower construction and urging the Board to reconsider
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`its construction in light of evidence submitted with the Patent Owner Response
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`concerning the plain and ordinary meaning of the term. PO Resp. 12–24.
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`Petitioner’s Reply (Paper 38) was its first opportunity to respond to the
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`arguments raised in the Patent Owner Response. In that Reply, Petitioner
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`responded directly to Patent Owner’s proposed construction of “playlist” by
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`proposing an alternative construction. Pet. Reply 4. Petitioner notes that in
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`arriving at our construction of the term “playlist assigned to the electronic device,”
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`we considered the description of playlist in the patent specification. Id., citing our
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`Dec. to Inst. at 10-11. Petitioner’s Reply does not raise a new issue. In this case,
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`the original Petition proposed a construction for a term that includes the word, i.e.,
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`playlist, that Patent Owner proposes to construe separately. The construction of
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`“playlist” is likely to be significant to the outcome of this proceeding. Thus,
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`Petitioner’s Reply was a proper rebuttal to Patent Owner’s claim construction
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`position and therefore, we do not authorize Patent Owner’s filing of a motion to
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`strike Petitioner’s Reply in either IPR2013-00593 or IPR2013-00594.
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`Patent Owner also seeks authorization to move to strike exhibits cited in the
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`Petitioner Reply in IPR2013-00593 and IPR2013-00594. Tr. 5. Patent Owner
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`contends that the Exhibits are extrinsic evidence not supported by an expert
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`declaration and that the Patent Owner has no opportunity to cross examine
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`Petitioner’s expert witness as to the exhibits. Id. at 6-7. The exhibits are in
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`support of the Petitioner’s Reply and are responsive to the Patent Owner Response.
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`Patent Owner also has filed a Motion to Exclude these exhibits as irrelevant,
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`lacking foundation and prejudicial. (Papers 42 and 35, respectively). We will
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`address those issues in due course. Therefore, we do not authorize a separate
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`motion to strike these exhibits.
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`
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`3
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`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`The issues in IPR2013-00597 and IPR2013-00598 are similar and also
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`concern the construction of “playlist.” Tr. 12-13. For the reasons discussed above,
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`we do not authorize Patent Owner to file a motion to strike the Petitioner’s reply in
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`either IPR2013-00597 or IPR2013-00598. In IPR2013-00598 Patent Owner also
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`objects to Exhibit 1022 and Petitioner’s related argument concerning the
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`implications of the Bi reference. Tr. 14-19. However, Patent Owner already has
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`moved to exclude this evidence in IPR2013-00598 (Paper 39). In IPR2013-00597,
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`Patent Owner also has filed a motion to exclude. (Paper 34). As discussed above,
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`these exhibits are in support of Petitioner’s Reply to the Patent Owner Response.
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`We will address the motions to exclude in due course. Therefore, we do not
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`authorize a motion to strike the exhibits in either IPR2013-00597 or IPR2013-
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`00598.
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`In consideration of the above, Patent Owner’s requests for authorization to
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`file motions to strike in IPR2013-00593, IPR2013-00594, IPR2013-00597, and
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`IPR2013-00598 are DENIED.
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`4
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`

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`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`
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`PETITIONER:
`
`David L. Fehrman
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`marjomand@mofo.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Lana Gladstein
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`gladsteinl@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`BLACK HILLS MEDIA, LLC
`ted.thomas@sceneralabs.com
`
`Christopher Horgan
`CONCERT TECHNOLOGY
`chris.horgan@concerttechnology.com
`
`
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`5
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