`
`
`
`
`
`Filed on behalf of: Black Hills Media, LLC
`By:
` Theodosios Thomas
`
` Black Hills Media, LLC
`
`
`5400 Trinity Rd. Suite 303
`
` Raleigh, NC 27607
`
` Tel: (919) 233-1942, Ext. 203
`
` Fax: (919) 233-9907
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2013-00594
`U.S. Patent 8,050,652
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO YAMAHA’S
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,050,652
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`Page
`
`Table of Authorities ................................................................................................ iii
`
`Table of Exhibits ...................................................................................................... v
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`THE PETITION MAY NOT BE CONSIDERED BECAUSE IT
`FAILS TO IDENTIFY ALL REAL PARTIES IN INTEREST .................... 2
`
`III. BACKGROUND OF THE ‘652 PATENT .................................................... 6
`
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ...... 16
`
`A. A Person Having Ordinary Skill In The Art ...................................... 16
`
`B.
`
`Claim Construction ............................................................................ 16
`
`1.
`
`2.
`
`3.
`
`“Playlist” .................................................................................. 17
`
`“Assigned to the Electronic Device” ....................................... 18
`
`“Wherein Ones of the Plurality of Songs Are Not Stored
`On The Electronic Device” ...................................................... 19
`
`V.
`
`The Petition Does Not Satisfy The Statutory Threshold For Instituting
`Inter Partes Review ...................................................................................... 20
`
`A.
`
`B.
`
`C.
`
`D.
`
`There Is No Reasonable Likelihood That Leeke Anticipates the
`Challenged Claims (Ground 1) .......................................................... 21
`
`There Is No Reasonable Likelihood That Leeke Renders
`Obvious The Challenged Claims (Ground 2)..................................... 27
`
`There Is No Reasonable Likelihood That Quereshy In View Of
`Berman Renders Obvious The Challenged Claims (Ground 3) ......... 31
`
`There Is No Reasonable Likelihood That Quereshy, Berman,
`And Leeke Render Obvious The Challenged Claims (Ground 4) ..... 35
`
`i
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`IPR2013-00594
`U.S. Patent 8,050,652
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`Page
`
`E.
`
`F.
`
`G.
`
`There Is No Reasonable Likelihood That Lansonic Anticipates
`The Challenged Claims (Ground 5) ................................................... 37
`
`There Is No Reasonable Likelihood That Lansonic Renders
`Obvious The Challenged Claims (Ground 6)..................................... 42
`
`There Is No Reasonable Likelihood That White Anticipates The
`Challenged Claims (Ground 7) .......................................................... 43
`
`VI. REDUNDANT GROUNDS PRESENTED IN THE Petition
`SHOULD BE DISMISSED .......................................................................... 47
`
`VII. CONCLUSION ............................................................................................. 49
`
`
`
`ii
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`
`
`
`TABLE OF AUTHORITIES
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`
`CASES
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00223 (PTAB
`Aug. 15, 2013) .................................................................................................... 30
`
`Page(s)
`
`Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research, 346 F.3d
`1051 (Fed. Cir. 2003) .......................................................................................... 38
`
`Ex parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) ............................. 41
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183 (PTAB
`July 31, 2013)...................................................................................................... 30
`
`In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ....................... 16
`
`In re Bass, 314 F.3d 575 (Fed. Cir. 2002) ............................................................... 17
`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) ...................................................... 40
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................. 29
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00003 (PTAB Oct. 25, 2012) ........................................................... 47
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................... 16, 17
`
`STATUTES
`35 U.S.C. § 312(a)(2) ................................................................................... 1, 2, 6, 49
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ................................................................................................... 20
`
`35 U.S.C. § 315(b) ..................................................................................................... 6
`
`35 U.S.C. § 326(b) ................................................................................................... 48
`
`iii
`
`
`
`
`OTHER AUTHORITIES
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`Pages
`
`37 C.F.R. § 42.1(b) .................................................................................................. 47
`
`37 C.F.R. § 42.8(b) .................................................................................................... 2
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 6
`
`37 C.F.R. § 42.20(c) ................................................................................................. 48
`
`37 C.F.R. § 42.73(d)(1) .............................................................................................. 2
`
`37 C.F.R. § 42.100(b) .............................................................................................. 16
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`77 Fed. Reg. 70385 .................................................................................................... 2
`
`77 Fed. Reg. 48612 .................................................................................................... 2
`
`MPEP § 2121.01 ...................................................................................................... 37
`
`MPEP § 2112(IV) .................................................................................................... 40
`
`
`
`iv
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`IPR2013-00594
`U.S. Patent 8,050,652
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`
`Exhibit #
`
`First Amended Complaint in Black Hills Media, LLC
`v. Yamaha Corp. of America, D. Del. 1:12-cv-00635.
`
`First Amended Complaint in Black Hills Media, LLC
`v. Pioneer Corp., et al., D. Del. 1:12-cv-00634.
`
`Black Hills Media Technology Tutorial Presented to
`Court at Scheduling Conference on November 12,
`2013, in in Black Hills Media, LLC v. Yamaha Corp.
`of America, C.D. Ca. 2:13-cv-06054 and Black Hills
`Media, LLC v. Pioneer Corp., et al., C.D. Ca. 2:13-
`cv-05980.
`
`Transcript of the November 12, 2013, Scheduling
`Conference in Black Hills Media, LLC v. Yamaha
`Corp. of America, C.D. Ca. 2:13-cv-06054 and Black
`Hills Media, LLC v. Pioneer Corp., et al., C.D. Ca.
`2:13-cv-05980.
`
`Pioneer’s Notice of Election Regarding Certain Inter
`Partes Reviews in Black Hills Media, LLC v. Pioneer
`Corp., et al., C.D. Ca. 2:13-cv-05980.
`
`Summons Returned Executed by Black Hills Media,
`LLC on Yamaha Corporation of America in Black
`Hills Media, LLC v. Yamaha Corp. of America, D.
`Del. 1:12-cv-00635.
`
`Summons Returned Executed by Black Hills Media,
`LLC on Pioneer Electronics (USA) Inc. in Black Hills
`Media, LLC v. Pioneer Corp., et al., D. Del. 1:12-cv-
`00634.
`
`Summons Returned Executed by Black Hills Media,
`LLC on Pioneer Corporation in Black Hills Media,
`LLC v. Pioneer Corp., et al., D. Del. 1:12-cv-00634.
`
`v
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`
`
`
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`UNDER 37 C.F.R. § 42.107
`
`Patent Owner Black Hills Media, LLC (hereafter “Black Hills” or “Patent
`
`Owner”) submits this Preliminary Response to the Petition seeking inter partes
`
`review of U.S. Patent No. 8,050,652 (the ‘652 Patent). This filing is timely under
`
`35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is being filed within three months of
`
`the mailing date of the Notice of Filing Date Accorded to Petition (Paper 3),
`
`mailed September 26, 2013.
`
`I.
`
`INTRODUCTION
`
`In seeking inter partes review of the ‘652 Patent, Yamaha Corporation of
`
`America (hereafter “Yamaha” or “Petitioner”) does not identify all real parties in
`
`interest, and thus fails to satisfy the statutory requirements of 35 U.S.C.
`
`§ 312(a)(2). Accordingly, the Board should terminate this proceeding without
`
`otherwise considering the substance of the Petition.
`
`Should the Board find that the Petitioner has complied with the statutory
`
`requirements of 35 U.S.C. § 312(a)(2), the Board should nonetheless deny the
`
`Petition as none of the references or combinations of references relied upon gives
`
`rise to a reasonable likelihood of the Petitioner prevailing with respect to any of the
`
`challenged claims of the ‘652 Patent.
`
`1
`
`
`
`
`
`II. THE PETITION MAY NOT BE CONSIDERED BECAUSE IT FAILS
`TO IDENTIFY ALL REAL PARTIES IN INTEREST
`
`IPR2013-00594
` U.S. Patent 8,050,652
`
`Yamaha’s Petition should be denied because it fails to identify all real
`
`parties in interest as required under 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b).
`
`“A petition filed under section 311 may be considered only if...the petition
`
`identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Rules also
`
`require that the petitioner provide certain mandatory notices, including identifying
`
`all real parties in interest. 37 C.F.R. § 42.8(b). This requirement is not a mere
`
`formality. Rather, a clear identification of the real party in interest is important to
`
`ensure both the proper application of the statutory estoppel provisions and the
`
`ability of the judges of the PTAB to recuse themselves in view of any conflict-of-
`
`interest apparent from the disclosure. See 37 C.F.R. § 42.73(d)(1) and Rules of
`
`Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review
`
`of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48612, 48617 (Aug. 14,
`
`2012). In addition, “[t]he identity of a real party in interest might also affect the
`
`credibility of evidence presented in a proceeding.” Notice of Roundtable on
`
`Proposed Requirements for Recordation of Real-Party-in-Interest Information
`
`Throughout Application Pendency and Patent Term, 77 Fed. Reg. 70385, 70386-87
`
`(Nov. 26, 2012). The petitioner has the burden to identify all real parties in
`
`interest. Failure to do so frustrates the purpose of the proceeding.
`
`2
`
`
`
`
`
`
`At a minimum, it appears that Pioneer Corporation and Pioneer Electronics
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`(USA) Inc. (collectively, “Pioneer”), are real parties in interest in this proceeding.
`
`Yamaha’s involvement with Black Hills arises out of Black Hills’ suit
`
`alleging infringement of the ‘652 Patent (among others) against Yamaha. See Ex.
`
`2003, First Amended Complaint in Black Hills Media, LLC v. Yamaha Corp. of
`
`America, D. Del. 1:12-cv-00635, which was subsequently transferred to C.D. Ca.
`
`2:13-cv-06054 (“Yamaha Litigation”). Black Hills also filed suit against Pioneer
`
`alleging infringement of the same set of patents, including the ‘652 Patent. See Ex.
`
`2004, First Amended Complaint in Black Hills Media, LLC v. Pioneer Corp., et
`
`al., D. Del. 1:12-cv-00634, which was subsequently transferred to C.D. Ca. 2:13-
`
`cv-05980 (“Pioneer Litigation”). Black Hills also filed suit against Sonos, Inc. and
`
`Logitech, Inc. at approximately the same time as filing the Yamaha complaint.
`
`In both the Yamaha and Pioneer Litigations, Black Hills alleges
`
`infringement of claim 1 of the ‘652 Patent against the same type of devices
`
`manufactured respectively by Yamaha and Pioneer. Namely, Black Hills alleges
`
`that Yamaha and Pioneer’s respective AV receivers, Networked Blu-ray players,
`
`and home theater systems infringe the ‘652 Patent. See Ex. 2005, at 8-9, Black
`
`Hills Media Technology Tutorial Presented to Court at Scheduling Conference on
`
`November 12, 2013. As such, Pioneer’s defense strategy with respect to the claim
`
`3
`
`
`
`
`
`construction and invalidity of the asserted claim in the litigation is aligned with
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`that of Yamaha.
`
`Yamaha is also being represented in the instant proceeding before the Board
`
`and in the Yamaha Litigation by the same counsel, David Fehrman. At a
`
`November 12, 2013, scheduling conference before Judge Otero, Mr. Fehrman
`
`provided a technology tutorial with respect to the ‘652 Patent, among others, on
`
`behalf of both Yamaha and Pioneer. Mr. Fehrman told the Court that “…assuming
`
`again that these [IPR] petitions are granted, the Defendants do plan to move for a
`
`stay of the proceedings.” See Ex. 2006, at p. 21:8-10, Transcript of the November
`
`12, 2013, Scheduling Conference in Black Hills Media, LLC v. Yamaha Corp. of
`
`America, C.D. Ca. 2:13-cv-06054 and Black Hills Media, LLC v. Pioneer Corp., et
`
`al., C.D. Ca. 2:13-cv-05980.
`
`On the issue of stay, Judge Otero asked whether there are other parties,
`
`besides Yamaha, “willing to stipulate to the findings, conclusions, and holdings,
`
`ruling of the PTO?” See Ex. 2006, at p. 42:4-10, Transcript of the November 12,
`
`2013, Scheduling Conference. While counsel for Sonos unequivocally stated that
`
`Sonos is “not willing to stipulate...,” Ex. 2006 at 43:18-10, counsel for Pioneer,
`
`however, stated that if the Court grants a stay, then Pioneer will “agree to be bound
`
`by the findings of the IPR…,” Ex. 2006 at 60:22-61:5. Subsequently, Pioneer filed
`
`a Notice of Election of Pioneer Corporation and Pioneer Electronics (USA) Inc.
`
`4
`
`
`
`
`
`Regarding Certain Inter Partes Reviews, stating that Defendants Pioneer agree to
`
`IPR2013-00594
` U.S. Patent 8,050,652
`
`be bound by the final decisions rendered in IPR2013-00593, IPR2013-00594,
`
`IPR2013-00597, and IPR2013-00598. See Ex. 2007 at 2, Pioneer’s Notice of
`
`Election Regarding Certain Inter Partes Reviews.
`
`Thus, Pioneer seeks the benefit of the present Petition and proceeding to
`
`help it receive a stay in the Pioneer Litigation, and, therefore, has a real interest in
`
`the present Petition.
`
`Clearly, at least the Pioneer entities, which are willing to be bound by the
`
`rulings of the PTO, appear to be in cooperation with Yamaha, and it is reasonable
`
`to infer that the Pioneer entities (and perhaps others) were engaged in the strategic
`
`planning, review, and possibly preparation of the present Petition. Black Hills
`
`submits that at least the Pioneer entities are real parties in interest to this
`
`proceeding, and Yamaha, who has the burden to identify the correct real parties in
`
`interest, has failed to do so. Notably, while Yamaha was served with the complaint
`
`on September 19, 2012 (see Ex. 2008), Pioneer Electronics (USA) Inc. was served
`
`with the complaint on September 14, 2012 (see Ex. 2009) and Pioneer Corporation
`
`was served with the complaint on September 17, 2012 (see Ex. 2010). Thus,
`
`because Yamaha filed the Petition more than one year from the date the Pioneer
`
`entities were served with the complaint, identifying Pioneer in the Petition as a real
`
`5
`
`
`
`
`
`party in interest would have violated the one year bar of 35 U.S.C. § 315(b),
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`suggesting, perhaps, why Pioneer was not identified as a real party in interest.
`
`Yamaha has failed to disclose all real parties in interest, thwarting both the
`
`purpose of the statutory estoppel that arises from this proceeding and the ability of
`
`the judges of the PTAB adjudicating this proceeding to adequately determine if
`
`they have a conflict of interest. In fairness to the PTAB and to Black Hills, the
`
`Petition should be denied and dismissed for noncompliance with 35 U.S.C.
`
`§ 312(a)(2) and 37 C.F.R. § 42.8(b)(1). Alternatively, Black Hills requests that it
`
`be permitted to take limited discovery of Pioneer and Yamaha on the issue of
`
`Pioneer’s participation in the preparation of the Petition.
`
`III. BACKGROUND OF THE ‘652 PATENT
`The ‘652 Patent is generally directed to methods and systems that provide a
`
`user with access to audio such as songs from remote sources, e.g., networked
`
`remote sources or web sites. The Petitioner challenges the validity 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 which claims 1, 21, and 42 are independent.
`
`Independent claim 1 recites an electronic device that comprises, inter alia, “a
`
`system enabling playback of audio content from a playlist assigned to the
`
`electronic device via the central system.” The electronic device of claim 1 further
`
`comprises “a control system associated with the network interface and the system
`
`6
`
`
`
`
`
`enabling playback of the audio content indicated by the playlist, and adapted
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`to…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 identifying a
`
`plurality of songs, wherein ones of the plurality of songs
`
`are not stored on the electronic device;
`
`
`
`receive information from the central system
`
`enabling the electronic device to obtain the ones of the
`
`plurality of songs from at least one remote source;
`
`
`
`obtain the ones of the plurality of songs from the at
`
`least one remote source; and
`
`
`
`play the audio content indicated by the playlist.”
`
`Each of challenged claims 2-4, 6-8, 10, 11, 13, and 14 depends directly or
`
`indirectly from independent claim 1 and recites additional limitations of the
`
`electronic device of claim 1.
`
`Independent claim 21 recites an electronic device that comprises, inter alia,
`
`“a system enabling playback of audio content from a plurality of additional content
`
`sources comprising a playlist assigned to the electronic device via the central
`
`system.” The electronic device of claim 21 further comprises “a control system
`
`associated with the network interface and the system enabling playback from the
`
`7
`
`
`
`
`
`additional content sources, and adapted to…iii) play the audio content from one of
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`IPR2013-00594
` U.S. Patent 8,050,652
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`the plurality of additional content sources when the desired mode of operation is a
`
`corresponding one of the plurality of additional modes of operation, where when in
`
`a playlist mode of operation, the control system is further adapted to:
`
`
`
`receive the playlist assigned to the electronic
`
`device from the central system, the playlist identifying a
`
`plurality of songs, wherein ones of the plurality of songs
`
`are not stored on the electronic device;
`
`
`
`receive information from the central system
`
`enabling the electronic device to obtain the ones of the
`
`plurality of songs from at least one remote source;
`
`
`
`obtain the ones of the plurality of songs from the at
`
`least one remote source; and
`
`
`
`play the audio content indicated by the playlist.”
`
`Each of challenged claims 22, 24-29, 31, 32, 34, and 35 depends directly or
`
`indirectly from independent claim 21 and recites additional limitations of the
`
`electronic device of claim 21.
`
`Independent claim 42 recites a method of operation for an electronic device
`
`that comprises, inter alia, “enabling a user of the electronic device to select a
`
`desired mode of operation from a plurality of modes of operation comprising… a
`
`8
`
`
`
`
`
`playlist mode of operation,” and “when the desired mode of operation is the
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`playlist mode of operation:
`
`
`
`i) receiving a playlist assigned to the electronic
`
`device via a central system, the playlist identifying a
`
`plurality of songs, wherein ones of the plurality of songs
`
`are not stored on the electronic device;
`
`
`
`ii) 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;
`
`
`
` iii) obtaining the ones of the plurality of songs
`
`from the at least one remote source; and
`
`
`
`iv) playing audio content indicated by the
`
`playlist.”
`
`Each of challenged claims 43-45, 47-50, 52, 53, 55, and 56 depends directly
`
`or indirectly from independent claim 42 and recites additional limitations of the
`
`method of operation of claim 42.
`
`Generally, the challenged claims of the ‘652 Patent relate to electronic
`
`devices and methods of operating electronic devices that enable a user to select
`
`various modes of operation, including a playlist mode of operation in which the
`
`electronic device receives an assigned playlist, obtains songs identified from the
`
`9
`
`
`
`
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`assigned playlist, and plays audio content for the songs identified in the playlist.
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`IPR2013-00594
` U.S. Patent 8,050,652
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`For example, as the patentees note:
`
`Thus, the network-enabled audio device provides people
`who are or are not comfortable with computers a way of
`taking music from various sources and putting it into one
`place for listening pleasure.
`
`‘652 Patent, 3:19-24.
`
`The ‘652 Patent was filed on November 27, 2006, as U.S. Application No.
`
`11/563,232. The ‘652 Patent claims priority as a continuation of U.S. Application
`
`No. 09/805,470, filed on March 12, 2001, which in part claims priority to U.S.
`
`Provisional Application No. 60/246,842, filed on Nov. 8, 2000 (hereafter “the ‘842
`
`Provisional,” a copy of which was provided as Exhibit 1006 by the Petitioner). In
`
`the following description of relevant teachings of the ‘652 Patent, parallel citations
`
`are provided to the ‘652 Patent and to the ‘842 Provisional.
`
`The ‘652 Patent provides various computing environments for network-
`
`enabled audio devices. Figure 11 of the ‘652 Patent, which is reproduced below,
`
`depicts an embodiment of a computing environment for a network-enabled audio
`
`device particularly relevant to the claims at issue in these proceedings. As shown
`
`in Figure 11 of the ‘652 Patent (and the ‘842 Provisional), the network includes
`
`network-enabled electronic device A (1110), network-enabled electronic device B
`
`(1108), and a personal computer 1106. These electronic devices interact with a
`
`10
`
`
`
`
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`server (1104) “through the network 1102 (such as the Internet).” ‘652 Patent,
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`16:56-60 (‘842 Provisional, 24:15-18).
`
`
`According to the ‘652 Patent, electronic devices (e.g., device A (1108) and
`
`device B (1110) of Figure 11, reproduced above) are assigned and can receive
`
`playlists and playlist content over a network (e.g., the Internet or otherwise). For
`
`example, when the network is a “home network,” an electronic device within the
`
`network “does not need to connect to the Internet and can retrieve the necessary
`
`file through the network connection.” ‘652 Patent, 30:19-26 (‘842 Provisional,
`
`24:23-28). The home network can be, for example, a “local area network (LAN)
`
`connection to a PC or other network-enabled audio device....” ‘652 Patent, 3:58-60
`
`(‘842 Provisional, 5:4-5).
`
`The ‘652 Patent describes that an electronic device in the network receives
`
`an assigned playlist that identifies the titles of a plurality of songs. See, e.g., ‘652
`
`11
`
`
`
`
`
`Patent, 4:29-30 (“The playlists include titles of audio from a variety of audio
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`IPR2013-00594
` U.S. Patent 8,050,652
`
`sources”) (‘842 Provisional, 5:29-30). The songs of the playlist are arranged to be
`
`played in a sequence. See, e.g., ‘652 Patent, 24:38-43 (‘842 Provisional, 35:28-
`
`31).
`
`The ‘652 Patent teaches that playlists can be assigned to an electronic
`
`device. In some embodiments, the same playlist can be assigned to multiple
`
`devices. For example, with reference to Figure 17C of the ‘652 Patent, both
`
`devices 1510 and 1520 in the user’s personal audio network can be assigned the
`
`same playlist. See, e.g., ‘652 Patent, 24:50-53 (‘842 Provisional, 36:5-7).
`
`In certain embodiments, the electronic device is configured to “connect to an
`
`Internet service provider to receive assignments of playlists….” ‘652 Patent, 2:37-
`
`39 (‘842 Provisional, 3:4-5). The electronic device can receive assignments of
`
`playlists from, for example, a server 1104 that is part of an Internet Personal Audio
`
`Network (“IPAN”). See, e.g., Figures 11 and 15 of the ‘652 Patent and the ‘842
`
`Provisional.
`
`When playlists are assigned to an electronic device from a server over the
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`Internet, the playlist can be assigned to the electronic device in response to
`
`“process block 1904 where the user logs into the server site IPAN 1433.” ‘652
`
`Patent, 28:11-14 (‘842 Provisional, 41:16-18). For example, “[w]hen the device
`
`1510 connects to the server site IPAN 1104, a playlist is assigned to it.” ‘652
`
`12
`
`
`
`
`
`Patent, 22:47-48 (‘842 Provisional, 33:1-2). “The user can list multiple devices as
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`IPR2013-00594
` U.S. Patent 8,050,652
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`being part of his or her IPAN.… The stored software module in each device
`
`connects to the server site home page, via the ISP, and inquires whether any songs
`
`or playlists have been assigned to the device.” ‘652 Patent, 3:48-54 (‘842
`
`Provisional, 4:26-30). The ‘652 Patent also provides:
`
`In one embodiment, the user is prompted for a password
`that is stored on the data storage device 210 or entered
`using the data-entry display 450. Establishing an account
`may include other actions, such as creating a username
`for the user…and entering information about the user and
`the user’s account.
`
`‘652 Patent, 12:32-38 (‘842 Provisional, 17:24-28).
`
`In another exemplary embodiment, playlists are assigned to the electronic
`
`device from a device on a user’s home network. For example, the electronic
`
`device can “receive assignments of playlists of songs from other network-enabled
`
`audio devices.… Optionally, a Local Area Network can be configured in place of,
`
`or in addition to, the Internet connection to facilitate assignments of playlists and
`
`other features.” ‘652 Patent, 2:61-3:1 (‘842 Provisional, 3:21-25).
`
`The ‘652 Patent describes a process that, in some embodiments, “checks to
`
`see what devices have the audio files listed in the playlist.” ‘652 Patent, 17:3-4
`
`(‘842 Provisional, 24:25). In some embodiments, the electronic device displays an
`
`13
`
`
`
`
`
`“empty cone… beside the song in the playlist” to indicate that the song is not
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`IPR2013-00594
` U.S. Patent 8,050,652
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`stored locally on the electronic device. ‘652 Patent, 17:21-23 (‘842 Provisional,
`
`25:4). See also, ‘652 Patent, 29:34-35 (‘842 Provisional, 43:17-18) (“Optionally,
`
`the icon can be a symbol other than an empty cone”). For example, as depicted in
`
`an excerpt from Figure 18D reproduced below, the electronic device displays an
`
`empty speaker cone next to song title “Hello Goodbye.mp3” to indicate that the
`
`song “Hello Goodbye” is not stored locally on the electronic device. In contrast, a
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`full speaker cone is displayed next to the song title “Animals – We Gotta Get Out
`
`Of This Place” to indicate that the song “We Gotta Get Out Of This Place” is
`
`locally stored on the electronic device.
`
`
`In other words, the electronic device can receive a playlist assigned to the
`
`electronic device (as in elements (c)(i) of each of independent claims 1, 21, and
`
`42), and if a song on the playlist is already on the electronic device, then it can be
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`played from the locally stored copy. If the song is not locally stored, then the
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`electronic device uses information it has received (as in elements (c)(ii) of each of
`
`independent claims 1, 21, and 42) to obtain the missing song (elements (c)(iii) of
`
`each of independent claims 1, 21, and 42).
`
`14
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`
`
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`
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`To be clear, none of the songs need be stored on the electronic device. The
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`IPR2013-00594
` U.S. Patent 8,050,652
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`‘652 Patent specifically states at column 4, lines 4-9 (‘842 Provisional 5:13-16):
`
`In one embodiment, the network-enabled audio device
`does not have any storage space other than memory.
`This embodiment provides for a low-cost system that can
`play songs from playlists stored on the IPAN Manager or
`on the PC's storage space without having to store the
`audio files locally.
`
`In some aspects, the ‘652 Patent provides that a user can select between
`
`various modes of operation. By way of example, in addition to selection of the
`
`playlist mode of operation as described above, the ‘652 Patent provides that a user
`
`can also select an audio source such as AM radio, FM radio, and “web” radio.
`
`8:42-46. For example, when the user selects the web radio mode of operation, the
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`device can connect to the Internet and can be provided a list of available Web
`
`broadcasts. See id. at 10:49-57. See also id. at Figure 5 and 12:14-13:7. The ‘652
`
`Patent further provides:
`
`Once a Web broadcast has been selected, the process
`advances to a process block 5220 where the intelligent
`radio 100 receives the Web broadcast. The CPU 202
`decodes and decompresses the received data as necessary
`and then sends the decompressed data to the DAC 220
`where it is converted to an analog signal that is
`subsequently played on the speakers 106, 108.
`
`15
`
`
`
`
`
`Id. at 12:62-13:1.
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`IPR2013-00594
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`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`A. A Person Having Ordinary Skill In The Art
`The Petitioner has proposed that a person of ordinary skill in the art would
`
`have “at least a bachelor’s degree in computer science or electrical engineering and
`
`at least one year of practical experience with networked multimedia.” Ex. 1002, ¶
`
`8 (emphasis added). Black Hills takes issue with this open-ended definition. For
`
`example, by this definition, a person with a Ph.D. and 10 years of experience
`
`would also be someone of “ordinary” skill in the art. Black Hills proposes instead
`
`that the Board adopt a close-ended version of Petitioner’s definition: a person of
`
`ordinary skill in the art would have a bachelor’s degree in computer science or
`
`electrical engineering and one year of practical experience with networked
`
`multimedia.
`
`B. Claim Construction
`In an inter partes review, a claim is construed using the “broadest reasonable
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`construction in light of the specification.” 37 C.F.R. § 42.100(b). A claim term is
`
`given its ordinary and customary meaning in the context of the specification as it
`
`would be understood by one of ordinary skill in the art. Phillips v. AWH Corp.,
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`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); In re Am. Acad. Of Sci. Tech. Ctr.,
`
`367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable construction of the
`
`16
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`
`
`
`
`claim language must take into account any definitions presented in the
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`IPR2013-00594
` U.S. Patent 8,050,652
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`specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
`
`“Playlist”
`
`1.
`The Petition does not put forward any meaning for this term except in the
`
`context of a combined term “playlist assigned to the electronic device.” Patent
`
`Owner suggests, however, that the term “playlist” be construed separately and in
`
`accordance with the specification to mean “a list referencing media items arranged
`
`to be played in a sequence.” As used in the ‘652 Patent, the term “playlist”
`
`denotes an ordered sequence. Otherwise, it would be a “list” and not a “playlist.”
`
`The ‘652 Patent further describes playlists as follows:
`
`FIG. 17B illustrates the display of an audio player
`window 1792 that includes a previous track button 1782,
`a play button 1784, a stop button 1786, and a next track
`button 1790. The audio player window 1792 is invoked
`by pressing the audio player window button 1704. A
`volume indicator 1794 displays the current volume. The
`user can click on the volume indicator 1794 t
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