Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 15
`
`
` Entered: March 20, 2014
`
`
`
`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 IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`Before BRIAN McNAMARA, STACEY G. WHITE, and PETER P. CHEN,
`Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 15
`
`
` Entered: March 20, 2014
`
`
`
`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 IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`Before BRIAN McNAMARA, STACEY G. WHITE, and PETER P. CHEN,
`Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`I.
`
`INTRODUCTION
`
`Yamaha Corporation of America (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1, 2, 6, and 9-12 of U.S. Patent No. 8,230,099 B2
`(Ex. 1001, “the ’099 patent”). Paper 1 (“Pet.”). Black Hills Media, LLC (“Patent
`Owner”) filed a preliminary response on December 26, 2013. Paper 10 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides as follows:
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we are
`persuaded the information presented by Petitioner has shown a reasonable
`likelihood that Petitioner would prevail in showing the unpatentability of claims 1,
`2, 6, and 9-12 of the ’099 patent. Accordingly, we grant the Petition and institute
`an inter partes review of these claims.
`
`A. Related Proceedings
`
`On May 22, 2012, the Patent Owner filed suit against Petitioner in the U.S.
`
`District Court for the District of Delaware, alleging infringement of several
`patents. See Black Hills Media, LLC v. Yamaha Corp. of Am., No. 1:12-cv-00635-
`RGA (D. Del.). On September 12, 2012, the Patent Owner filed a First Amended
`2
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`Complaint alleging, inter alia, infringement of the ’099 patent. The First Amended
`Complaint was served on September 19, 2012. The Patent Owner also has filed
`lawsuits alleging infringement of the ’099 patent 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. Pet. 2-3.
`
`The Patent Owner also initiated a Section 337 action in the U.S.
`International Trade Commission against LG, Sharp, Toshiba, Panasonic, and
`Samsung alleging, inter alia, infringement of the ’099 patent. See Certain Digital
`Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater
`Systems, Tablets and Mobile Phones, Components Thereof and Associated
`Software, Inv. No. 337-TA-882 (USITC). Id. at 3.
`
`B. Real Party-in-Interest
`
`Patent Owner asserts that Petitioner fails to identify all real parties-in-
`interest and requests the Petition be dismissed for noncompliance with 35 U.S.C.
`§ 312(a) and 37 C.F.R. § 42.8(b)(1). Prelim. Resp. 8-12. Patent Owner asserts that
`Pioneer Corporation and Pioneer Electronics (USA) Inc. (collectively “Pioneer”)
`should have been identified in the Petition as real parties in interest. Id. at 9.
`
`3
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`Patent Owner and Pioneer currently are engaged in a patent infringement lawsuit in
`parallel with the patent infringement lawsuit between Patent Owner and Petitioner.
`Id. AV receivers, networked Blu-Ray players, and home theater systems from
`Pioneer and Petitioner are alleged to infringe claim 1 of the ’099 patent. Id. Thus,
`according to Patent Owner, Pioneer and Petitioner are aligned on claim
`construction and invalidity of the claims asserted in the district court litigation. Id.
`Patent Owner also argues that Petitioner’s counsel in this proceeding has spoken
`on behalf of Petitioner and Pioneer at a district court technology tutorial directed to
`the ’099 patent. Id. at 10. Finally, Patent Owner states that Pioneer’s counsel
`agreed to be bound by the outcome of this proceeding if the district court would
`agree to stay the district court litigation. Id.
`On this record, we are not persuaded Pioneer is a real party in interest in this
`matter. A determination as to whether a non-party to an inter partes review is a
`real party-in-interest is a “highly fact-dependent question,” based on whether the
`non-party “exercised or could have exercised control over a party’s participation in
`a proceeding” and the degree to which a non-party funds, directs, and controls the
`proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759-60
`(Aug. 14, 2012). In other words, the question before us is whether there is a non-
`party “at whose behest the petition has been filed” or a relationship “sufficient to
`justify applying conventional principles of estoppel and preclusion.” Id.
`We are not persuaded Pioneer is in position to exercise control over
`Petitioner’s involvement in this proceeding. It is common for one lawyer to speak
`on behalf of multiple parties at a technology tutorial in patent infringement
`
`4
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`litigation. This can occur for efficiency purposes and does not, by itself, signify
`control over the decision making of the various entities in the litigation. In
`addition, while Pioneer and Petitioner both may be interested in the patentability of
`the ’099 patent claims, this does not mean that the parties have the same interests.
`Litigation alliances may arise for numerous reasons, including, but not limited to,
`parties having a similar perspective on one or more issues in a case. However, the
`existence of such alliances, alone, generally does not rise to the level that would
`require naming the ally/co-defendant as a real party-in-interest. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,760 (Aug. 14, 2012). We, therefore, will not deny
`the Petition for failure to comply with 35 U.S.C. § 312(a) and 37 C.F.R.
`§ 42.8(b)(1).
`
`C. The ’099 Patent
`
`The subject matter of the challenged claims of the ’099 patent relates
`
`generally to methods and devices for sharing playlists, and in particular, to a
`method for presenting a playlist on a wireless handheld remote control for
`selection for playback on a media player device associated with, but separate from,
`the remote control. Ex. 1001, col. 1, ll. 25-29, col. 9, ll. 1-8.
`Figure 2 of the ’099 patent is reproduced below.
`
`5
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`Figure 2 depicts an embodiment of the invention with a playlist communicated
`from server 11 to remote control 18 via Internet 12. Ex. 1001, col. 9, ll. 1-23.
`After the playlist has been communicated to the remote control, the playlist may be
`displayed on the remote control and used to choose which selection is to be played
`by dedicated media player 17. Id. at col. 9, ll. 5-8. The playlist may be
`communicated further to media player 17. Id. at col. 9, ll. 9-23. Thus, playlists
`may be stored in, displayed upon, and used to make selections from either
`
`6
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`dedicated media player 17, remote control 18, or both. Id. at col. 9, ll. 21-23. As
`summarized by Petitioner, the display of the playlist on the remote control allows
`the user to select a song to be played on the media player without physically
`making a selection at the media player. Pet. 5( citing Ex. 1001, col. 9, ll. 9-23).
`
`D. Illustrative Claim
`
`Claims 1, 2, 6, and 9-12 are the subject of the Petition. Claims 1 and 10-12
`are independent claims. Independent claim 1 is reproduced as follows:
`1.
`A method comprising:
`receiving, at a wireless handheld remote control, a playlist from
`a remote source; and
`presenting, at the wireless handheld remote control, the playlist
`to a first user associated with the wireless handheld
`remote control such that the first user is enabled to select
`at least one item from the playlist for playback by a
`media player device which is associated with and
`separate from the wireless handheld remote control.
`
`E. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following five prior art references.
`
`Reference
`Bi
`Gladwin
`Berman
`Janik ’558
`Janik ’902
`
`Ex. No.
`Title
`US 2002/0087996 A1 Ex. 1008
`WO 01/17142 A2
`Ex. 1009
`US 6,502,194 B1
`Ex. 1010
`US 2002/0068558 A1 Ex. 1011
`US 2002/0065902 A1 Ex. 1012
`
`7
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`F. The Asserted Grounds
`
`Petitioner contends the challenged claims are unpatentable based on four
`
`grounds, as follows.
`
`Reference(s)
`
`Bi
`Gladwin
`Berman
`Janik ’558 and
`Janik ’902
`
`Basis
`
`§ 102(b)
`§ 102(b)
`§ 103(a)
`
`Claims Challenged
`
`1, 2, 6, and 9-12
`1, 2, 6, 9, 11, 12
`1, 2, 6, 9, 11, 12
`
`§ 103(a)
`
`1, 2, 6, and 9-12
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`according to their broadest reasonable construction in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim terms
`are given their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner submits proposed
`constructions for two claim terms (“playlist” and “remote source”), and Patent
`Owner submits proposed constructions for two claim terms (“playlist” and “media
`player device”).
`
`8
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`Petitioner proposes that “playlist” is “a list of media items from which one
`or more selections may be made by a user.” Pet. 7-8. Patent Owner proposes that
`“playlist” is “a list referencing media items arranged to be played in a sequence.”
`Prelim. Resp. 6-7. The Specification states, “[a] playlist is a list of a user’s favorite
`selections.” Ex. 1001, col. 1, ll. 33-34. We are persuaded that the construction
`proposed by Patent Owner is too narrow and would exclude the embodiment
`described in the specification. For purposes of this Decision, we determine that the
`broadest reasonable interpretation of the term “playlist” consistent with the
`specification is “a list of media selections.”
`Patent Owner has not proposed a construction for “remote source,” which is
`a term found only in the claims of the ’099 patent, where it is not defined. We
`determine that the Petitioner’s proposed construction (“a source of a playlist that is
`separate from a remote control”) is reasonable and adopt that construction as the
`broadest reasonable interpretation for purposes of this Decision.
`Finally, Patent Owner has proposed that “media player device” be construed
`as “a device capable of playing audio or video or a combination of both, other than
`a general purpose computer.” The term “media player device” appears only in the
`claims of the ’099 patent, where it is not defined. The term “media player” is used
`throughout the Specification, and contrary to Patent Owner’s proposal, is described
`as a general purpose computer, for example, “the media player 17 may be a general
`purpose computer,” (id. at col. 8, ll. 62-63), and, “a general purpose computer may
`be used to request playlists that are then communicated from other general purpose
`computers or other dedicated media players to the user’s player device” (id. at col.
`
`9
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`3, ll. 29-32). Therefore, for purposes of this Decision, we determine the broadest
`reasonable construction of “media player device” is “a device capable of playing
`audio or video or a combination of both.”
`
`B. Claims 1, 2, 6, 9-12 – Anticipated by Bi
`
`Petitioner contends claims 1, 2, 6, and 9-12 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Bi. Pet. 10-20.
`Bi (Exhibit 1008)
`Bi is titled, “Interactive Remote Control of Audio or Video Playback and
`Selections.” Petitioner contends Bi discloses a system for an interactive remote
`control, which may be wireless, of an audio or playback application running on a
`personal computer or other computing platform. Pet. 11. Figure 2 of Bi is
`reproduced below.
`
`10
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`
`
`Figure 2 depicts data server 102 that provides digital audio or video data via the
`Internet or other network 101 to computing platform 110. Navigator 260 is a
`wireless remote control that communicates with computing platform 100 to control
`selection of audio or video data. Ex. 1008 ¶ 0020.
`
`Analysis
`
`Petitioner contends claims 1, 2, 6, and 9-12 are unpatentable under
`35 U.S.C. § 102(a) as anticipated by Bi. In support of this asserted ground of
`
`11
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`unpatentability, Petitioner provides detailed explanations as to how the subject
`matter of each claim is disclosed by Bi. Pet. 14-20. Patent Owner contends the
`playlist in Bi does not constitute the claimed playlist recited in independent claims
`1, 10, and 11. We have determined for purposes of this Decision that Patent
`Owner’s proposed construction of playlist is not the broadest reasonable
`construction, and that, for purposes of this Decision, a playlist is a list of media
`selections. See Section II.A above. On the record currently before us, we are
`persuaded that Bi’s “playlist” (Ex. 1008 ¶ 0032) discloses the “playlist” of the ’099
`patent.
`Patent Owner next contends that as to all four independent claims of the
`’099 patent, Bi fails to disclose receiving a playlist from a remote source. Prelim.
`Resp. 14-20. According to Petitioner, in Bi, a playlist is received by navigator 260
`from computing platform 100, which is a remote source. Ex. 1008 ¶ 0032
`(computing platform 100 sends the results of a local music browse, which can be
`based on playlists, to navigator 260). Patent Owner further contends that as to all
`four independent claims, Bi fails to disclose the user of the wireless handheld
`remote being enabled to select at least one item from the playlist for playback by a
`media player device. Bi, however, discloses “digital content can be controlled
`from a location away from the computing platform running the digital content
`playback application.” Id. at ¶ 0007, Fig. 7. Therefore, we are persuaded on the
`present record by Petitioner’s arguments on the disputed limitations. As to the
`remaining limitations of the independent claims, we have reviewed Petitioner’s
`
`12
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`supporting evidence and determine that Petitioner has made an adequate showing
`under 35 U.S.C. § 314(a).
`The Preliminary Response does not respond to Petitioner’s contentions on
`dependent claim 6, and reiterates for dependent claims 2 and 9 the arguments
`addressed above for the independent claims. For claim 2, we are persuaded by
`Petitioner’s argument that Bi discloses the limitation of claim 2 where the playlist
`further is communicated from the remote source to the media player device.
`Pet. 15, citing Ex. 1008 ¶ 0032. For the remaining dependent claims 6 and 9, we
`have reviewed Petitioner’s supporting evidence and determine that Petitioner has
`made an adequate showing under 35 U.S.C. § 314(a).
`Accordingly, on the present record, we are persuaded there is a reasonable
`likelihood of Petitioner prevailing in establishing the unpatentability of
`independent claims 1, and 10-12, and dependent claims 2, 6, and 9 of the ’099
`patent as anticipated by Bi.
`
`C. Claims 1, 2, 6, 9, 11, and 12: Anticipated by Gladwin
`
`Petitioner contends claims 1, 2, 6, 9, 11, and 12 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Gladwin. Pet. 21-26.
`
`Gladwin (Exhibit 1009)
`
`Gladwin is titled, “Structure and Method for Selecting, Controlling and
`Sending Internet-Based or Local Digital Audio to an AM/FM Radio or Analog
`Amplifier.” Petitioner contends Gladwin discloses a remote device interfacing
`with a personal computer that obtains audio from the Internet or other digital audio
`13
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`from any web server. Pet. 21-22 (citing Ex. 1009, col. 3, ll. 1-9). Figure 1 of
`Gladwin is reproduced below.
`
`
`In Figure 1, digital audio obtained by host PC 26 via the Internet is selected by
`remote device 22 to be played through a radio or stereo amplifier 28 using PC
`adapter 24. Ex. 1009, 3-4. The digital audio data is organized as a play list. Id. at
`4, ll. 13-14. Petitioner contends Gladwin “discloses precisely what was asserted to
`be missing from the prior art during the prosecution of the ’099 patent” – a
`wireless handheld remote for selecting an item from a playlist for playback on a
`separate media player device. Pet. 23-26 (citing Ex. 1009, 3-6, Figs. 1-6).
`
`Analysis
`
`Patent Owner’s two arguments against Gladwin as to the independent claims
`1, 11, and 12 of the ’099 patent both are premised on its proposed claim
`constructions for “playlist” and “media device player.” Prelim. Resp. 22-24.
`Patent Owner first contends the “playlist” in Gladwin is not the “playlist” of its
`
`14
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`proposed construction. We have determined that Patent Owner’s proposed
`construction is not the broadest reasonable construction, and that, for purposes of
`this Decision, a “playlist” is a list of media selections. See Section II.A above. On
`the record currently before us, we are persuaded that Gladwin’s “play list” (Ex.
`1009, 4, ll. 13-14) discloses the “playlist” of the ’099 patent.
`Patent Owner next contends the “media player device” in Gladwin is a
`general purpose computer. Patent Owner’s proposed construction of “media player
`device” excludes general purpose computers, but as stated in Section II.A above,
`we have determined, for purposes of this Decision, that Patent Owner’s proposed
`construction is not the broadest reasonable construction, and we construe “media
`player device” as a device capable of playing audio or video or a combination of
`both. For purposes of this Decision, we are persuaded that the PC in Gladwin (Ex.
`1009, 3-4) discloses the media player device of the ’099 patent. Thus, we are not
`persuaded by Patent Owner’s arguments against Gladwin based on its proposed
`claim construction. As to the remaining limitations of the independent claims, we
`have reviewed Petitioner’s supporting evidence and determine that Petitioner has
`made an adequate showing under 35 U.S.C. § 314(a).
`The Preliminary Response does not respond to Petitioner’s contentions on
`dependent claims 6 and 9. For claim 2, Patent Owner contends Gladwin fails to
`disclose the remote source sending a playlist to the PC. We are persuaded by
`Petitioner’s citation to the contrary of Gladwin’s disclosure that “[t]he PC software
`. . . gets digital audio data from audio files on the local disk and/or internet
`streaming audio data. This data is organized as a play list.” Ex. 1009, 4, ll. 12-14.
`
`15
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`For the remaining dependent claims 6 and 9, we have reviewed Petitioner’s
`supporting evidence and determine that Petitioner has made an adequate showing
`under 35 U.S.C. § 314(a).
`Accordingly, on the present record, we are persuaded there is a reasonable
`likelihood of Petitioner prevailing in establishing the unpatentability of
`independent claims 1, 11, and 12, and dependent claims 2, 6, and 9 of the ’099
`Patent as anticipated by Gladwin.
`
`D. Claims 1, 2, 6, 9, 11, and 12: Obvious Over Berman
`
`Petitioner contends claims 1, 2, 6, 9, 11, and 12 are unpatentable under
`35 U.S.C. § 103 as obvious over Berman. Pet. 27-35.
`
`Berman (Exhibit 1010)
`
`Berman is titled, “System for Playback of Network Audio Material on
`Demand.” Petitioner contends Berman discloses the use of a remote control that
`displays a playlist to select music for playback from a separate media playback
`device. Pet. 27-30 (citing Ex. 1010, Figs 1, 3, 13, and col. 3, ll. 33-39, col. 4,
`ll. 47-53, col. 5, ll. 42-67, col. 6, l. 64). An embodiment of Berman’s system is
`depicted in Figure 1, which is reproduced below.
`
`16
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`Figure 1 is a block diagram of Berman’s playback unit 100. Ex. 1010, col. 4, ll.17-
`19. Playback unit 100 receives audio material from audio material server 104, and
`access rights to this material are controlled by directory and user list (“DUL”)
`server 107. Id. at col. 4, ll. 51-53, 63-65. Playback unit 100 includes network
`interface 110 that facilitates communication with the servers over the internet.
`Id. at col. 5, ll. 11-13. Memory 116 temporarily stores audio for playback and
`processing. Id. at col. 6, ll. 6-8. In certain embodiments, the user may be
`permitted to record a song to memory. Id. at col. 8, ll. 4-6. Berman’s playback
`unit may receive input from a wireless remote control unit. Id. at col. 5, ll. 46-49.
`The remote control unit may be used to move through the song list and search for
`songs. Id. at col. 5, ll. 54-61, col. 13, ll. 51-64, Figs. 2 and 13.
`The operation of the playback unit is illustrated in Figure 3, which is
`reproduced below.
`
`17
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`Figure 3 is a processing flow diagram depicting the steps executed to request
`and receive audio material. Ex. 1010, col. 4, ll. 22-25. At step 302, the user
`selects a music category or type of song. Id. at col. 6, l. 65 – col. 7, l. 4. The
`playback unit then contacts the DUL server to confirm that the playback unit’s
`song list is up to date. Id. at col. 7, ll. 4-6, Fig. 3 step 304. If the song list is not up
`
`18
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`to date, the DUL server will send an updated song list to the device. Id. at col. 7,
`ll. 14-19, Fig. 3 steps 306 and 308. In certain embodiments, the song list may be
`updated to reflect the user’s preferred songs. Id. at col. 13, ll. 9-15. The user
`selects a song from the song list. Id. at col. 7, ll. 22-24. The DUL server then
`sends playback unit 100 the network address or URL for the requested song. Id. at
`col. 7, ll. 30-41. Playback unit 100 then uses that URL to obtain the requested
`sound file or streaming audio from the appropriate audio material server. Id. at
`col. 7, ll. 41-45, col. 8, ll. 32-34.
`
`Analysis
`
`Petitioner contends that Berman explicitly discloses all of the elements of
`the ’099 patent, with the exception of the remote control being wireless, which
`Petitioner asserts would have been obvious to one of skill in the art, citing the
`Declaration of Dr. Bove. Pet. 30 (citing Ex. 1002 ¶ 14). We note that Berman also
`explicitly discloses the playback unit “may also include a sensor, such as an
`infrared sensor 206, for receiving command signals from a remote control unit.”
`Ex. 1010, col. 5, ll. 46-48. Berman’s disclosure of a sensor suggests that the
`remote control unit is wireless. Thus, on the record before us, we are persuaded
`that the remote control of Berman could be implemented as a wireless unit.
`Patent Owner contends that for the independent claims of the ’099 patent,
`Berman fails to disclose a remote control that can present a playlist to the user.
`Petitioner argues that the playlist is presented on the graphical user interface of the
`remote control and enables the user to select at least one item for playback by the
`
`19
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`playback unit. Pet. 31 (citing Ex. 1010, col. 4, ll. 47-53, col. 5, l. 5 – col. 6, l. 49,
`col. 6, l. 64 – col. 7, l. 38). We determine that Petitioner has made an adequate
`showing under 35 U.S.C. § 314(a) for this and the other limitations of the
`independent claims 1, 11, and 12.
`The Preliminary Response does not respond to Petitioner’s contentions on
`dependent claims 6 and 9. For claim 2, Patent Owner contends Berman fails to
`disclose the remote source sending a playlist to the playback unit. We are
`persuaded by Petitioner’s citation to the contrary of Berman’s disclosure in Figure
`3 of the song list being sent by the DUL server to the playback unit. Id. at 32
`(citing Ex. 1010, Fig. 3 and col. 6, l. 64 – col. 7, l. 38). For dependent claims 6 and
`9, we have reviewed Petitioner’s supporting evidence and determine that Petitioner
`has made an adequate showing under 35 U.S.C. § 314(a). Accordingly, on the
`present record, we are persuaded there is a reasonable likelihood of Petitioner
`prevailing as to the unpatentability of independent claims 1, 11, and 12, and
`dependent claims 2, 6, and 9 of the ’099 patent, as obvious over Berman.
`
`E. Janik ’558 and Janik ’902
`
`On its final asserted ground of unpatentability, Petitioner contends claims 1,
`2, 6, and 9-12 of the ’099 patent would have been obvious over Janik ’558
`(“System and Method for Providing Content, Management, and Interactivity for
`Client Devices”) and Janik ’902 (“Webpad and Method for Using the Same”). On
`the present record, we are not persuaded there is a reasonable likelihood that Janik
`’558 and Janik ’902 render the challenged claims obvious. We agree with Patent
`
`20
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`Owner that neither Janik reference discloses the limitation recited in all of the
`challenged claims where the user is enabled to select at least one item from the
`playlist received from a remote source for playback by a media player device.
`Prelim. Resp. 36-37; see Ex. 1001, col. 11, ll. 19-27, col. 12, ll. 11-48. In
`particular, Janik ’558 states that “webpad 92 version of audio device content editor
`and audio device controller GUI allow the user to access playlists and tracks.” Ex.
`1011 ¶ 243. The audio device content editor in turn “provides the user with the
`ability to group audio files (tracks) into user-defined playlists” (id. at ¶ 147), but
`there is no disclosure of receipt by the audio device content editor of a playlist, or
`of a user’s ability to select a media item with the webpad version of audio device
`controller GUI. Prelim Resp. 36.
`Janik ’902 states that its “webpad 32 can be used to control a digital audio
`converter, a device that is a node on the LAN and is able to receive digital audio
`streams from PC, decode and convert the stream into analog signals that are
`plugged into any existing stereo system.” Ex. 1012 ¶ 0069. The selection of a
`target device, such as a digital audio converter, however, does not meet the
`claimed limitation of selecting a media item for playback.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded the information presented in the
`Petition establishes a reasonable likelihood that Petitioner would prevail in
`establishing unpatentability of claims 1, 2, 6, and 9-12 of the ’099 patent as
`
`21
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`anticipated by Bi, and of claims 1, 2, 6, 9, 11, and 12 as anticipated by Gladwin
`and as obvious over Berman.
`The Board has not made a final determination on the patentability of any
`challenged claim.
`
`IV. ORDER
`
`3.
`
`2.
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to the following claims and grounds:
`1.
`Claims 1, 2, 6, and 9-12 of the ’099 patent are unpatentable
`under 35 U.S.C. § 102(b) as anticipated by Bi;
`Claims 1, 2, 6, 9, 11, and 12 of the ’099 patent are unpatentable
`under 35 U.S.C. § 102(b) as anticipated by Gladwin;
`Claims 1, 2, 6, 9, 11 and 12 of the ’099 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Berman; and
`FURTHER ORDERED that all other grounds raised in the Petition are
`denied for reasons discussed above.
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; the trial commences on
`the entry date of this decision; and
`FURTHER ORDERED that an initial conference call with the Board is
`scheduled for 4:00 PM, Eastern Time on April 9, 2014; the parties are directed to
`
`22
`
`
`
`
`Case IPR2013-00597
`Patent 8,230,099 B2
`
`the Office Trial Practice Guide1 for guidance in preparing for the initial conference
`call, and should be prepared to discuss any proposed changes to the Scheduling
`Order entered herewith and any motions the parties anticipate filing during the
`trial.
`
`
`PETITIONER:
`
`David L. Fehrman
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`marjomand@mofo.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`BLACK HILLS MEDIA, LLC
`ted.thomas@sceneralabs.com
`
`
`
`
`1 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66 (Aug. 14,
`2012).
`
`23
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
