IPR2013-00597
`U.S. Patent No. 8,230,099
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
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`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2013-00597
`U.S. Patent 8,230,099
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`___________________
`
`
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. §42.120
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`#26998189 v2
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`U.S. Patent No. 8,230,099
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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 No. IPR2013-00597
`U.S. Patent 8,230,099
`
`___________________
`
`
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. §42.120
`
`
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`#26998189 v2
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`TABLE OF CONTENTS
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`IPR2013-00597
`U.S. Patent No. 8,230,099
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`Page
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`I.
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`II.
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`INTRODUCTION .......................................................................................... 1
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`SUMMARY OF THE ‘099 PATENT ............................................................ 2
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`III. SUMMARY OF CLAIMS UNDER REVIEW .............................................. 4
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`IV. CLAIM CONSTRUCTION ........................................................................... 7
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`1.
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`2.
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`3.
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`4.
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`Legal Standard ........................................................................... 7
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`A Person of Ordinary Skill in the Art ........................................ 7
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`“Playlist” .................................................................................... 8
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`“A wireless handheld remote control which is associated
`with and separate from the media player device.” ................... 14
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`V.
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`SUMMARY OF ALLEGED PRIOR ART .................................................. 16
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`1.
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`2.
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`3.
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`U.S. Patent No. 2002/0087996 to Bi (“Bi”) ............................ 16
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`International patent application WO 01/17141 to
`Gladwin (“Gladwin”) ............................................................... 18
`
`U.S. Patent No. 6,502,194 to Berman (“Berman”) .................. 19
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`VI. LEGAL STANDARDS ................................................................................ 22
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`A.
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`B.
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`The Law of Anticipation .................................................................... 22
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`The Law of Obviousness .................................................................... 22
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`VII. ARGUMENTS ............................................................................................. 24
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`A.
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`Claim 2 Is Patentable .......................................................................... 24
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`1.
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`2.
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`Claim 2 Is Not Anticipated By Bi ............................................ 25
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`Claim 2 Is Not Anticipated By Gladwin .................................. 27
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`Claim 2 Is Not Rendered Obvious By Berman........................ 28
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`3.
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`B.
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`Claim 6 Is Patentable .......................................................................... 31
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`1.
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`2.
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`3.
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`Claim 6 Is Not Anticipated By Bi ............................................ 31
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`Claim 6 Is Not Anticipated By Gladwin .................................. 33
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`Claim 6 Is Not Rendered Obvious By Berman........................ 33
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`C.
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`Claim 10 Is Patentable ........................................................................ 35
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`1.
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`Claim 10 Is Not Anticipated By Bi .......................................... 36
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`D.
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`Claim 11 Is Patentable ........................................................................ 38
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`1.
`
`2.
`
`3.
`
`Claim 11 Is Not Anticipated By Bi .......................................... 38
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`Claim 11 Is Not Anticipated by Gladwin ................................ 40
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`Claim 11 Is Not Rendered Obvious by Berman ...................... 41
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`E.
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`Claim 12 Is Patentable ........................................................................ 45
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`1.
`
`2.
`
`3.
`
`4.
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`Claim 12 Is Not Anticipated by Bi .......................................... 45
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`Claim 12 Is Not Anticipated By Bi .......................................... 45
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`Claim 12 Is Not Anticipated By Gladwin ................................ 46
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`Claim 12 Is Not Rendered Obvious By Berman ..................... 46
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`VIII. CONCLUSION ............................................................................................. 47
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`IPR2013-00597
`U.S. Patent No. 8,230,099
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed.
`Cir. 1998) ............................................................................................................ 22
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`Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) .............. 22
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`Phillips v. AWH Corp. at 1314 (Fed. Cir. 2005) ................................................ 15, 24
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`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) .............................................. 37
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`Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.
`Cir. 1991) ............................................................................................................ 22
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`Soundscriber Corp. v. United States, 175 Ct. Cl. 644, 360 F.2d 954, 960
`(1966) .................................................................................................................. 22
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`Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
`2010) ................................................................................................................... 37
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`STATUTES
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`35 U.S.C. § 102(b) .................................................................................................... 1
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`35 U.S.C. § 103(a) .................................................................................................... 1
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`35 U.S.C. § 314 .......................................................................................................... 1
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.121 ..................................................................................................... 1
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`37 C.F.R. § 42.100(b) ................................................................................................ 7
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`IPR2014-00302
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`Page(s)
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`TABLE OF EXHIBITS
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`Previously filed
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`Exhibit Description
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`Exhibit #
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`First Amended Complaint in Black Hills Media, LLC
`v. Yamaha Corp. of America, D. Del. 1:12-cv-00635.
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`First Amended Complaint in Black Hills Media, LLC
`v. Pioneer Corp., et al., D. Del. 1:12-cv-00634.
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`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.
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`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.
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`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.
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`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.
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`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.
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`IPR2014-00302
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`Page(s)
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`2010
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`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.
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`New
`
`Exhibit Description
`Declaration of Gareth Loy, D.M.A in support of Patent
`Owner’s Response
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`Exhibit #
`2011
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`Deposition Transcript of Petitioner’s expert, V. Michael 2012
`
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`Bove, Jr. dated 5/29/2014 and Exhibits attached thereto
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`“Microsoft Windows Media Player 7 Hanbook,”
`Microsoft Press, ISBN 0-7356-1 178-5, Copyright
`©2000
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`2022
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`Deposition Transcript of Petitioner’s expert, V. Michael 2028
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`Bove, Jr. dated 5/30/2014 and Exhibits attached thereto
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`IPR2013-00597
`U.S. Patent No. 8,230,099
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`I.
`
`INTRODUCTION
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`Yamaha Corporation of America (“Petitioner”) filed on September 19, 2013
`
`a petition for inter partes review of U.S. Patent No. 8,230,099 (“the ‘099 patent”)
`
`entitled “System and Method for Sharing Playlists.” [Paper 1]. The Patent Owner
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`filed a Preliminary Response on December 26, 2013. [Paper 10]. The Patent Trial
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`and Appeals Board (“Board”) instituted an inter partes review on March 20, 2014,
`
`pursuant to 35 U.S.C. §314, with respect to the following claims and grounds:
`
`[paper 15, p. 22]
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`1.
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`Claims 1, 2, 6, and 9 – 12 based on anticipation under 35
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`U.S.C. §102(b) by U.S. Patent Application No. 2002/0087996
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`of Bi (“Bi”).
`
`2.
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`Claims 1, 2, 6, 9, 11, and 12 based on anticipation under 35
`
`U.S.C. §102(b) by International Publication No. WO 01/17142
`
`of Gladwin (“Gladwin”).
`
`3.
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`Claims 1, 2, 6, 9, 11 and 12 based on obviousness under 35
`
`U.S.C. §103(a) by U.S. Patent No. 6,502,194 of Berman
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`(“Berman”).
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`Concurrent with this paper, the Patent Owner files a Motion to Amend
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`Claims, pursuant to 37 C.F.R. §42.121, to cancel independent Claim 1 and Claim
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`9, which depends on Claim 1. No other amendment is presented in the Motion to
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`Amend Claims. The Patent Owner requested leave and authorization from the
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`Board to file this motion on June 10, 2014. The Board authorized the Patent
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`Owner to file the aforementioned Motion to Amend Claims on June 12, 2014.
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`The Patent Owner respectfully contends that the remaining claims 2, 6, 10,
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`11 and 12 are patentable in view of the grounds based on which the inter partes
`
`review is instituted.
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`II.
`
`SUMMARY OF THE ‘099 PATENT
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`The ‘099 patent relates to systems and methods for sharing playlists. As
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`described in the Background section of the ‘099 patent, the prior art playlist
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`sharing systems “possess inherent deficiencies, which detract from their overall
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`effectiveness and desirability.” [Ex. 1001 at 2:3-5]. “For example, according to
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`contemporary methodology, playlists are only communicated to and used with
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`general purpose computers, such as IBM compatible personal computers (PCs) and
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`Apple computers.” [Ex. 1001 at 2:6-9]. “Therefore, it is desirable to provide
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`system and method for sharing playlists, wherein the playlists are communicated
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`to, stored in, and displayed upon player devices other than general purpose
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`computers.” [Ex. 1001 at 2:21-24].
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`In view of the above background, the ‘099 patent describes the invention as
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`“a system and method for sharing playlists, wherein the playlists are
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`communicated to, stored in, and displayed upon player devices other than general
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`purpose computers.” [Ex. 1001 at 11:4-7].
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`In one aspect, the ‘099 patent provides a method in which a playlist is
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`communicated, e.g., from a server, to a remote control. After the playlist has been
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`communicated to the remote control, “the playlist may be displayed thereon and
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`thus used to choose which selection therefrom is to be played” by a media player.
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`[Ex. 1001 at 9:1-8].
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`FIG. 2 of the ‘099 patent, which is reproduced below, depicts an
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`embodiment of the invention in which a playlist can be communicated from a
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`server 11 via the Internet 12 to a remote control 18 for a dedicated media player
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`17, which is not a general purpose computer. The playlist can be displayed on the
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`remote control 18 to allow a user to make selections therefrom to be played by the
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`dedicated media player. [Ex. 1001 at 17. 9:1-8].
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`FIG. 5 of the ‘099 patent, which is also reproduced below, depicts an
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`embodiment of the invention in which a remote control 48 can communicate, via
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`the Internet 42, with a plurality of clients 43-46 on a peer-to-peer basis. [Ex. 1001
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`at 9:54 – 10:27].
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`A playlist of a client can be communicated to the remote control 48, where
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`the playlist can be stored and used. [Ex. 1001 at 10:20-26]. The playlists may
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`subsequently be forwarded to another device, such as a dedicated media player 47.
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`[Ex. 1001 at 10:26-27]. “After the playlist has been communicated to the remote
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`control 48, the playlist may be displayed thereon and thus used to choose which
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`selection therefrom is to be played.” [Ex. 1001 at 10:28-30].
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`III. Summary of Claims Under Review
`Claim 1 recites a method, which comprises receiving, at a wireless handheld
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`remote control, a playlist from a remote source; and presenting, at the wireless
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`handheld remote control, the playlist to a first user associated with the wireless
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`handheld remote control such that the first user is enabled to select at least one
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`item from the playlist for playback by a media player device which is associated
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`with and separate from the wireless handheld remote control.
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`As noted above, in a Motion to Amend Claims filed concurrently with this
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`Patent Owner’s Response, the Patent Owner moves to cancel independent Claim 1.
`
`Accordingly, the Patent Owner will not discuss the instituted grounds with respect
`
`to Claim 1.
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`Claim 2 depends on Claim 1, and recites that the playlist is further
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`communicated from the remote source to the media player device.
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`Claim 6 depends on Claim 1, and recites that the remote source is a central
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`server.
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`Claim 9 depends on Claim 1, and recites that the remote source is the media
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`player device.
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`Similar to Claim 1, the Patent Owner moves in the Motion to Amend Claims
`
`to cancel claim 9. Accordingly, the Patent Owner will not discuss the instituted
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`grounds with respect to Claim 9.
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`Claim 10 is an independent claim and recites a wireless handheld remote
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`control, which comprises a communication interface communicatively coupling the
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`wireless handheld remote control to a remote source via a network; and a control
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`system associated with the communication interface and adapted to: receive a
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`playlist from the remote source; and present the playlist to a first user associated
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`with the wireless handheld remote control such that the first user is enabled to
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`select at least one item from the playlist for playback by a media player device
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`which is associated with and separate from the wireless handheld remote control.
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`Claim 11 is an independent claim and recites a method, which comprises
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`receiving, at a media player device, a playlist from a remote source; and
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`communicating the playlist from the media player device to a wireless handheld
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`remote control associated with and separate from the media player device, wherein,
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`at the wireless handheld remote control, the playlist is presented to a first user
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`associated with the wireless handheld remote control and used by the first user to
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`select at least one item from the playlist for playback by the media player device.
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`Claim 12 is an independent claim and recites a media player device, which
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`comprises a communication interface communicatively coupling the media player
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`device to a remote source via a network; and a control system associated with the
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`communication interface and adapted to: receive a playlist from the remote source;
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`and communicate the playlist from the media player device to a wireless handheld
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`remote control which is associated with and separate from the media player device,
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`wherein, at the wireless handheld remote control, the playlist is presented to a first
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`user associated with the wireless handheld remote control and used by the first user
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`to select at least one item from the playlist for playback by the media player
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`device.
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`IV. Claim Construction
`Legal Standard
`1.
`In an inter partes review, a claim of an unexpired patent is construed using
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`the “broadest reasonable construction in light of the specification.” 37 C.F.R.
`
`§42.100(b);. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
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`14, 2012). A claim term is given its ordinary and customary meaning in the
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`context of the specification as it would be understood by one of ordinary skill in
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`the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); In
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`re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
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`broadest reasonable construction of the claim language must take into account any
`
`definitions presented in the specification. Id. (Citing In re Bass, 314 F.3d 575, 577
`
`(Fed. Cir. 2002)).
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`A Person of Ordinary Skill in the Art
`
`2.
`As stated in the Patentee’s Preliminary response, the Patentee submits that a
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`person of ordinary skill in the art is a person with a bachelor’s degree in computer
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`science or electrical engineering and one year of practical experience with
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`networked media. [Paper 10 at 5-6]. The Petitioner proposed definition as a
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`person of ordinary having “at least a bachelor’s degree in computer science or
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`electrical engineering and at least one year of practical experience with networked
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`media” is improper because it is open-ended and would include persons who are
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`over-qualified to be considered of “ordinary skill” in the art. [Ex. 1002 at 8].1 For
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`this reason, the Board should reject Petitioner’s open-ended definition and adopt
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`the closed-ended definition proposed by the Patentee.
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`“Playlist”
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`3.
`The Petitioner had proposed that the term “playlist” be construed as a “list of
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`media items from which one or more selections may be made by a user.” [Paper 15
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`at pp. 7-8]. The Patent Owner had in turn proposed that the term “playlist” be
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`construed as “a list referencing media items arranged to be played in a sequence.”
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`[Paper 6 at pp. 6-7]. The Board indicated that for the purposes of the Institution
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`Decision, the broadest reasonable interpretation of the term “playlist” consistent
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`with the specification is “a list of media selections.” [Paper 15 at p. 9.]
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`The Patent Owner respectfully contends that the Board’s construction for the
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`term “playlist” is not consistent with the way that term is used in the specification
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`of the ‘099 patent, and ignores that the specification of the ‘099 patent makes clear
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`that the media items to which a playlist refers are arranged to be played in a
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`sequence.
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`1Notably, Dr. Bove appears to not qualify as a person of ordinary skill in the
`art according to his own definition as he does not have even one year of practical
`experience with networked media. Ex. 2028, Bove deposition Trans. dated
`05/30/2014.
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`The Board indicates that the specification of the ‘099 patent states that “[a]
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`playlist is a list of a user’s favorite selections.” [Paper 15, p. 9; Ex. 1001 at 1: 33-
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`34]. The paragraph of the ‘099 patent in which the above sentence appears is
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`reproduced below:
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`Playlists for music and movies are well known. A playlist is a list of a
`user’s favorite selections. Popular personal computer (PC) media
`playing programs, such as Windows Media Player (a trademark of
`Microsoft Corporation), offer the capability for a user to compile a
`playlist. The user may subsequently select items to be played from
`the playlist and the media playing program then plays the selected
`items. The use of such a playlist simplifies the selection process and
`thus makes listening to music or viewing movies easier and more
`enjoyable. [Ex. 1001 at 1:33-42].
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`As indicated in the Declaration of Patent Owner’s expert, Dr. Gareth Loy
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`(“Dr. Loy’s Declaration”), it was well known in the timeframe of the ‘099 patent
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`(i.e., 2004) that a playlist generated by Windows Media Player (a trademark of
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`Microsoft Corporation) is a list of media items that are arranged to be played in a
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`sequence. [Ex. 2011 at ¶42].
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`For example, the Windows Media Player 7 Handbook describes the
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`“shuffle” function as follows: “This plays the items in the current playlist in a
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`random order. It does not change the order of the items in the playlist, only the
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`order in which they are played while the shuffle option is selected.” [Ex. 2022 at
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`p. 40]. The description of the “shuffle” function makes clear that the items in a
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`playlist generated by the Windows Media Player are arranged according to an
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`order to be played. If the items in a playlist generated by a Windows Media Player
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`were not arranged according to an order to played, the statement that the shuffle
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`function does not change the order in which they are played would make no sense.
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`The reference to the “playlist” in the ‘099 patent is not limited to the above
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`paragraph. In fact, the ‘099 patent makes multiple references to the term
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`“playlist,” all of which are consistent with the construction of that term as
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`proposed by the Patent Owner. For example, the ‘099 patent specifies: “The player
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`device is configured to receive a playlist, queue the playlist, display the playlist,
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`and play a selection from the playlist.” [Ex. 1001 at Abstract] (emphasis added).
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`As explained in Dr. Loy’s Declaration, one of ordinary skill in the art would under
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`the phrase “queue the playlist” to mean that the play device would play the entire
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`media content of the playlist in sequence. [Ex. 2011 at ¶44].
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`The ‘099 patent also states:
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`“Playlists also facilitate the playing of a plurality of selections in a
`particular sequence. That is, the playlist may be compiled in an order
`in which the playing of selections therefrom is desired. The selections
`may then be automatically played sequentially from the playlist.
`Typically, the selections may be played randomly from a playlist.”
`[Ex. 1001 at 1:45-52] (emphasis added).
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`The above passage further corroborates Patent Owner’s construction of the
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`term “playlist” by indicating that a playlist allows a user to listen to a plurality of
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`selections in a particular order. As discussed in Dr. Loy’s Declaration, one of
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`ordinary skill in the art would understand the above passage to mean that the
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`playlist may be compiled in an order that is desired by a user, or the user may not
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`have an input regarding the order in which the media items are played. [Ex. 2011
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`at ¶46]. Further, in some instances, the selections may be played randomly from
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`the playlist. Whether the selections are played randomly or in the original order in
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`which they are presented in the playlist, it is clear that in all cases, the playlist is a
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`list of media items that are arranged to be played in a sequence.
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`The ‘099 patent further recites:
`
`“Playlists are typically compiled by reviewing a list of selections
`available for play and then choosing those selections that the user
`would like to have on the playlist. Thus, a user may review songs that
`are stored on a personal computer’s hard drive and compile a playlist
`therefrom, for example.” [Ex. 1001 at 1:54-56] (emphasis added).
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`As indicated in Dr. Loy’s Declaration, in the time frame of the ‘099 patent, it
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`was well known to one of ordinary skill in the art that compiling a playlist meant
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`arranging a list of songs such that the songs can be played in a sequential order.
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`[Ex. 2011 at ¶48].
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`In another passage, the ‘099 patent states:
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`“The sharing of playlists in also known. Popular file sharing
`programs, such as Kazaa (a trademark of Sharman Networks),
`facilitate the sharing of playlists. Using such systems, it is possible for
`a user to download a list of songs or movies that another individual
`has compiled. This list may then be used to make or modify a playlist
`for the user. [Ex. 1001 at 1:64-2:2] (emphasis added).
`
`The above passage distinguishes a “list of songs” from a “playlist.” It
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`further distinguishes compiling a list of songs from compiling a playlist.
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`The ‘099 patent also states:
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`“The present invention provides the ability for non-computer devices
`to display and play playlists from a central computer running on the
`Internet.” [Ex. 1001 at 10:61-63]
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`As state by the Patent Owner’s expert, Dr. Loy, one of ordinary skill in the
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`art will understand that to play a playlist means to play the entire playlist in
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`sequence. [Ex. 2011 at ¶54].
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`During his deposition, the Petitioner’s expert, Dr. Michael Bove,
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`unequivocally admitted several times that a playlist, by virtue of it being a list,
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`necessarily has an order to it. See, e.g., Ex. 2012 at 217:11-218:7; 294: 3-4;
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`217:17-18 (stating that “a list implies that the items appear in an order”). Dr. Bove
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`further stated that “commonly a user interface would provide the ability to play the
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`items in the sequence in which they appear.” Id. at 218:2-5.
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`Although on re-direct examination by the Petitioner’s counsel, Dr. Bove
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`indicated the he believed that the Board’s construction of the term “playlist” is
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`consistent with the broadest reasonable construction of that term, Dr. Bove
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`reiterated, on re-cross examination, that a playlist “contains items in an order.” Id.
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`at 294: 3-4. Specifically, in the following exchange on re-direct examination, Dr.
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`Bove indicated that he believed that the Board’s construction of “playlist” was
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`consistent with the specification of the ‘099 patent:
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`Q
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`So do you believe that the board’s construction is consistent
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`with the broadest reasonable construction consistent with the
`
`specification?
`
`A
`
`Q
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`Yes, I believe that’s consistent construction.
`
`Okey.
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`And there may be other reasonable constructions, but that’s the
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`broadest construction, reasonable construction that’s consistent with
`
`the specification?
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`A
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`It would be hard to make broader. It has so few words in it. [Ex.
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`2012 at 280:19 – 281:7].
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`Subsequently, on re-cross examination, counsel directed Dr. Bove’s
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`attention to the passage in the ‘099 patent [Ex. 1001 at 1:33-37], which describes
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`that programs, such as Windows Media Player, offer the capability to compile a
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`playlist. [Ex. 2012 at p. 292: 8 - 15]. Counsel then asked Dr. Bove: “… isn’t it
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`true that a playlist that the Windows Media Player makes has an order no matter
`
`how that list ultimately gets generated?” [ Ex. 2012 at p. 293:23 - 294:1].
`
`Dr. Bove responded:
`
`A Yes.
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`As we discussed earlier, it being a list, contains items in an order. [Ex.
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`2012 at p. 294:2 - 4].
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`For the foregoing reasons, the Patent Owner respectfully requests that the
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`Board adopt the Patent Owner’s construction of the term playlist as “a list
`
`referencing media items arranged to be played in a sequence” as the broadest
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`reasonable construction of that term in view of the specification of the ‘099 patent.
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`4.
`
`“A wireless handheld remote control which is associated
`with and separate from the media player device.”
`
`The phrase “a wireless handheld remote control which is associated with and
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`separate from the media player device” appears in independent claims 10, 11, and
`
`12.
`
`As discussed in Dr. Loy’s Declaration, one of ordinary skill in the art would
`
`understand from the ‘099 patent that “a wireless handheld remote control which is
`
`associated with and separate from the media player device” means “a handheld
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`remote control that can operate as an independent device relative to the media
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`player that it control.” [Ex. 2011 at ¶60] (emphasis in original).
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`The specification of the ‘099 patent including the language of the claims
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`themselves support this construction. Specifically, each of the claims 10, 11, 12
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`recites both “remote” and “separate” to qualify the handheld control device and its
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`relationship relative to the media player device. The term “remote” conveys a
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`physical separation between the handheld device and the media player device.
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`Accordingly, the term “separate” should be construed to have a meaning that
`
`is not limited by only physical separation. Rather, as discussed in more detail
`
`below, the term “separate” should be construed to mean that the handheld remote
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`control can operate independently of the media player device. See, e.g., Phillips v.
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`AWH Corp. at 1314 (Fed. Cir. 2005) (“Quite apart from the written description and
`
`the prosecution history, the claims themselves provide substantial guidance as to
`
`the meaning of particular claim terms.”).
`
`As discussed in detail in Dr. Loy’s Declaration [Ex. 2011 at ¶61], the
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`specification of the ‘099 patent makes clear that in certain embodiments the remote
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`control can receive playlists from a remote source via a network (e.g., the Internet)
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`without any reliance on the media player device. [See, e.g., Ex. 1001 at FIGs. 2
`
`and 5]. For example, the ‘099 patent states:
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`Referring now to FIG.2, rather than communicating a playlist to the
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`dedicated media player 17, the playlist may alternatively be
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`communicated to a remote control 18 for the dedicated media player.
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`[Ex. 1001 at 9:1-4].
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`The ‘099 patent further states:
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`The user’s device may be, for example, the dedicated media player 17
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`of FIGS. 1 and 2, or may alternatively be the remote control 18 of
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`FIG. 2. [Ex. 1001 at 9:20-27] (emphasis added).
`
`The above passage indicates that the remote control 18 itself, rather than the
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`media player 17, can be the user’s device. Hence, the specification of the ‘099
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`patent makes clear that the handheld remote control can function independently of
`
`the media player device.
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`V.
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`SUMMARY OF ALLEGED PRIOR ART
`1.
`Bi discloses a “system for interactive remote control wired or wireless, of an
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`U.S. Patent No. 2002/0087996 to Bi (“Bi”)
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`audio or video playback application running on a personal computer or other
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`computing platform.” [Ex. 1008 at Abstract]. As depicted in Figure 1 of Bi, which
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`is reproduced below, Bi’s system includes a computing platform 100 and an
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`interactive remote control device, referred to as navigator 260. [Ex. 1008 at
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`¶0018]. An audio or video player application 151 running on the computing
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`platform 100 is “configured to receive digital audio or video data 103 from local
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`storage device 112 on the computing platform 100 or from a data server 102
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`connected to the computing platform 100 by the Internet or other computer
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`network 101.” Id.
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`The navigator 260 acts as a remote control and allows the user to provide
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`input to and receive feedback from, the audio or video application 151 running on
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`the computing platform 100. [Ex. 1008 at 0028]. As shown in Figure 7, which is
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`reproduced below, the user can use the navigator 260 to send one of the following
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`commands to the computing platform 100: (1) “play a music file,” “download
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`music file(s),” “buy music file,” and “browse music,” “update software,” and
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`“system start up.” [Ex. 1008 at FIG. 7].
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`A navigator control manager 154, which runs on the computing platform
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`100 and may be part of the audio or video player application 151, receives user
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`inputs from the navigator 260 and interprets the received user inputs into
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`commands and actions for the audio or video player application 151. [Ex. 1008 at
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`¶¶0019;0031]. The navigator control manager 154 provides the results from the
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`commands and actions of the audio or video player application 151 as user outputs
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`to the user on the navigator 260. [Ex. 1008 at ¶0031].
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`If the navigator control manager 154 receives a “play a music file”
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`command 177, it finds “address of the music file” 178 and then it sends
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`“information to navigator, such as title, artist, and album name of this music file,
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`for display” 179, and then it starts step 180 of “audio playback for this music file.”
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`[Ex. 1008 at ¶0032]. When the navigator control manager 154 receives a “browse
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`music” command 188, if the received command is a command to “browse local
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`music;” it searches the local database 190 and then sends results to navigator 191;
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`and if the “browse music” command is not a “browse local music,” the navigator
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`control manager requests for music information from data server 193 and then
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`sends the results to the navigator 260. Id.
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`2.
`
`International patent application WO 01/17141 to Gladwin
`(“Gladwin”)
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`Gladwin discloses a “system and method that allows a host PC to provide an
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`analog audio signal for a radio or amplifier without interfering with the operation
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`of the host PC.” [Ex. 1009 at Abstract; 2:30-3:5]. Figure 1 of Gladwin, which is
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`reproduced below, depicts a system 20 that includes a PC host 26 that can
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`communi
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