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`Paper 19
`Entered: March 20, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`
`
`
`Case IPR2013-00598
`Patent 8,214,873 B2
`
`
`
`Before BRIAN J. 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
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`Case IPR2013-00598
`Patent 8,214,873 B2
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`I. INTRODUCTION
`Yamaha Corporation of America (“Petitioner”) filed a petition
`requesting an inter partes review of claims 1, 2, 4-13, 15-31, 33-42, and
`44-46 of U.S. Patent No. 8,214,873 B2 (Ex. 1001, “the ’873 patent”). Paper
`3 (“Pet.”). Black Hills Media, LLC (“Patent Owner”) filed a preliminary
`response on December 26, 2013. Paper 12 (“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, 6-13, 15-31, 35-42, and 44-46 of the ’873
`patent. Accordingly, we grant the petition and institute an inter partes
`review of these claims. We do not institute an inter partes review of claims
`4, 5, 33, and 34.
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`A. Related Proceedings
`On September 12, 2012, the Patent Owner filed a First Amended
`Complaint against Petitioner in the U.S. District Court for the District of
`Delaware alleging, inter alia, infringement of the ’873 patent. See Black
`Hills Media, LLC v. Yamaha Corp. of America, No. 1:12-cv-00635-RGA (D.
`Del.). The First Amended Complaint was served on September 19, 2012.
`Pet. 3. The Patent Owner also has filed lawsuits alleging infringement of the
`’873 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. Id.
`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 ’873 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). Pet. 3-4.
`
`B. Real Party-in-Interest
`Patent Owner asserts that Petitioner fails to identify all real parties-in-
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`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. 1-6. 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 2. 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 ’873 patent. Id. at 3. 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 ’873 patent. Id. at 3-4. 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. at 4.
`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. 48,759-60 (Aug. 14, 2012). In other words, the
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`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 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 ’873 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 ’873 Patent
`The subject matter of the challenged claims of the ’873 patent relates
`generally to a system and method for media sharing between electronic
`devices, by using a first device to provide remote control of playing of
`media items (e.g., songs or videos) on a second device such as a stereo or
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`television. Ex. 1001, Abstract, col. 9, ll. 8-14. The first device receives a
`playlist and selects the second device, and a user selects the media items to
`be played on the second device, without user input via the second device.
`Pet. 2; Prelim. Resp. 6; Ex. 1001, Abstract; col. 2, ll. 28-40, 52-68.
`Figure 1 of the ’873 patent is reproduced below.
`
`
`Figure 1 depicts an embodiment of the invention wherein a playlist is
`communicated from playlist server 11 via Internet 12 to first device 13 or
`second device 14. Ex. 1001, col. 8, ll. 51-56. First device 13 comprises a
`remote control for second device 14, which may comprise a music rendering
`device such as a stereo, television, or home computer. Id. at col. 9, ll. 27-32,
`55-63.
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`D. Illustrative Claim
`Claims 1, 2, 4-13, 15-31, 33-42, and 44-46 are the subject of the
`petition. Claims 1, 17, 23, 25-27, 30, and 46 are independent claims.
`Independent claim 1 is illustrative and is reproduced as follows.
`1. A method for facilitating the presentation of media, the
`method comprising:
`
`displaying, on a first device, at least one device identifier
`identifying a second device;
`
`receiving user first input selecting the at least one device
`identifier;
`
`receiving, on the first device, a playlist, the received playlist
`comprising a plurality of media item identifiers;
`
`receiving user second input selecting at least one media item
`identifier from the received playlist; and
`
`directing, from the first device, the second device to receive a
`media item identified by the at least one media item identifier
`from a content server, without user input via the second device.
`
`
`E. Prior Art Relied Upon
`Petitioner relies upon the following 11 prior art references.
`
`
`
`Reference
`Janik ’946
`Janik ’558
`
`Title
`US 2005/0113946 A9
`US 2002/0068558 A1
`
`Ex. No.
`Ex. 1003
`Ex. 1007
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`Reference
`Janik ’902
`Neoh
`Cardoza
`
`Janik ’955
`Bi
`Erekson
`Sony/Ericsson
`White Paper
`
`Berman
`Van Ryzin
`
`
`Title
`US 2002/0065902 A1
`US 2002/0040255 A1
`“Take a Look at the Latest Integrated
`PDA/Cell Phone Devices,”
`www.techrepublic.com (Apr. 8, 2002)
`US 2003/0045955 A1
`US 2002/0087996 A1
`US 6,622,018 B1
`Sony/Ericsson P800/P802 White Paper
`(Jan. 2003) (pp. 1-4, 24-25, 36, 70-72, 87-
`88, 94, and 112)
`US 6,502,194 B1
`US 6,127,941
`
`Ex. No.
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`
`Ex. 1015
`Ex. 1016
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`F. The Asserted Grounds
`Petitioner contends the challenged claims are unpatentable based on
`
`eight grounds, as follows.
`
`Reference(s)
`
`Janik ’558 and Janik ’902
`
`Janik ’558, Janik ’902, and Neoh
`Janik ’558, Janik ’902, and
`Cardoza
`Janik ’558, Janik ’902, and Janik
`’955
`
`Claims Challenged
`Basis
`§ 103(a) 1, 2, 4, 6-12, 15-31, 33, 35-
`41, and 44-46
`§ 103(a) 9 and 38
`
`§ 103(a) 5 and 34
`
`§ 103(a) 13 and 42
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`Reference(s)
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`Bi and Erekson
`Bi, Erekson, and Sony Ericsson
`White Paper
`Bi, Erekson, and Janik ’955
`
`Berman and Van Ryzin
`
`Claims Challenged
`Basis
`§ 103(a) 1, 2, 6-12, 15-31, 35-41, and
`44-46
`§ 103(a) 4, 5, 33, and 34
`
`§ 103(a) 13 and 42
`§ 103(a) 1, 2, 6-13, 15-31, 33, 35-42,
`and 44-46
`
`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. at 48,766. 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 four claim terms,
`“identifier,” “directing the second device to receive a media item,” and
`“download” and “stream.” Pet. 6-9. Patent Owner responds to Petitioner’s
`proposed constructions and proposes alternative constructions for the terms.
`Prelim. Resp. 8-12. The broadest reasonable meaning of “identifier” and
`“directing the second device to receive a media item” are apparent in the
`context of the claims. “Download” and “stream” have well-established
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`ordinary meanings. Thus, for purposes of this Decision, these claim terms,
`and all other terms in the challenged claims, are given their ordinary and
`customary meaning.
`
`B.
`
`Claims 1, 2, 6-12, 15-31, 35-41, and 44-46 –
`Obvious over Bi and Erekson
`Petitioner contends claims 1, 2, 6-12, 15-31, 35-41, and 44-46 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Bi and Erekson. Pet.
`28-44. Patent Owner asserts claim 1 covers a method where a handheld
`portable device, such as a mobile phone, receives a media playlist from
`another location (e.g., a user’s PC, or a server accessed over the Internet,
`such as one maintained by YouTube or Netflix). Prelim. Resp. 8. The
`portable device then allows for selection of a media item from the playlist,
`and the selection of a larger device, such as a television, on which the media
`item will be played. The portable device acts as a controller of the player
`device by directing the player device to receive the media item, without
`requiring user input at the player device. Prelim. Resp. 8. See Ex. 1001, col.
`16, ll. 35-48.
`
`Bi (Exhibit 1012)
`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. 29.
`Figure 2 of Bi is reproduced below.
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`Figure 2 depicts data server 102 that provides digital audio or video data via
`the Internet or other network 101 to computing platform 100. Ex. 1012
`¶ 0020. Digital audio or video data also can be read from local storage 112.
`Id. Navigator 260 is a wireless remote control that communicates with
`computing platform 100 to control selection of audio or video data. Id. The
`navigator provides various functions “such as playback of current digital or
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`audio video content; selection of new audio or video content; and providing
`lists of content for playback.” Id. ¶ 0007. The digital content in Bi can be
`controlled from a location away from the computing platform running the
`digital content playback application. Id. Navigator 260 acts as a remote
`control and allows the user to receive feedback from and provide input to
`audio or video player application 151 running on computing platform 100.
`Id. ¶ 0031. The communication with the computing platform may be
`wireless, e.g., by a Bluetooth or IEEE 802.11 interface. Id. ¶ 0028.
`Figure 5 of Bi is reproduced below.
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`Figure 5 depicts navigator 260 in communication with computing platform
`100. Navigator 260 can be configured to display user outputs such as
`graphics and text for display on LCD screen 266. Id. ¶ 0018. Navigator
`control manager 154 of Figure 1 receives user inputs from navigator 260 and
`interprets and translates them into commands and actions for audio or video
`player application 151 to provide interactive remote control specifically for
`digital music playback and selection. Id. ¶ 0031.
`Figure 7 of Bi is reproduced below.
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`Figure 7 depicts the software flow of navigator control manager 154. Ex.
`1012 ¶ 0015. The remote control functionality includes browsing music by
`reference to playlists (step 188). The specification describes the software
`flow, in which steps 188-193 involve browsing and selection of music
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`utilizing navigator 260. Id. ¶ 0032. These steps include browsing of music
`local to computing platform 100 and obtaining information from data server
`102 if the music is not on the local database. Id. “Typically, a browse of
`music is based on such criteria as music track, album, artist, music genre,
`and playlists.” Id.
`Petitioner contends Bi discloses the elements of the claims of the ’873
`patent, with the exception of the display of multiple devices for selection and
`control, which Petitioner contends is disclosed by Erekson. Pet. 31.
`
`Erekson (Ex. 1013)
`
`Erekson is titled, “Portable Device Control Console with Wireless
`
`Connection.” Erekson discloses “a system and method for controlling
`remote devices over a wireless connection (e.g., using a radio signal).” Ex.
`1013, col. 2, ll. 18-19. In one embodiment, “a portable computer system
`(e.g., a palmtop or hand-held computer) having a transceiver is used to
`control compliant [remote] devices. In a preferred embodiment, the
`transceiver and the remote devices are Bluetooth-enabled devices.” Id. at
`col. 2, ll.19-24. Each of the remote devices is shown on a display device.
`Id. at col. 2, ll. 27-30. Figure 7 of Erekson is reproduced below.
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`Figure 7 depicts one embodiment of Erekson’s portable computing device
`100, with display 105, input 106 and stylus 90. Three remote devices 610,
`620, and 630 are indicated on display 105. Id. Fig. 7. A user can select one
`of the remote devices by touching stylus 90 to display 105, or “may simply
`touch the screen” directly. Ex. 1013, Fig. 7, col. 9, ll. 3-24. Figure 11 of
`Erekson is reproduced below.
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`Figure 11 is a flowchart of the steps in a process for controlling one or more
`remote devices. Id. at Fig. 11, col. 10, l. 32 – col. 11, l. 49. Once a device is
`selected, the “characteristics and capabilities” of the selected remote device
`are “linked to indications (e.g., icons) on display device.” Id. col. 10, ll. 47-
`64. The selected remote device can be controlled “in some prescribed
`manner (e.g., turning the device off or on, raising or lowering a level, etc.)
`based on the type of device and its capabilities.” Id. col. 8, ll. 56-61.
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`Analysis
`Petitioner contends claims 1, 2, 6-12, 15-31, 35-41, and 44-46 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over Bi and Erekson. In
`support of this asserted ground of unpatentability, Petitioner provides
`detailed explanations as to how the subject matter of each claim is disclosed
`by Bi and Erekson. Pet. 33-43. Patent Owner argues that for independent
`claim 1, “nowhere does Bi disclose receiving a playlist on the first device.”
`Prelim. Resp. 37. Petitioner asserts that Bi discloses the receipt of a playlist
`on navigator 260. Pet. 33. As stated in Bi, the navigator control manager
`sends to the navigator the results of a local music browse, which is “based
`on such criteria as music track, album, artist, and playlists.” Ex. 1012
`¶ 0032.
`
`Patent Owner next contends Bi “does not disclose or render obvious
`the material claim limitation of ‘selecting at least one media item identifier
`from the received playlist . . . .’” Prelim. Resp. 38 (emphasis omitted).
`Petitioner cites to Bi’s “navigator 260 with graphical output capabilities”
`that “operates as part of interactive remote control specifically for digital
`music playback and selection.” Ex. 1012 ¶ 0031. Petitioner also cites
`Figure 7 and Bi’s disclosure of how the navigator control manager reads
`data sent from the user interface on the navigator. Id. Fig. 7, ¶ 0032.
`
`Patent Owner further contends that Erekson does not disclose the
`display of multiple devices. Prelim. Resp. 38. Petitioner contends that
`Erekson discloses the display of multiple devices for selection and control
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`(Ex. 1013, Figs. 7, 11; col. 2, ll. 27-30 (“the present invention pertains to a
`system and method for controlling remote devices over a wireless
`connection”), col. 9, ll. 11-17 (“each of the remote devices 610-630 are
`indicated on display device 105”).
`
`Finally, Patent Owner states there is no reason to combine Erekson
`with Bi. Prelim. Resp. 38. Petitioner contends it would have been obvious
`to one of ordinary skill in the art to use the handheld device disclosed in
`Erekson in the system disclosed in Bi. Using Erekson’s handheld device in
`Bi’s system involves applying a known technique to improve a known
`device by providing the ability to select and control multiple devices, such as
`the computing platform and an amplifier used to play audio signals from the
`platform of Bi, from a single remote. Pet. 32-33; Ex. 1002 (Bove Decl.) ¶¶
`26-27. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417-22 (2007). For
`purposes of this Decision, we are persuaded by Petitioner’s evidence as to
`claim 1. For the remaining limitations of claim 1, we have reviewed
`Petitioner’s supporting evidence and determine that Petitioner has made an
`adequate showing under 35 U.S.C. § 314(a).
`
`The remaining independent claims 17, 23, 25-27, 30, and 46 “contain
`the same or similar limitations as those of claim 1.” Prelim. Resp. 39; Ex.
`1001, col. 16, l. 36 – col. 20, l. 64. For the remaining dependent claims 2, 6-
`12, 15, 16, 18-22, 24, 28-29, 31, 35-41, 44, and 45, we have reviewed
`Petitioner’s supporting evidence and determine that Petitioner has made an
`adequate showing under 35 U.S.C § 314(a). We are persuaded there is a
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`reasonable likelihood of Petitioner prevailing in establishing the
`unpatentability of claims 1, 2, 6-12, 15-31, 35-41, and 44-46 of the ’873
`patent as obvious over Bi and Erekson.
`
`C.
`
`Claims 4, 5, 33, and 34: Obvious Over Bi, Erekson,
`and Sony Ericsson White Paper
`Petitioner contends dependent claims 4, 5, 33, and 34 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Bi, Erekson, and the Sony
`Ericsson White Paper. Pet. 44-45. Claims 4 and 5 depend from independent
`claim 1, with claim 4 further reciting that the first device comprises an MP3
`player, and claim 5 further reciting that the first device comprises a mobile
`phone. Claims 33 and 34 depend from independent claim 30, with claim 33
`further reciting that the first device comprises an MP3 player, and claim 34
`further reciting that the first device comprises a mobile phone.
`
`Sony Ericsson White Paper (Exhibit 1014)
`The Sony Ericsson White Paper is titled, “Sony Ericsson P800/P802
`White Paper.” Petitioner contends the Sony Ericsson White Paper discloses
`the Sony Ericsson P800 product, which is described as a combination
`telephone, PDA, and MP3 player that included Bluetooth communication
`functionality. Pet. 44; Ex. 1014, pp. 8, 24, 87. On claims 4 and 33,
`Petitioner’s expert Dr. Bove opines, without further evidentiary support, that
`it would have been obvious to add the MP3 player functionality disclosed in
`the Sony Ericsson White Paper into the navigator of Bi and the PDA of
`Erekson, to provide the desirable option of playing music on the device
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`itself, in addition to controlling other devices. Pet. 44; Ex. 1002 ¶¶ 29-31.
`Dr. Bove further opines, without further evidentiary support, that for claims
`5 and 34, it would have been obvious to one of skill in the art to add the
`mobile telephone functionality disclosed in the Sony Ericsson White Paper
`product to Bi’s navigator and the PDA of Erekson. Pet. 45; Ex. 1002 ¶¶ 29,
`32. Dr. Bove’s conclusions, however, are unsupported by any evidence as to
`why a person of ordinary skill in the art would combine Bi, Erekson, and the
`Sony Ericsson White Paper. Thus, we are not persuaded that Petitioner has
`made an adequate showing under 35 U.S.C. § 314(a). Accordingly, on the
`present record, we determine there is not a reasonable likelihood of
`Petitioner prevailing in establishing the unpatentability of dependent claims
`4, 5, 33, and 34 of the ’873 patent as obvious over Bi, Erekson, and the Sony
`Ericsson White Paper.
`
`D. Claims 13 and 42 – Obvious Over Bi, Erekson, and Janik ’955
`Petitioner contends dependent claims 13 and 42 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Bi, Erekson, and Janik ’955. Pet.
`45. Claims 13 and 42 depend from independent claims 1 and 30 and further
`recite that the second device receives a plurality of media items, “in an order
`other than the first order.”
`Janik ’955 discloses such an out of order, or “shuffle,” functionality.
`Ex. 1011 ¶ 0099 (“Some possible functions for user-defined button 124 are
`. . . shuffle the tracks in the existing playlist . . . .”). Petitioner’s expert Dr.
`Bove opines that it would have been obvious to add the shuffle control of
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`Janik ’955 to the audio system of Bi, as that merely would have entailed
`adding a known feature to a known device to achieve predictable results.
`Pet. 45; Ex. 1002 ¶ 33. 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 dependent claims 13 and 42 of the ’873 patent as obvious
`over Bi, Erekson, and Janik ’955.
`
`E. Other Alleged Grounds of Unpatentability
`Petitioner contends claims 1, 2, 4, 6-12, 15-31, 33, 35-41, and 44-46
`of the ’873 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”).
`Petitioner further contends: (i) claims 9 and 38 would have been obvious
`over Janik ’558, Janik ’902, and Neoh; (ii) claims 5 and 34 would have been
`obvious over Janik ’558, Janik ’902, and Cardoza; and (iii) claims 13 and 42
`would have been obvious over Janik ’558, Janik ’902, and Janik ’955. On
`the present record, we are not persuaded that there is a reasonable likelihood
`that these proposed grounds would have rendered obvious the challenged
`claims.
`Claim 1 recites, in relevant part,
`directing, from the first device, the second device to receive a
`media item identified by the at least one media item identifier
`from a content server, without user input via the second device.
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`In all of these asserted grounds, Petitioner relies upon Janik ’558 or
`Janik ’902 to teach this limitation. Pet. 11-26. We agree with Patent Owner
`that neither Janik ’558 nor Janik ’902 discloses this limitation. Prelim.
`Resp. 20-24; see Ex. 1001, Fig. 4 and col. 2, ll. 52-58, col. 3, ll. 35-39, 54-
`57, col. 9, ll. 33-37, col.11, ll. 53-67, col. 12, ll. 9-15. In particular, neither
`Janik ’558 nor Janik ’902 discloses the receipt of media items by a second
`device. Janik ’558 discloses that the audio playback device or PC, which
`Petitioner argues to be second devices, receive XML messages from the first
`device, webpad 92. Pet. 18; Ex. 1007 ¶ 0243. XML messages are not media
`items that can be played back on the second device. Similarly, in Janik ’902,
`webpad 32 sends XML messages to a PC. Ex. 1008 ¶ 0069. The PC is not
`receiving media items, but rather, XML messages, which transport data and
`are not defined as media items in either Janik reference. Neither the Petition
`nor the Declaration of Dr. Bove explains why a person of ordinary skill in
`the art would have found it obvious to add the capability of sending media
`items. On this record, we are not persuaded that the teachings of Janik ’558
`or Janik ’992 would teach or suggest the disputed limitation.
`The remaining alleged ground of unpatentability in the Petition, based
`on Berman and Van Ryzin, is redundant in light of the above grounds of
`unpatentability on which we are instituting review for the same claims, with
`the exception of claim 33. We deny the Petition as to claim 33 based on
`Berman and Van Ryzin, for lack of evidentiary support. For claim 33, the
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`Petition’s claim chart states only, “see claim 4,” but claim 4 was not
`challenged based on Berman and Van Ryzin.
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`III. CONCLUSION
`For the foregoing reasons, we are persuaded the information presented
`in the Petition shows a reasonable likelihood that Petitioner would prevail in
`establishing unpatentability of claims 1, 2, 6-12, 15-31, 35-41, and 44-46 of
`the ’873 patent as obvious over Bi and Erekson, and of claims 13 and 42 as
`obvious over Bi, Erekson, and Janik ’955.
`The Board has not made a final determination on the patentability of
`any challenged claims.
`
`IV. ORDER
`
`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, 6-12, 15-31, 35-41, and 44-46 of the ’873
`patent are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Bi and Erekson;
`Claims 13 and 42 of the ’873 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Bi, Erekson,
`and Janik ’955; and
`FURTHER ORDERED that all other grounds raised in the Petition are
`denied for reasons discussed above.
`
`2.
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`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 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.
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`1 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66
`(Aug. 14, 2012).
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`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
`
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