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
`
`
`
`Patent No. 8,214,873
`Issue Date: July 3, 2012
`Title: METHOD, SYSTEM, AND COMPUTER-READABLE MEDIUM FOR
`EMPLOYING A FIRST DEVICE TO DIRECT A NETWORKED AUDIO
`DEVICE TO RENDER A PLAYLIST
`_______________
`
`Inter Partes Review No. IPR2013-00598 (PPC)
`____________________________________________________________
`
`PETITIONER YAMAHA CORPORATION OF AMERICA’S
`REQUEST FOR REHEARING
`
`
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Yamaha Corporation of America
`Petitioner
`
`v.
`
`Black Hills Media, LLC
`Patent Owner
`
`
`
`Patent No. 8,214,873
`Issue Date: July 3, 2012
`Title: METHOD, SYSTEM, AND COMPUTER-READABLE MEDIUM FOR
`EMPLOYING A FIRST DEVICE TO DIRECT A NETWORKED AUDIO
`DEVICE TO RENDER A PLAYLIST
`_______________
`
`Inter Partes Review No. IPR2013-00598 (PPC)
`____________________________________________________________
`
`PETITIONER YAMAHA CORPORATION OF AMERICA’S
`REQUEST FOR REHEARING
`
`
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`IPR2013-00598
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1
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`I.
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`II.
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`ARGUMENT .................................................................................................. 3
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`A.
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`The Board Incorrectly Stated the Asserted Basis for
`Obviousness .......................................................................................... 3
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`B.
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`Dr. Bove Appropriately Relied Upon Common Sense ........................ 6
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`III. CONCLUSION ............................................................................................... 8
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`Petitioner provides this Request for Rehearing under 37 C.F.R. § 42.71(d) on
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`the Decision of Institution of Inter Partes Review (Paper 19) dated March 20,
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`2014. In the Decision, the Board granted review of claims 1, 2, 6-13, 15-31, 35-42
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`and 44-46 based on the combination of Bi and Erekson (Ground 5) or Bi, Erekson
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`and Janik '955 (Ground 7). The Board denied review of dependent claims 4, 5, 33
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`and 34 based on the combination of Bi, Erekson and the Sony Ericsson White
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`Paper (Ground 6). Petitioner requests a limited rehearing as to the combination of
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`Bi, Erekson and the Sony Ericsson White Paper and for an order to include Ground
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`6 as a basis of invalidating claims 4, 5, 33 and 34.
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`I.
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`INTRODUCTION
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`In its Decision, the Board instituted inter partes review as to independent
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`claims 1 and 30 based upon Bi (Ex. 1012) and Erekson (Ex. 1013). (Decision at
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`19.) Exemplary claim 1 provides:
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`1. A method for facilitating the presentation of media, the
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`method comprising:
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`displaying, on a first device, at least one device identifier
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`identifying a second device;
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`receiving user first input selecting the at least one device
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`identifier;
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`receiving, on the first device, a playlist, the received playlist
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`comprising a plurality of media item identifiers;
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`receiving user second input selecting at least one media item
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`identifier from the received playlist; and
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`directing, from the first device, the second device to receive a
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`media item identified by the at least one media item identifier
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`from a content server, without user input via the second device.
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`The Board noted Petitioner’s assertion that it would have been obvious to
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`one of ordinary skill in the art to use the handheld device (the above claimed “first
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`device”) disclosed in Erekson in the system disclosed in Bi. (Id.) The Board also
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`noted Petitioner’s position that “[u]sing Erekson’s handheld device in Bi’s system
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`involves applying a known technique to improve a known device by providing the
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`ability to select and control multiple devices, such as the computing platform and
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`an amplifier used to play audio signals from the platform of Bi, from a single
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`remote.” The Board stated that “[f]or purposes of this Decision, we are persuaded
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`by Petitioner’s evidence as to claim 1.” (Id.)
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`Dependent claims 4 and 33 recite that the claimed “first device” is an MP3
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`player. Dependent claims 5 and 34 recite that the “first device” is a mobile phone.
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`Regarding these claims, the Board stated that Petitioner’s expert opined “without
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`further evidentiary support” that it would have been obvious to add the MP3 player
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`functionality or mobile phone functionality of the Sony Ericsson White Paper (Ex.
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`1014) into the navigator of Bi and the PDA of Erekson. (Id. at 21.) The Board
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`stated:
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`Dr. Bove’s conclusions, however, are unsupported by any
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`evidence as to why a person of ordinary skill in the art would
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`combine Bi, Erekson, and the Sony Ericsson White Paper.
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`It is respectfully submitted that the Board’s conclusion was incorrect for two
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`reasons. First, the Board did not properly characterize Dr. Bove’s analysis and
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`thus incorrectly considered the asserted basis of obviousness. Second, Dr. Bove
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`appropriately relied upon common sense, and thus the Board’s requirement of
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`other evidence to support a finding of obviousness was also incorrect.
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`Petitioner notes that claim 5 is one of only two claims (along with claim 1)
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`currently being asserted in the co-pending litigation against Petitioner. The
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`determination whether to institute review as to this claim is therefore critical with
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`respect to the PTO’s statement that the purpose of the AIA and the final IPR rules
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`“is to establish a more efficient and streamlined patent system that will improve
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`patent quality and limit unnecessary and counterproductive litigation costs.” Rules
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`of Practice, 77 Fed. Reg. 48,612 (August 14, 2012). For the reasons set forth
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`below, review should be instituted as to claim 5, as well as claims 4, 33 and 34.
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`II. ARGUMENT
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`A. The Board Incorrectly Stated the Asserted Basis for Obviousness
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`Claim 5 recites in its entirety:
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`The method as recited in claim 1, wherein the first device comprises a
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`mobile phone.
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`In reaching its conclusion regarding claim 5, the Board characterized Dr.
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`Bove’s opinion as being that “it would have been obvious to one of skill in the art
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`to add the mobile telephone functionality disclosed in the Sony Ericsson White
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`Paper product to Bi’s navigator and the PDA of Erekson.” (Decision at 21
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`(emphasis added).) However, this is not what Dr. Bove stated. Rather, Dr. Bove
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`stated that “[a]s the P800 device uses Bluetooth communication, it would have
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`been obvious to one of ordinary skill in the art to consider the use of the P800
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`device (a mobile phone that also functions as a palmtop computer and an MP3
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`player) as the Bluetooth-equipped ‘palmtop or hand-held computer’ of Erekson.”
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`(Ex. 1002 at ¶ 29 (emphasis added).) He further stated that the well-known
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`existence of combined palmtop/PDA devices that include mobile phone
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`capabilities would have made it obvious that the remote control functionality
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`“could be implemented on a combined phone/PDA device.” (Id. at ¶ 31 (emphasis
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`added).)
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`Thus, Dr. Bove’s opinion was not based upon a motivation of adding
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`telephone functionality to Erekson. Instead, according to Dr. Bove, it would have
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`been obvious to one of ordinary skill in the art that the remote control device in
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`Erekson – which is specifically identified in Erekson as a PDA, a hand-held
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`computer system, or palmtop computer system (Ex. 1012 at 2:19-22, 5:39-40;
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`Petition (Paper 3) at 31 and 44) – could be implemented with a real-world, actual
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`PDA device such as the Sony P800 described in the Sony Ericsson publication.
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`Erekson discloses using a PDA, and Dr. Bove identified an actual one. That actual
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`P800 PDA also has a phone, and thus the use of it as the PDA in Erekson would
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`necessarily meet the additional recitation of claim 5. 1
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`The fact that Dr. Bove’s opinion was not based upon a reason to specifically
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`add telephone functionality to the combination of Bi and Erekson is irrelevant. His
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`reason was simpler – he identified a publication describing an actual device that
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`could be used as the PDA disclosed in Erekson. That device provides the added
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`benefits of including a telephone and MP3 player. See, e.g., Alcon Research, Ltd v.
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`Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“We have repeatedly held that
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`the motivation to modify a prior art reference to arrive at the claimed invention
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`need not be the same motivation that the patentee had.”); In Re Kahn, 441 F.3d
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`977, 990 (Fed. Cir. 2006) (“[T]he skilled artisan need not be motivated to combine
`
`[the prior art] for the same reason contemplated by [the inventor].”); Dystar
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`Textilfarben GmbH & Co Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
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`1 The P800 is not an isolated example of a PDA having a phone – seven other
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`combined PDA/cell phone devices are disclosed in Cardoza (Ex. 1010).
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`1368 (Fed. Cir. 2006) (“[W]e have repeatedly held that implicit motivation to
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`combine exists not only when a suggestion may be gleaned from the prior art as a
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`whole, but when the ‘improvement’ is technology-independent and the
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`combination of references results in a product or process that is more desirable, for
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`example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more
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`durable, or more efficient.”).
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`B. Dr. Bove Appropriately Relied Upon Common Sense
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`In reaching his conclusion, Dr. Bove simply applied basic common sense by
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`identifying an actual product that could be used to implement the PDA disclosed in
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`Erekson. The fact that the P800 has additional features not mentioned in Erekson,
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`including an MP3 player and a phone, does not render it any less suitable as a
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`device to be considered. Indeed, consistent with Dystar, the resulting product
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`would be “more desirable” because of its combination of features. As stated in
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`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013):
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`Applying a flexible approach to the obviousness inquiry, the
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`Supreme Court observed that common sense can be a source of
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`reasons to combine or modify prior art references to achieve the
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`patented invention. KSR, 550 U.S. at 420. Therefore,
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`motivation to combine may be found explicitly or implicitly in
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`… the background knowledge, creativity, and common sense of
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`the person of ordinary skill.
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`See also Dystar, 464 F.3d at 1367 (“Our suggestion test is in actuality quite
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`flexible and not only permits, but requires, consideration of common knowledge
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`and common sense.” (emphasis added)).
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`Indeed, the technology involved here – provision of a PDA that has multiple
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`features – is easily understandable, and Dr. Bove’s opinion provides far more than
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`is necessary to support a finding of obviousness. See Perfect Web Technologies,
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`Inc. v. InfoUSA., Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile an analysis
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`of obviousness always depends on evidence that supports the required Graham
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`factual findings, it may also include recourse to logic, judgment and common sense
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`available to the person of ordinary skill in the art that do not necessarily require
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`explication in any reference or expert opinion.”). See also Cimline v. Crafco, Inc.,
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`413 Fed. Appx. 240, 246 (Fed. Cir. Mar. 2, 2011) (“[E]xpert reports – even
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`credible expert reports – are not required when the underlying factual
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`considerations are resolved by resort to common sense. Here, the technology is
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`easily understandable, even without the assistance of expert opinion.”). As stated
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`in the Petition at 45, “it would have been obvious to one of ordinary skill in the art
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`that the navigator/PDA of Bi and Erekson could be implemented using a known
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`combined PDA/telephone device, such as the P800.” This alone is sufficient – it
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`would have been obvious to one of ordinary skill to employ any commercially
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`available PDA having Bluetooth capability for the PDA disclosed in Erekson, and
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`it does not become any less obvious if a particular PDA, such as the P800, provides
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`additional desirable features.
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`Moreover, although the Board criticized Dr. Bove’s opinion as being
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`unsupported by evidence as to why a person of ordinary skill in the art would
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`combine Bi, Erekson and the Sony Ericsson White Paper, the White Paper itself is
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`such evidence. As noted in Perfect Web, 587 F.3d at 1329, “[t]he reason,
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`suggestion, or motivation to combine may be found explicitly or implicitly: 1) in
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`the prior art references themselves….” (quoting Ruiz v. A.B. Chance Co., 234 F.3d
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`654, 655 (Fed. Cir. 2000)). The Sony Ericsson White Paper itself is compelling
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`evidence of the obviousness of combining a PDA, such as that disclosed in
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`Erekson, with a telephone, because it describes a device that provides such a
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`combination, as well as Bluetooth.
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`III. CONCLUSION
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`For at least the foregoing reasons, Petitioner respectfully requests rehearing
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`on the denial of Ground 6 and requests that the trial be expanded accordingly.
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`Although the discussion above focuses on claim 5, it applies with equal force to
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`dependent claim 34 (phone) and dependent claims 4 and 33 (MP3 player). The
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`references themselves provide the necessary evidence to support their combination,
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`and Dr. Bove applied common sense in determining that the PDA of Erekson could
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`obviously be implemented with an actual device, such as the Sony P800.
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`Respectfully submitted,
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`By__/David L. Fehrman/____
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`David L. Fehrman, Reg. 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard
`Los Angeles, California 90017
`(213) 892-5630
`
`By___/Mehran Arjomand/____
`Mehran Arjomand, Reg. 48, 231
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`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard
`Los Angeles, California 90017
`(213) 892-5630
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`9
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`Dated: April 3, 2014
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`
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`I hereby certify that the attached Petitioner Yamaha Corporation of
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`America’s Request for Rehearing was served as of the below date on the Patent
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`Owner via overnight mail (as fast and reliable as U.S. Express Mail) and via e-mail
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`to:
`
`Thomas Engellenner (engellennert@pepperlaw.com)
`Reza Mollaaghababa (mollaaghababar@pepperlaw.com)
`PEPPER HAMILTON LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`
`Theodosios Thomas (ted.thomas@sceneralabs.com)
`BLACK HILLS MEDIA, LLC
`5400 Trinity Road, Suite 303
`Raleigh, NC 27607.
`
`
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`__/Mehran Arjomand/____
`Mehran Arjomand
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`
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`10
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`Dated: April 3, 2014
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`
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