`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2013-00598
`U.S. Patent 8,214,873
`
`___________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
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`
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`#27127924 v1
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`
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`I.
`
`II.
`
`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION .......................................................................................... 1
`
`SUMMARY OF THE ‘873 PATENT ............................................................ 2
`
`III. SUMMARY OF THE STATE OF THE PRIOR ART TO THE‘873
`PATENT ......................................................................................................... 6
`
`IV. Claim Construction ....................................................................................... 10
`A.
`Legal Standard .................................................................................... 10
`B. A Person of Ordinary Skill in the Art ................................................ 10
`C.
`The Term “Playlist” (independent claims 1, 17, 23, 25-27, 30
`and 46) ................................................................................................ 12
`
`V.
`
`SUMMARY OF ALLEGED PRIOR ART .................................................. 16
`A. United States Patent Application 2002/0087996 to Bi ...................... 16
`B. United States Patent 6,622,018 to Erekson ........................................ 23
`C. United States Patent Application 2003/0045955 to Janik .................. 27
`
`VI. CLAIMS 1, 2, 6-13, 15-31, 35-42, and 44-46 ARE NOT OBVIOUS
`OVER BI IN VIEW OF EREKSON ............................................................ 28
`A.
`Petitioner Has The Burden Of Proof .................................................. 28
`B.
`Legal Standard for Obviousness ........................................................ 29
`C.
`Claims 1, 2, 6-12, 15-31, 35-41, and 44-46 Are Not Obvious
`Over Bi and Erekson .......................................................................... 31
`1.
`There Is No Motivation to Combine Bi with Erekson ............. 31
`2.
`Claims 1, 2, 6-13, 15-31, 35-42, and 44-46 Are Not
`Obvious .................................................................................... 38
`Claims 25, 26, 27-29 Are Not Obvious ................................... 42
`3.
`Claims 13 And 42 Are Not Obvious Over Bi In View Of
`Erekson And In Further View Of Janik ............................................. 43
`
`D.
`
`VII. CONCLUSION ............................................................................................. 47
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`TABLE OF AUTHORITIES
`
`
`CASES
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327
`(Fed. Cir. 2012) ................................................................................................... 31
`
`Page(s)
`
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907
`(Fed. Cir. 1988) ................................................................................................... 27
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745, *58
`(Fed.Cir. May 9, 2014) ....................................................................................... 28
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ...................................................... 29
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ................27, 28, 29, 31, 35
`
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012) .................... 29
`
`In re Nouvel, 493 F. App’x 85, 92 (Fed. Cir. 2012) ................................................ 29
`
`In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) ........................................... 27
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) ............................... 10
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) ....................... 10
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) ...... 26, 27
`
`STATUTES
`
`35 U.S.C. § 103(a) .................................................................................................... 1
`
`35 U.S.C. § 312(a)(3) .............................................................................................. 26
`
`35 U.S.C. § 316(e) .................................................................................................. 26
`
`OTHER AUTHORITIES
`
`37 C.F.R. §42.100(b) ................................................................................................. 9
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ........................................................... 9
`
`37 C.F.R. § 42.104(b) .............................................................................................. 26
`
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`PATENT OWNER’S EXHIBIT LIST
`For Inter Partes Review 2013-00598 (U.S. Patent No. 8,214,873)
`
`(PREVIOUSLY FILED) Exhibit Description
`First Amended Complaint in Black Hills Media, LLC v. Yamaha
`Corp., C.D.Ca 2:13-cv-06054
`
`Frist Amended Complaint in Black Hills Media, LLC v. Pioneer
`Corp., et. al, C.D.Ca 2:13-cv-05980
`
`Black Hills Media Technology Tutorial Presented to Court at
`Scheduling Conference on November 12, 2013, in Black Hills
`Media, LLC v. Yamaha Corp., C.D.Ca 2:13-cv-06054 and Black
`Hills Media, LLC v. Pioneer Corp., et. al, C.D.Ca 2:13-cv-05980
`
`Transcript of the November 12, 2013, Scheduling Conference in
`in Black Hills Media, LLC v. Yamaha Corp., C.D.Ca 2:13-cv-
`06054 and Black Hills Media, LLC v. Pioneer Corp., et. al,
`C.D.Ca 2:13-cv-05980, among others
`
`Pioneer’s Notice of Election Regarding Certain Inter Partes
`Reviews in Black Hills Media, LLC v. Pioneer Corp., et. al,
`C.D.Ca 2:13-cv-05980
`
`Summons Returned Executed by Black Hills Media LLC on
`Yamaha Corporation of America served on 9/19/2012 in Black
`Hills Media, LLC v. Yamaha Corp., C.D.Ca 2:13-cv-06054
`
`Summons Returned Executed by Black Hills Media LLC on
`Pioneer Electronics (USA) Inc. served on 9/14/2012 in Black
`Hills Media, LLC v. Pioneer Corp., et. al, C.D.Ca 2:13-cv-05980
`
`Summons Returned Executed by Black Hills Media LLC on
`Pioneer Corporation served on 9/17/2012 in Black Hills Media,
`LLC v. Pioneer Corp., et. al, C.D.Ca 2:13-cv-05980
`
`Exhibit #
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`2003
`
`2004
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`2005
`
`2006
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`2007
`
`2008
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`2009
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`2010
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`
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`(CURRENTLY FILED) Exhibit Description
`
`Exhibit #
`
`Declaration of Gareth Loy, D.M.A. in Support of Patent Owner’s
`Response, including Exhibits A - N thereto
`
`Deposition Transcript of Petitioner’s Expert, Dr. Bove dated
`5/29/2014
`
`Deposition Transcript of Petitioner’s Expert, Dr. Bove dated
`5/30/2014
`
`2011
`
`2012
`
`2013
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`IPR2013-00598
`U.S. Patent 8,214,873
`
`I.
`
`INTRODUCTION
`
`The Patent Owner Black Hills Media, LLC (“Patent Owner”)
`
`respectfully submits this Response1 to the Petition for Inter Partes Review (Paper
`
`No. 1, “Petition”) filed by Yamaha Corporation of America (“Petitioner” or
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`“Yamaha”) as to the grounds for which a trial was granted in the decision
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`instituting the inter partes review (“Institution Decision,” Paper No. 19) issued on
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`March 20, 2014, concerning U.S. Patent 8,214,873 (“the ‘873 patent”). The Patent
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`Trial and Appeals Board (“the Board”) instituted a trial only as to the following
`
`two grounds of alleged obviousness:
`
`(1) Claims 1, 2, 6-12, 15-31, 35-41, and 44-46 of U.S. Patent
`
`8,214,873 (“the ’873 patent”) are allegedly unpatentable under 35 U.S.C. § 103(a)
`
`as obvious over U.S. Patent Application No. 2002/0087996 of Bi (“Bi,” Ex. 1012)
`
`and U.S. Patent 6,622,018 of Rich Erekson (“Erekson,” Ex. 1013); and
`
`(2) Claims 13 and 42 of the ’873 patent are allegedly unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Bi, Erekson, and United States Patent
`
`Application No. 2003/0045955 of Janik (“Janik,” Ex. 1011).
`
`None of the claims at issue in this proceeding are obvious over the
`
`asserted prior art as the prior art fails to teach the claimed inventions, and it would
`
`
`1 Patentee’s Response is being supported by the Declaration of Dr. Gareth
`Loy and accompanying exhibits A-N, filed herewith as Exhibit (“Ex.”) 2011.
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`IPR2013-00598
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`not have been obvious to combine the references to arrive at the claimed
`
`inventions.
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`II.
`
`SUMMARY OF THE ‘873 PATENT
`
`The ‘873 patent describes and claims a digital entertainment network
`
`that is “a fully integrated plug and play technology platform that delivers secure
`
`anytime, anywhere, on-demand multimedia content for digital home systems.” See
`
`Ex. 1001 at 7:12-15. The ‘873 patent describes and claims systems and methods
`
`for facilitating media sharing between electronic devices.
`
`The systems and methods of the ‘873 patent allow a user, for example,
`
`to receive a playlist on a wireless handheld remote control directly from a playlist
`
`server via a network, play it either directly through loudspeakers on the remote or
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`through one’s home sound system by directing the sound system to retrieve the
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`content from a content server, and one could then carry the remote (either with the
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`received playlist in its memory, or received again at the destination) to a friend’s
`
`house across town and direct the friend’s sound system to play the same (or other)
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`content from the same (or other) content server. See Ex. 2011 at 32-34.
`
`The ‘873 patent solved the problem of the prior art where users had
`
`“little or no control over which music selections are played.” See Ex. 1001 at 2:37-
`
`43; Ex. 2011 at 35-36. Figure 1 of the ‘873 patent shows an exemplary
`
`embodiment.
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`IPR2013-00598
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`In Figure 1, the ‘873 patent provides for the interoperability of three
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`classes of devices: the controller device (first device 13), player device (second
`
`device 14), and content server 10 (via the Internet 11), such that any controller
`
`device could interact with any playback device (and vice versa), and both the
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`controller and the playback device have independent capability to contact and
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`interact with any content server via the Internet to receive media, thereby
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`maximizing the flexibility of the system to respond to the user’s media needs as
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`well as the user’s location. See Ex. 2011 at 39-40.
`
`Figure 1 and the specification of the ‘873 patent illustrate and
`
`describe, respectively, all three classes of devices – the controller (first device 13),
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`IPR2013-00598
`U.S. Patent 8,214,873
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`player (second device 14), and content server 10 (content provider, e.g., via the
`
`Internet 11) – as internet connected. See Ex. 2011 at 41 and Ex. 1001 at 8:51-57,
`
`8:65-9:3. The controller (first device 13) and player (second device 14) are
`
`independent of each other in that they have the ability to independently
`
`communicate with the content server via the Internet to request and receive media
`
`content for playback. See Ex. 2011 at 41 and Ex. 1001 at 8:57-59, 9:15-17, 9:55-
`
`56, etc. According to one embodiment of the invention, the first device 13 is
`
`capable of directing the second device 14 to communicate with the content server
`
`via the Internet to receive media from the content server for playback. See Ex.
`
`2011 at 39, Ex. 1001 at Fig. 4, 4:46-60; 11:60-12:23.
`
`The ‘873 specification states that “for explanatory purposes it may
`
`sometimes be beneficial to think of the first device 13 as a small handheld portable
`
`device such as a PDA or dedicated remote control that can function to control the
`
`second device 14 and it may similarly sometimes be beneficial to think of the
`
`second device as a larger music rendering device such as a stereo, television, or
`
`personal computer.” See Ex. 1001, the ‘873 patent, 9:57-64.
`
`Claim 1 of the ‘873 patent is representative of the technology claimed:
`
`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;
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`IPR2013-00598
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`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.
`
`Claim 1 thus covers a method where a handheld portable device, such
`
`as a mobile phone, receives a media playlist from another location (e.g., a server
`
`accessed over the Internet such as one maintained by YouTube or Netflix). The
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`portable device then allows for selection of a media item from the playlist, and the
`
`selection of a playback device, such as a stereo or television, that the media will be
`
`played on. In the claimed invention, the portable device directs the player device
`
`to receive the media item–without requiring user input at the player device (thus
`
`acting as a controller of that device). Independent claim 17 covers a method for
`
`obtaining a song over a network; independent claims 25-26 cover methods for
`
`obtaining media from a playlist server; independent claim 27 covers a method for
`
`directing a second device from a first device including sending from the first
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`device at least one attribute of a playlist corresponding to a selected playlist name
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`to a playlist server; independent claims 23 and 30 cover devices for selecting a
`
`media item; and independent claim 46 covers a computer program for facilitating
`
`the presentation of media.
`
`III. SUMMARY OF THE STATE OF THE PRIOR ART TO THE‘873
`PATENT
`Both Petitioner’s expert, Dr. Bove, 23 and Patentee’s expert, Dr. Loy,
`
`agree that in 2004, the primary mode of consumer digital audio media distribution
`
`was by compact discs (“CDs”), as well as by digital video disks (“DVDs”) for
`
`
`2Deposition Transcript (“Tr.”) of video deposition of V. Michael Bove, Jr.,
`Ph.D. (“Dr. Bove”), dated May 29, 2014, filed herewith as Ex. 2012; and
`deposition transcript of video deposition of Dr. Bove, dated May 30, 2014, filed
`herewith as Ex. 2013.
`3 Patentee wishes to bring to the Board’s attention the fact that Dr. Bove has
`financial interest in Samsung, a defendant in a patent infringement lawsuit
`concerning the ‘873 patent, the ‘099 patent, and other Black Hills Media’s patents
`pending in the Eastern District of Texas (2:13-cv-00379) and subject to IPR
`proceedings. Samsung has also recently filed IPR2014-00723 on the ‘873 patent
`and IPR2014-00711 on the ‘099 patent, among others. Dr. Bove testified at his
`deposition that Samsung is a member of a research consortium of MIT’s Media
`Laboratory, where Dr. Bove is principal research scientist and head of the Object-
`Based Media Group. (Ex. 2012 at 15:21-24; 18:24-19:6; 19:25-20:11) According
`to Dr. Bove, Samsung is paying Dr. Bove’s Media Lab an annual membership fee
`of $250,000 with a three-year commitment. (Ex. 2012 at 23:23-24:9) Furthermore,
`Dr. Bove regularly meets with Samsung personnel, at least once monthly, to
`discuss intellectual property issues and issues relating to 3-D television displays
`and is currently serving “as a proposal reviewer for a research-funding mechanism
`that Samsung runs in Korea.” (Ex. 2012 at 20:12-22:7; 26:20-27:5) Based on Dr.
`Bove’s financial stake in a party that is also challenging the same patent at issue in
`this IPR, it would appear that Dr. Bove may not be impartial in rendering opinions
`in this case.
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`IPR2013-00598
`U.S. Patent 8,214,873
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`
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`digital video media. See Ex. 2011 at 24 (citing to Petitioner’s expert’s testimony,
`
`Ex. 2012 at 120:5-121:19). In the early 2000’s, the availability of technology that
`
`allowed for compression of digital music and video files, for example, MPEG
`
`technology, such as MP3 for compression of audio files, began to allow convenient
`
`storage of multiple media files on a hard drive of a personal computer. Media
`
`compression provided by, for example, MPEG and MP3 standards allowed the data
`
`load on networks, storage systems, and microprocessors to be accommodated,
`
`enabling the delivery of audio and video media across networks to personal
`
`computers. Users could then download media from personal computers to
`
`handheld media players such as MP3 players. The media players could then be
`
`detached and carried portably, typically playing music via headphones. See Ex.
`
`2011 at 24
`
`At the time of invention of the ‘873 patent, in 2004, copyright holders
`
`were challenging the ability of consumers to share media files compressed via
`
`MP3 compression technology. See Ex. 2011 at 25. With regard to audio files,
`
`MP3 technology was utilized, for example, to copy media from a CD (i.e., “to rip
`
`the CD”) and store the media on a computer for later playback by the computer
`
`that was equipped with a sound card. For example, the Windows Media Player
`
`application available from Microsoft in 2004 could rip CDs from the CD-ROM
`
`drive of a personal computer. MP3 technology also facilitated downloading of
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`IPR2013-00598
`U.S. Patent 8,214,873
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`
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`media from servers on the Internet onto a computer, although network bandwidth
`
`available in those times limited download speeds. See Ex. 2011 at 26. Though the
`
`MP3 standard was published in 1983, it was not until the early 2000’s that MP3
`
`began to be widely used by consumers. See Ex. 2011 at 27 (citing to Ex. 2012 at
`
`120:21-24).
`
`In 2004, conventional optical infrared (CIR) technology was the
`
`primary means for remote control of player devices, where a simple handheld
`
`device such as a dedicated remote control for a television or CD player was made
`
`up of simple circuits responsive to buttons a user would press; an infrared
`
`transmitter on the remote control would then direct a modulated infrared light
`
`beam to an infrared sensor on an associated player device communicating a simple
`
`code to control the transport mechanism or adjust the volume level of the player
`
`device. Importantly, these simple dedicated remote controls were not enabled to
`
`receive anything other than button presses by the person using the remote.
`
`Specifically, they were not designed to connect to the Internet, display a device
`
`identifier, allow a user to select a displayed device, receive and display a playlist or
`
`a list of playlists, receive a media item, play a media item over speakers on the
`
`remote, and allow the user to direct the selected device to play the selected media
`
`item by retrieving that item from a content server such that no user input was
`
`required at the player device. See Ex. 2011 at 28.
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`IPR2013-00598
`U.S. Patent 8,214,873
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`
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`CIR technology, introduced in the 1980’s, was only designed for
`
`unidirectional transmission of individual low-bandwidth control codes from a
`
`handheld remote control to a consumer electronics device such as a TV or CD
`
`player. See Ex. 2011 at 29. CIR remote controls are still ubiquitous even today
`
`because of their simplicity and low cost, and because the typical usage paradigm of
`
`most media players is that the user must be in line-of-sight with (typically in the
`
`same room as) the controlled system. Optical technologies such as IrDA (Infrared
`
`Data Association) have been developed to improve data throughput and reliability
`
`(e.g., for communications between a personal computer and an IrDA mouse or
`
`keyboard), but IrDA has even shorter range than standard CIR systems (IrDA
`
`range is one meter) and are subject to the same line-of-sight restrictions as CIR
`
`devices. See Ex. 2011 at 29.
`
`Although in 2004, a handful of networked and cellular-enabled
`
`portable devices with general purpose processors such as the Pocket PC were
`
`available, in the time frame of the ‘873 patent, wireless handheld remote control
`
`systems did not allow a mobile device to display a device identifier, allow a user to
`
`select a displayed device, receive and display a playlist, and allow the user to direct
`
`the selected device to play the selected media item by retrieving that item from a
`
`content server, or perform other capabilities of the Weel ‘873 remote. See Ex.
`
`2011 at 30.
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`IPR2013-00598
`U.S. Patent 8,214,873
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`
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`Consistent with Dr. Loy’s understanding of the state of the prior art in
`
`2004, Petitioner’s expert, Dr. Bove, testified that he was not aware of anyone in
`
`2004 selling a PDA (e.g., a pocket PC) that would be able to control a playback
`
`device to play a media item obtained from a content server. See Ex. 2011 at 31;
`
`Ex. 2012 at 129:7-130:1. Dr. Bove was also not aware of any infrared remote
`
`(CIR) controls in 2004 that had bidirectional communication with player devices.
`
`See Ex. 2011 at 31; Ex. 2012, at 130:7-12.
`
`IV. Claim Construction
`A. Legal Standard
`In an inter partes review, a claim of an unexpired patent is construed
`
`using 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.
`
`14, 2012). A claim term is given its ordinary and customary meaning in the
`
`context of the specification, as it would be understood by one of ordinary skill in
`
`the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`B. A Person of Ordinary Skill in the Art
`As stated in the Patentee’s Preliminary response, the Patentee submits
`
`that a person of ordinary skill in the art is a person with a bachelor’s degree in
`
`computer science or electrical engineering and one year of practical experience
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`IPR2013-00598
`U.S. Patent 8,214,873
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`
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`with networked media. See Prelim. Resp. (Paper 12) at 8-9. The Petitioner
`
`proposed a definition of a person of ordinary skill in the art as having “at least a
`
`bachelor’s degree in computer science or electrical engineering and at least one
`
`year of practical experience with networked media.” Petitioner’s definition is
`
`improper because it is open-ended and would include persons who are over-
`
`qualified to be considered of “ordinary skill” in the art. See Ex. 2011 at 21.
`
`Petitioner’s expert underscored this problem when he testified during his
`
`deposition that someone with a bachelor’s degree and at least one year of practical
`
`experience would have the same understanding of the ‘873 patent as someone with
`
`a Ph.D. and more than 20 years of experience. 4 See Ex. 2012 at 157:21-158-2.
`
`Clearly, someone with a Ph.D. and more than 20 years of practical experience is
`
`not “a person of ordinary skill in the art” because only a select few go on to obtain
`
`a Ph.D. in computer science or electrical engineering, but also because that person
`
`would possess a much higher level of understanding of the technology disclosed in
`
`the ‘873 than someone with a Bachelor’s degree and a year of experience. For this
`
`reason, the Board should reject Petitioner’s open-ended definition and adopt the
`
`closed-ended definition proposed by the Patentee.
`
`
`4Notably, Dr. Bove appears to not qualify as a person of ordinary skill in the
`art according to his own definition, since he has worked in academia his entire
`career and has never worked in industry full time. Ex. 2013, Bove Tr. dated
`05/30/2014 at 24:1-12.
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`IPR2013-00598
`U.S. Patent 8,214,873
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`
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`C. The Term “Playlist” (independent claims 1, 17, 23, 25-27, 30 and
`46)
`
`Petitioner submitted proposed constructions for four claim terms,
`
`“identifier,” “directing the second device to receive a media item,” and
`
`“download” and “stream.” Pet. (Paper 1) at 6-9. Patent Owner responded to
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`Petitioner’s proposed constructions and proposed alternative constructions for
`
`those terms. See Prelim. Resp. (Paper 12) at 8-12. The Board determined that the
`
`broadest reasonable meaning of “identifier” and “directing the second device to
`
`receive a media item” are apparent in the context of the claims, and that
`
`“download” and “stream” have well-established ordinary meanings. Inst. Decision
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`(Paper 19) at 9-10. The Board concluded that “for purposes of this Decision, these
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`claim terms, and all other terms in the challenged claims, are given their ordinary
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`and customary meaning.” Id. at 10.
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`In a related proceeding, IPR 2013-00597, concerning U.S. Patent
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`8,230,099 (“the ‘099 patent”), which is related to the ‘873 patent, the Board,
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`however, construed the term “playlist” to mean “a list of media selections.” Inst.
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`Decision in IPR2013-00597 (Paper 15) at 9. The term “playlist” also appears in all
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`of the independent claims of the ‘873 patent (claims 1, 17, 23, 25-27, 30 and 46)
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`and is used throughout the specification in the context of, for example, displaying
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`playlist names, selecting a playlist name, receiving playlists, selecting a song from
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`a playlist, playing the song, and receiving media item identifiers from a playlist in
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`a first order and in an order other than a first order. See ‘873 at 2:41-58; Ex. 2011
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`at ¶¶ 45-52). In view of disparate interpretations of the meaning of the term
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`“playlist” between the related ‘873 and ‘099 patents, the Patentee is compelled to
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`urge the Board to construe the term “playlist” consistently between the two
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`proceedings, as well as to be consistent with both its plain and ordinary meaning
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`and its broadest reasonable construction in light in light of the specification of the
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`‘873 patent.
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`The Patentee urges the Board to construe “playlist” to mean “a list of
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`media items arranged to be played in a sequence.” Such construction would be
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`consistent with both the plain and ordinary meaning of the term “playlist” and its
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`broadest reasonable construction in view of the ‘873 specification. See Ex. 2011 at
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`¶¶ 44-52.
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`The Board’s construction of “playlist” to mean “a list of media
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`selections,” is broader than its plain and ordinary meaning and broader than its
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`broadest reasonable construction in view of the specification because it overlooks
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`the fact that media items or selections of a playlist are necessarily arranged in an
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`order and will be played in that order unless the user directs the software to play
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`the playlist in some other order. As described below, Petitioner’s expert agreed at
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`his deposition that the items of a playlist are arranged in an order and will be so
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`played unless the user directs the software to play the playlist in some other order.
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`U.S. Patent 8,214,873
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`The ‘873 patent states that songs selected from a playlist may be
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`played “in the order selected, in random order, or in any other desired order.” See
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`‘873 at 3:20-24; see also 11:41-43; claims 12, 13, 41, and 42. Consistent with both
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`its plain and ordinary meaning and its broadest reasonable construction in view of
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`the specification, the ‘873 patent employs the term “playlist” consistently to mean
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`that the songs in a playlist are arranged in an order, the songs could be played in
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`random order or in the order selected, or in some other desired order. See Ex. 2011
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`at ¶ 47. Thus, the term “playlist” in the context of the ‘873 patent means “a list of
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`media items arranged to be played in a sequence.” See Ex. 2011 at ¶ 48-52.
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`Petitioner’s expert also testified that there is no difference between a
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`list of media items and a playlist of media items, other than the latter is played on a
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`machine, stating:
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`If one wanted to split hairs, one could say I could
`have a list of media items written on a piece of paper, but
`I couldn’t necessarily play that unless it had been
`converted to a machinery to perform.
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`Playlist implies that a piece of software would be
`able to do something with it.
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`See Ex. 2012, Bove Tr. at 216:3-13; see also Ex. 2011 at ¶49.
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`Consistent with its usage in the ‘873 patent, its plain and ordinary
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`meaning, including as defined in a dictionary (Ex. 2011 at ¶ 46), Petitioner’s
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`expert, Dr. Bove, testified many times during his deposition that a playlist is a list
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`of items arranged in an order. See Ex. 2011 at ¶ 48 (citing Ex. 2012, at 294:2-25;
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`see also 295:1-10; 221:14-21; 215:1-4 (Bove stating that a playlist, “by virtue of it
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`being a list, the items appear in an order”); 215:20-216:2 (Bove stating that “I think
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`the plain meaning of ‘list’ implies that there is an order in which items appear.
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`That makes it a list.”)). Petitioner’s expert further testified that a playlist is
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`designed to be played in sequence unless the user directs the machine to play
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`otherwise (see Ex. 2011 at ¶ 50 (citing Bove Tr., Ex. 2012, at 216:23-217:7,
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`217:21-218:4). Petitioner’s expert also agreed that the default in a user interface
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`for playing a playlist is to play the items in sequence in which they appear. See
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`Ex. 2011 at ¶51, citing (Bove Tr., Ex. 2012, Bove Tr. at 217:21-218:4).
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`Notably, Petitioner’s own expert thought that the Board’s definition of
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`“playlist” is too broad. When asked on re-direct whether the Board’s definition is
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`the broadest reasonable construction, Dr. Bove responded that “[i]t would be hard
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`to make [the Board’s definition] broader. It has so few words in it.” See Ex. 2012,
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`Bove Tr. at 280:23-281:4. Thus, Petitioner’s expert’s testimony underscores that
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`the Board’s definition is overly broad and is not consistent with the plain and
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`ordinary meaning of the term “playlist” as would be understood by a person of
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`ordinary skill in the art.
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`For these reasons and to be consistent with both its plain and ordinary
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`meaning and its broadest reasonable construction in light in light of the
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`specification of the ‘873 patent, the term “playlist” should be construed to mean “a
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`list of media items arranged to be played in a sequence.”
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`V.
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`SUMMARY OF ALLEGED PRIOR ART
`A. United States Patent Application 2002/0087996 to Bi
`Bi (Ex. 1012) discloses a remote control of an audio or video
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`playback application running on a personal computer or other computing platform,
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`and attempts to “provide a system which enables digital content, such as Internet-
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`based or digital audio to be played, for example, on an analog radio without tying
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`up a personal computer.” See Ex. 2011 at 55; Ex. 1012 at 0006-07. The remote
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`control of Bi, referred to as the “navigator 260,” is dedicated to the computing
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`platform running on a personal computer. See Ex. 2011 at 56. Petitioner’s expert,
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`Dr. Bove, agreed at his deposition that Bi’s navigator communicates with an
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`audio/video player application 151 running on computing platform 100; that Bi’s
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`navigator does not directly communicate with either the data server or the Internet
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`and has to direct the computing platform 100 to communicate with the data server
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`or the Internet. See Ex. 2012 at 174:23-177:6.
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`As recited in claim 1 of Bi, Bi’s system is comprised of three
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`components: a computing platform, a digital content player application, and a
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`remote control. See Ex. 2011 at 57. The high-level architecture of Bi’s system is
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`shown in Figure 1, which shows a data server 102 containing digital audio or video
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`data 103, Internet or other computer network 101, a computing platform 100 (e.g.,
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`a PC) which communicates with the data server 102 via the Internet 101 and runs
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`an audio or video player application 151, and a navigator 260 (which is an
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`“interactive remote control device”). See Ex. 2011 at 58.
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`Petitioner’s expert, Dr. Bove, confirmed at his deposition that, as
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`shown in Fig. 1 of Bi, the navigator 260 communicates with the computing
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`platform but cannot directly com