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
`____________________________________________________________
`
`PETITIONER YAMAHA CORPORATION OF AMERICA’S
`REPLY TO PATENT OWNER RESPONSE
`
`
`
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`la-1260444
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`IPR2013-00598
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .................................................................................. ii
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`PETITIONER’S EXHIBIT LIST ........................................................................... iii
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`I.
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`II.
`
`INTRODUCTION .......................................................................................... 1
`
`REPLY TO PATENT OWNER’S ARGUMENTS ........................................ 2
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`A.
`
`Claim Construction And Level Of Ordinary Skill ............................... 2
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`1.
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`“Playlist” .................................................................................... 3
`
`B.
`
`The Challenged Claims Are Unpatentable ........................................... 8
`
`1.
`
`2.
`
`Claims 1, 2, 6-12, 15-31, 35-41 and 44-46 are Obvious
`over Bi and Erekson ................................................................... 8
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`Claims 13 and 42 are Obvious over Bi, Erekson, and
`Janik '955 .................................................................................. 15
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`III. CONCLUSION ............................................................................................. 15
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Ecolab, Inc. v. Envirochem, Inc.,
`264 F.3d 1358 (Fed. Cir. 2001) .........................................................................................6
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .................................................................................12, 13
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...........................................................................................................11
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .........................................................................................2
`
`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) .................................................................................11, 12
`
`Schwing Gmbh v. Putzmeister Aktiengesellschaft & Putzmeister,
`305 F.3d 1318 (Fed. Cir. 2002) .........................................................................................6
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA,
`Inc.,
`617 F.3d 1296 (Fed. Cir. 2010) .......................................................................................12
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d. 1352 (Fed. Cir. 2011) ........................................................................................2
`
`STATUTES
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`35 U.S.C. § 103 .........................................................................................................................11
`
`OTHER AUTHORITIES
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`37 C.F.R. § 42.23 ........................................................................................................................1
`
`U.S. Patent No. 6,728,729.........................................................................................................7
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`U.S. Patent No. 8,214,873.........................................................................................................1
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`U.S. Patent No. 8,230,099.................................................................................................3, 4, 5
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`SUSPECTS
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, 2014 ..............2
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`Apple Inc. v. Achates Reference Publ’g, Inc., IPR2013-00081, 2014 ...........................2
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 8,214,873*
`
`Exhibit Description
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`Exhibit #
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`U.S. Patent No. 8,214,873 to Weel
`
`Declaration of Dr. V. Michael Bove, Jr.
`
`U.S. Patent App. Pub. US2005/0113946 A9 to Janik
`
`Applicant’s Appeal Brief dated November 8, 2010
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`Office Action dated March 1, 2012
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`Notice of Allowance dated May 14, 2012
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`U.S. Patent App. Pub. US2002/0068558 A1 to Janik
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`U.S. Patent App. Pub. US2002/0065902 A1 to Janik
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`U.S. Patent App. Pub. US2002/0040255 A1 to Neoh
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`Cardoza, Take a Look at the Latest Integrated PDA/Cell Phone
`Devices, TECHREPUBLIC, April 8, 2002
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`U.S. Patent App. Pub. 2003/0045955 A1 to Janik
`
`U.S. Patent App. Pub. US2002/0087996 A1 to Bi et al.
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`U.S. Pat. No. 6,622,018 to Erekson
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`Sony Ericsson P800/P802 White Paper (pages 1-14, 24-25, 36, 70-
`72, 87-88, 94, and 112)
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`U.S. Patent No. 6,502,194 to Berman et al.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 6,127,941 to Van Ryzin
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`Transcript of July 28, 2014 Deposition of Dr. Gareth Loy (“Loy
`Dep.”)***
`
`U.S. Patent Appl. No. US2004/0267899 (filed by assignee Microsoft
`Corp. on June 27, 2003)
`
`U.S. Patent No. 6,728,729 (filed by assignee Apple Computer Inc. on
`April 25, 2003)
`Excerpts of May 24, 2011 Declaration of Dr. Gareth Loy filed in
`MonkeyMedia, Inc. v. Apple, Inc., Case No. 1:10cv319 (E.D. Tex.),
`re-filed on July 25, 2014, with discussion of POOSITA in ¶ 27
`
`U.S. Patent No. 8,230,099 to Weel
`
`Motorola Semiconductor Application Note for “DragonBall™ Power
`Management” (Copyright © 1998 by Motorola, Inc.)
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`1016
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`1017**
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`1018
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`1019
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`1020
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`1021
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`1022
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`*Petitioner’s Exhibits 1001 – 1016 were previously filed and are listed again here
`
`based on 37 C.F.R. § 42.63.
`
`**Petitioner’s Exhibits 1017 – 1022 are newly filed.
`
`***A combined cross-examination deposition of Patent Owner’s expert declarant
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`for both this proceeding and IPR2013-00597 was taken July 28, 2014.
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`Petitioner Yamaha Corporation of America (“Petitioner”) provides this
`
`Reply under 37 C.F.R. § 42.23 to the June 13, 2014 “Patent Owner Response”
`
`(Paper No. 31; “Response”). With this Reply and its Petition filed on September
`
`19, 2013 (Paper No. 3), Petitioner requests relief through the cancellation of claims
`
`1, 2, 6-13, 15-31, 35-42, and 44-46 of U.S. Patent No. 8,214,873 (“the '873
`
`patent”; Ex. 1001).
`
`I.
`
`INTRODUCTION
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`The Board instituted inter partes review of claims 1, 2, 6-12, 15-31, 35-41,
`
`and 44-46 in view of Bi (Ex. 1012) and Erekson (Ex. 1013), and of claims 13 and
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`42 in view of Bi, Erekson, and Janik '955 (Ex. 1011). (Decision (Paper No. 19) at
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`24.) Patent Owner seeks to overcome the instituted grounds by arguing both claim
`
`construction and the content of the prior art references. Both arguments are wrong.
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`First, the Patent Owner asserts a claim construction for “playlist” that is not
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`the broadest consistent with the specification. It is also not reasonable. The claim
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`language itself defines the broadest reasonable construction, and the specification
`
`supports it. Patent Owner’s reliance on extrinsic evidence to support its misguided
`
`argument to narrow the meaning of “playlist” is belied by that same evidence.
`
`With respect to the prior art, the Patent Owner’s contentions are based upon
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`applying its narrow constructions as well as its mischaracterization of the content
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`of the references. Each of the grounds instituted by the Board is correct, and the
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`challenged claims should be cancelled.
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`II. REPLY TO PATENT OWNER’S ARGUMENTS
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`A. Claim Construction And Level Of Ordinary Skill
`
`The Patent Owner takes issue with Dr. Bove’s assertion that one of ordinary
`
`skill in the art would have “at least” a certain level of experience. (Response at 10-
`
`11.) However, the Federal Circuit has approved the use of “at least” descriptions
`
`in numerous cases. See, e.g., Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d. 1352,
`
`1358 (Fed. Cir. 2011); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
`
`1332 (Fed. Cir. 2009). The Board similarly makes determinations regarding the
`
`level of skill in the art without delineating an upper limit on experience. See, e.g.,
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, 2014 Pat.
`
`App. LEXIS 1189 (P.T.A.B. Feb. 24, 2014); Apple Inc. v. Achates Reference
`
`Publ’g, Inc., IPR2013-00081, 2014 Pat. App. LEXIS 3470 (P.T.A.B. Jun. 2, 2014).
`
`One example of the ubiquity of “at least” in this context is in a declaration
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`re-submitted by Patent Owner’s expert Dr. Gareth Loy in an unrelated litigation on
`
`July 25, 2014 (see Ex. 1020) – six weeks after his declaration here (“Loy Decl.”;
`
`Ex. 2011) – in which he opined that a “POOSITA … would have had either … at
`
`least 2 years of experience in the field” with a bachelor’s degree or “at least 1 year
`
`of experience in the field” with an advanced degree. (Ex. 1020, ¶ 27.)
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`It is inexplicable (as well as hypocritical) how Dr. Loy could consider Dr.
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`Bove’s view of the level of ordinary skill here to be “overly expansive” (Loy Decl.
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`¶ 21), when he used this same “at least” terminology in another parallel case. The
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`Patent Owner’s complaints about the level of ordinary skill should be disregarded.
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`1.
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`“Playlist”
`
`In the Institution Decision, the Board did not construe the term “playlist.”
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`However, the Patent Owner has asked that the term be construed here and asserts
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`that “playlist” should be given an unduly narrow construction of “a list of media
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`items arranged to be played in a sequence.” (Response at 12-15.)
`
`In a concurrently-filed IPR on related U.S. Patent No. 8,230,099 to Weel,
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`the Board construed “playlist” to mean “a list of media selections” in its March 20,
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`2014 Institution Decision. (See IPR2013-00597 Paper No. 15 at 9.) The Board’s
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`construction of this term in the related IPR is correct and should be adopted here.
`
`The Patent Owner’s construction finds no support whatsoever in the '873
`
`specification and is, in fact, inconsistent with it. The ‘873 specification never once
`
`says that a playlist includes items that are arranged to be played in a sequence.
`
`Instead, the specification simply states that a playlist is displayed, and repeatedly
`
`reinforces that a user can select a song or at least one song to be played. (See, e.g.,
`
`'873 patent at 2:37, 2:49-50, 2:56-57, 3:2, 3:38-39, 3:49, 7:35, 10:33-38, 11:27-29.)
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`There is no disclosure that an entire playlist is selected or that all of the songs in
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`the playlist are played in sequence. The “playlist” of the '873 patent is simply a list
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`from which the user can select particular individual songs to play.
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`Again, the specification broadly conveys that a “playlist” is simply a list
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`from which a user can select one or more songs to listen to, without any indication
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`that songs in the playlist are arranged to be played in a sequence. For example, the
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`specification explains that “this playlist is a list of songs containing at least one
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`song that the listener would like to hear.” ('873 patent at 11:25-26.) There is
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`nothing about the list per se being arranged in any particular order for listening.
`
`The Patent Owner cites to the '873 specification at 3:20-24 and 11:41-43 to
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`support its untenable position, but these passages actually support the opposite
`
`conclusion. The “order” referenced in these excerpts relates to an order of playing
`
`after individual songs have been selected from the playlist. Both cited passages
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`refer to the selected songs, and make no reference whatsoever to the playlist from
`
`which they were selected having any particular order. Indeed, the fact that plural
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`songs need to be individually selected to cause them to be played together strongly
`
`implies that the playlist itself has no order imparted to it at all, and that an order is
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`only created in response to song selection.
`
`The Board’s construction in the related proceeding (IPR2013-00597) is fully
`
`consistent with the specification of the '873 patent, and should be adopted here as
`
`previously noted. The related '099 patent (Ex. 1021) succinctly explains that “[a]
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`playlist is a list of a user’s favorite selections.” ('099 patent at 1:33-34.) Just as
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`with the '873 specification, the '099 specification contains no description of simply
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`selecting a playlist and playing the entire playlist; instead, all selection of anything
`
`to be played is of individual items selected from a displayed playlist. (See, e.g.,
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`'099 patent at Abstract (“display a playlist, and play a selection from the playlist”),
`
`2:60-61 (“display the playlist, and play a selection from the playlist”), and 8:66-67
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`(“the playlist may be displayed thereon and thus used to choose which selection
`
`therefrom is to be played”) (emphases added).) Thus, the broadest reasonable
`
`construction, consistent with the specifications, is “a list of media selections.”
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`The term “playlist” is a noun that denotes a thing, i.e., a structure which is a
`
`list of data such as song titles. The Patent Owner is improperly attempting to inject
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`a functional requirement into something that is simply a list, by asserting that it
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`references media items “arranged to be played in a sequence.” However, the list
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`does not control how items contained in it are played. Rather, a player determines
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`how songs in the list are played.
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`Moreover, what is done with the list is already specified in every
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`independent claim, i.e., at least one item is selected for playback from the playlist.
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`A playlist is not selected for playback, and songs from a playlist are not played in
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`order. Instead, a playlist is selected and then a further selection is made of a song
`
`or songs. Nothing in the claims refers to playing all items in the playlist in order.
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`The Patent Owner is attempting to import a different and inconsistent
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`unclaimed functional limitation solely through construction of a recited thing. This
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`is improper. See, e.g., Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed.
`
`Cir. 2001) (“Where the function is not recited in the claim itself by the patentee,
`
`we do not import such a limitation.”); Schwing Gmbh v. Putzmeister
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`Aktiengesellschaft & Putzmeister, 305 F.3d 1318, 1324 (Fed. Cir. 2002) (same).
`
`Patent Owner relies upon its expert Dr. Loy to incredulously maintain that
`
`individually selecting songs from a playlist and then playing them in an order
`
`means that the playlist, before any such selection, is arranged to be played in a
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`sequence. (Loy Decl. ¶ 47.) Moreover, the '873 patent indicates that it is not
`
`limited to playing of songs, but also applies to other media, including movies.
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`('873 patent at 8:29-35, 16:18-24.) To follow Dr. Loy’s construction, one would
`
`have to conclude that the broadest reasonable construction of “playlist” would
`
`mean that movies – including full-length feature films – that are contained in a
`
`playlist are intended to be played in a sequence. With respect to movies, Dr. Loy
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`reasoned as follows at his deposition (“Loy Dep.”; Ex. 1017):
`
`Q. So you understand if I had five movies on a playlist, that they
`
`would need to be played in sequence. Is that right?
`
`MS. GLADSTEIN: Objection to form.
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`A. If it were to follow the construction that I’m advocating. Yes.
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`(Loy Dep. (Ex. 1017) at 120:17-22.) Dr. Loy’s reasoning is fatally flawed.
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`Although Dr. Loy indicated that a person of ordinary skill in the art would
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`use and understand the term “playlist” to mean a list of media items to be played in
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`a sequence (Loy Decl. ¶ 46), use of this term in the field was not so narrow. For
`
`example, in a 2003 patent application (U.S. Appl. No. US2004/0267899; Ex.
`
`1018), Microsoft indicated that a “playlist” does not require an order:
`
`A typical media player (e.g., Windows Media Player®) employs a
`
`“playlist.” A playlist is a listing of one or more references to one or
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`more media (e.g., video, audio, text, and/or animation data) segments.
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`The playlist may also include information about the media segment(s),
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`such as titles, authors, order of play, and the like.
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`(Ex. 1018 at [0002] (emphasis added).) Apple’s U.S. Patent No. 6,728,729 (Ex.
`
`1019), also filed in 2003, defined “playlist” in a similarly unconstrained manner:
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`Playlists are collections of media that may or may not be in any
`
`particular order. Users may choose to combine media by genre,
`
`mood, artists, audience, or any other meaningful arrangement.
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`(Ex. 1019 at 5:9-12 (emphasis added).)
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`Thus, the Patent Owner’s proposed construction of “playlist” is certainly not
`
`the broadest reasonable construction consistent with the '873 specification, and it is
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`inconsistent with usage of this term in the media file sharing arts. The Board
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`should adopt the same construction of that it adopted in IPR2013-00597.
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`B.
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`The Challenged Claims Are Unpatentable
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`1.
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`Claims 1, 2, 6-12, 15-31, 35-41 and 44-46 are Obvious over
`Bi and Erekson
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`As noted by the Board, Petitioner provided detailed explanations as to how
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`the subject matter of each claim is disclosed by Bi and Erekson. (Decision at 18.)
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`As detailed in the Petition (at 29-31), Bi discloses an interactive remote control
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`system in which a remote control “navigator” 260 is provided to select music to be
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`played by a computing platform by reference to playlists. (Bi at [0032].) In order
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`to browse music based upon a playlist, the playlist must be received from the
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`computing platform so that it can be displayed and the user can select music to
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`play.
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`As also detailed in the Petition (at 31-32), Erekson discloses a device, such
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`as a PDA, hand-held computer system, or palmtop computer system, that can be
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`used to control multiple different electronic devices, including operating as a
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`universal remote control. It does so by providing a display showing different
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`devices that can be selected for control (as shown in FIGS. 7 and 11 of Erekson).
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`Based upon these very clear disclosures, Dr. Bove reached the unremarkable
`
`conclusion that it would have been obvious to one of ordinary skill in the art to
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`combine the features of Bi and Erekson in order to advantageously provide a single
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`remote control to control various devices that would be used together with the
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`audio playing system of Bi, such as an amplifier and CD player. (Bove Decl. (Ex.
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`1002) ¶ 26.) Dr. Bove thus provided a clear reason why it would have been
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`obvious to combine the teachings of Bi and Erekson references.
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`Patent Owner’s arguments against the immediately apparent obviousness of
`
`combining Bi and Erekson fall flat for two separate reasons. First, Patent Owner
`
`raises a strawman by focusing upon limitations that are supposedly missing from
`
`Bi and Erekson, while ignoring the fact that those limitations are not recited in the
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`challenged claims. Second, Patent Owner, through its expert Dr. Loy, blatantly
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`mischaracterizes the content of both Bi and Erekson in an attempt to portray them
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`as somehow incompatible with each other.
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`The bulk of Patent Owner’s arguments focus on connection to the Internet;
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`for example, Patent Owner contends (a) that neither Bi nor Erekson disclose or
`
`provide any motivation to “connect the navigator directly to the Internet or the data
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`server” (Response at 33), (b) that “neither the stereo of Bi nor the remote of
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`Erekson is capable of directly communicating with or receiving media content
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`from the Internet content server” (id. at 34-35), (c) that “[i]mportantly, the
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`navigator of Bi … provides no teaching, suggestion, or motivation [] to connect its
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`navigator directly to the Internet” (id. at 35), and (d) that “[e]ven if a person of
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`ordinary skill in the art were to combine Erekson’s remote with Bi’s navigator, the
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`resulting navigator would still be incapable of obtaining media content/playlists
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`from the Internet/data server as described in the '873 patent” (id. at 36). In fact,
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`Patent Owner’s argument is almost entirely predicated upon these supposed
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`deficiencies. However, the claims do not contain these requirements.
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`Claim 1, in particular, simply recites that the first device receives a playlist;
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`there is no recitation of receiving anything at the first device from the Internet or a
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`data server, much less a playlist. Independent claims 30 and 46 are similarly bereft
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`of recitations about the Internet or a data server. Thus, Patent Owner’s arguments
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`regarding the Internet and data server are completely irrelevant to these claims.
`
`Independent claims 17 and 23 contain recitations regarding a network or
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`network transceiver, but there is no requirement whatsoever of “directly”
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`connecting to the Internet or a data server. Indeed, the '873 specification clearly
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`discloses that the network transceiver does not need to provide any direct
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`connection to the Internet, but instead includes any circuit or device that facilitates
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`connections via a network, including Bluetooth and WiFi. ('873 patent at 4:6-10,
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`16:8-5.) As Bi (see, e.g., [0028]) and Erekson (see, e.g., 4:42-53) each disclose
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`both Bluetooth and Wi-Fi, the Patent Owner’s attempts to distinguish them lacks
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`merit.
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`Similarly, independent claims 25 and 26 recite receiving a playlist from a
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`playlist server; but again, in view of the broad disclosure that the network
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`connection can be via Bluetooth or WiFi, there is no requirement of a direct
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`Internet connection. Bi clearly discloses receiving playlists, and in the case of
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`music that is not local to the computing platform, the playlists will be received
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`from the data server via the Internet.
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`Patent Owner’s second tack is to argue that “the combination of Bi’s system
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`with Erekson would result in an inoperable system” because Erekson’s remote
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`“would not be able to control an analog stereo of Bi.” (Response at 36.) Thus,
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`according to Patent Owner, one of ordinary skill would never consider using the
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`Bluetooth-controlled playback device of Bi with one or more additional Bluetooth-
`
`controlled devices in a music system (such as an amplifier and/or CD player) to
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`control functions such as input selection, volume control, and play/pause. Yet this
`
`is precisely what Erekson discloses, i.e., providing and using multiple Bluetooth-
`
`controlled devices with a single universal remote control to control an overall
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`system.
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`Under 35 U.S.C. § 103, a claimed invention is unpatentable if the
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`differences between the claimed invention and the prior art are such that the
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`claimed invention as a whole would have been obvious to one of ordinary skill in
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`the art. Here, Patent Owner has essentially done nothing more than attack the
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`references individually. This type of restrictive approach to the obviousness
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`inquiry was soundly rejected by the Supreme Court in KSR Int’l Co. v. Teleflex,
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`Inc., 550 U.S. 398 (2007), and in numerous post-KSR Federal Circuit opinions. As
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`recently recounted in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013):
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`Rejecting a blinkered focus on individual documents, the Court [in
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`KSR] required an analysis that reads the prior art in context, taking
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`account of “demands known to the design community,” “the
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`background knowledge possessed by a person having ordinary skill in
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`the art,” and “the inferences and creative steps that a person of
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`ordinary skill in the art would employ.”
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`Id. at 1362. It is difficult to imagine a more “blinkered focus on individual
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`documents” than that presented by Patent Owner here. The Patent Owner
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`essentially argues that Bi has no room for improvement, and that a skilled artisan
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`would reject any possible improvement and not consider that salutary benefits may
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`be provided by incorporating Erekson’s improved control of multiple devices.
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`The Patent Owner improperly seeks to transform one of ordinary skill into
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`an automaton. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk
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`Contractors USA, Inc., 617 F.3d 1296, 1304 (Fed. Cir. 2010) (“[The patentee’s]
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`first argument that the combination would result in two advancing stations, two
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`preparation stations, and two transfer assemblies asks us to improperly turn the
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`person of ordinary skill in the art into an ‘automaton’ that can only add pieces of
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`prior art.”). And Patent Owner’s focus on the supposed “inoperability” of a
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`hypothetical physical system combining Bi and Erekson is similarly misplaced. As
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`noted in In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012):
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`It is well established that a determination of obviousness based on
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`teachings from multiple references does not require an actual, physical
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`substitution of elements. In re Etter, 756 F.2d 852, 859 (Fed. Cir.
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`1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated
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`into Ambrosio are basically irrelevant, the criterion being not whether
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`the references could be physically combined but whether the claimed
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`inventions are rendered obvious by the teachings of the prior art as a
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`whole.”).
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`Id. at 1332. In any event, Patent Owner’s supposition that a combination of Bi and
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`Erekson would be inoperable is simply wrong. There is nothing incompatible
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`about providing the remote navigator of Bi with both Bluetooth control for new
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`devices, which would facilitate remote control of, for example, a new amplifier
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`having Bluetooth capability, and IR control that provides for “legacy” devices.
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`Contrary to Dr. Loy’s assertions (see Loy Decl. ¶¶ 97-98), replacing or
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`reengineering of “all those millions and millions” of devices would not be
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`required. Indeed, Dr. Loy’s arguments about the supposed difficulties and
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`challenges of controlling “analog audio” (Loy Decl. ¶¶ 101-103) are totally
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`misplaced. Whether a stereo that is used with the system of Bi is “analog” (i.e.,
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`receives an analog audio signal for powering speakers) is unrelated to what kind of
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`signal (e.g., IR or Bluetooth) is used to provide for remote control of that device.
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`Dr. Loy’s pronouncements about the supposed incompatibility of the
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`navigator of Bi with the PDA of Erekson are baseless. Without any basis, Dr. Loy
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`characterizes Bi as a “thin client” and states that Erekson’s wireless remote control
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`“would have to have substantially more memory and computing power than Bi’s
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`navigator to perform its more sophisticated set of functions” and would thus need a
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`“more robust” microprocessor. (Loy Decl. ¶¶ 105-112.) Again, these assertions
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`are irrelevant, as physical substitution is not a prerequisite to obviousness.
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`Moreover, Dr. Loy’s declarations about the vast differences between the
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`computing power of Bi and Erekson are clearly wrong. Bi specifies that “[c]ontrol
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`of the navigator 260 rests in the processor 261, which is, for example, a Motorola
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`MC68EZ328.” (Bi at [0036].) A 1998 Motorola Application Note for the
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`DragonBall™ processor (Ex. 1022) includes an illustration of “a common
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`MC68EZ328-based PDA design” on its cover (see id. at Fig. 1). This shows that
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`the navigator 260 used in Bi employed a processor that is used in PDAs. The
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`bottom line is that Dr. Loy failed to provide any actual evidence to substantiate the
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`supposed substantial differences between Erekson’s PDA and Bi’s navigator. In
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`fact, it appears that the Bi navigator was essentially a form of PDA, as evidenced
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`by a comparison between the Motorola drawing (id. at Fig. 1) and FIG. 5 of Bi.
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`Finally, Patent Owner’s misguided arguments about browsing of playlists
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`(Response at 39; Loy Decl. ¶¶ 122-123) evidence a studied ignorance of the
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`content of Bi. Bi expressly discloses that browsing can be done on the basis of
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`various types of criteria, including playlists. (Bi at [0032].) In order to browse
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`content based upon any of these criteria, it is apparent that the selected criteria
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`would be displayed; otherwise a browse of music based upon such criteria could
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`not be done. Patent Owner’s arguments are based upon its strained and
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`unreasonably narrow construction of “playlist” and are unsupportable.
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`2.
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`Claims 13 and 42 are Obvious over Bi, Erekson, and Janik
`'955
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`Claims 13 and 42 add the feature of providing for shuffle play. As indicated
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`by Dr. Bove (see, e.g., Decl. at ¶ 33), such functionality was in common use, even
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`in prior devices such as CD players, and it would have been obvious to provide
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`such a feature as disclosed in Janik in the system of Bi. As it does throughout its
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`response, Patent Owner incorrectly assumes that there must be a “motivation to
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`combine.” (Response at 44.) As set forth in the Petition at 45, providing shuffle
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`control is simply adding a known feature to a known device to achieve predictable
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`results.
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`III. CONCLUSION
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`For the foregoing reasons, as well as those in its Petition, Petitioner requests
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`cancellation of claims 1, 2, 6-13, 15-31, 35-42, and 44-46 of the '873 patent.
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`Dated: August 12, 2014
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`
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`By /David L. Fehrman/
`David L. Fehrman, Reg. No.: 28,600
`Mehran Arjomand, Reg. No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`(213) 892-5200
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`393032805500
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`I hereby certify that the attached “Petitioner Yamaha Corporation of
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`America’s Reply to Patent Owner Response” was served on the below date on the
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`Patent Owner via e-mail (by consent) to the following counsel of record for the
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`Patent Owner:
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`Lana Gladstein (gladsteinl@pepperlaw.com)
`Thomas Engellenner (engellennert@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
`
`Christopher Horgan (chris.horgan@concerttechonology.com)
`Concert Technology
`1438 Dahlia Loop
`San Jose, CA 95126
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`
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`Dated: August 12, 2014
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`__/Mehran Arjomand/____
`Mehran Arjomand
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