Patent No. 8,214,873
`Petition For Inter Partes Review
`
`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. ______
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 2
`
`III. CO-PENDING LITIGATIONS ...................................................................... 2
`
`IV. PROSECUTION HISTORY .......................................................................... 4
`
`A.
`
`B.
`
`Parent Application Issued As '323 Patent ............................................ 4
`
`Continuation Application Issued As Challenged '873 Patent .............. 5
`
`V.
`
`CLAIM CONSTRUCTION ........................................................................... 6
`
`A.
`
`B.
`
`C.
`
`Identifier ............................................................................................... 6
`
`Directing The Second Device To Receive A Media Item ................... 7
`
`Download And Stream ......................................................................... 8
`
`VI.
`
`IDENTIFICATION OF CHALLENGE ......................................................... 9
`
`A.
`
`Statutory Grounds For The Challenge Of Each Claim ........................ 9
`
`1.
`
`2.
`
`3.
`
`Grounds Based on US2002/0068558 A1 to Janik and
`US2002/0065902 A1 to Janik as Primary References ............... 9
`
`Grounds Based on US2002/0087996 A1 to Bi et al. and
`U.S. Patent No. 6,622,018 to Erekson as Primary
`References ................................................................................ 10
`
`Ground Based on U.S. Patent No. 6,502,194 to Berman
`et al. and U.S. Patent No. 6,127,941 to Van Ryzin ................. 10
`
`VII. GROUNDS BASED ON JANIK '558 AND JANIK '902 AS
`PRIMARY REFERENCES .......................................................................... 11
`
`A. Ground 1 – Obviousness Of Claims 1, 2, 4, 6-12, 15-31, 33, 35-
`41, And 44-46 Based On Janik '558 In View Of Janik '902 .............. 11
`
`1.
`
`Claims 1, 2, 4, 6-8, 10-12, 15-23, 25-31, 33, 35-37, 39-
`41, And 44-46 .......................................................................... 11
`
`2.
`
`Claims 9, 24, And 38 ............................................................... 26
`
`B.
`
`Ground 2 – Obviousness Of Claims 9 And 38 Based On Janik
`'558 And Janik '902 In View Of Neoh ............................................... 27
`
`
`
`
`
`i
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`C.
`
`Ground 3 – Obviousness Of Claims 5 And 34 Based On Janik
`'558 And Janik '902 In View Of Cardoza .......................................... 27
`
`D. Ground 4 – Obviousness Of Claims 13 And 42 Based On Janik
`'558 And Janik '902 In View Of Janik '955 ........................................ 28
`
`VIII. GROUNDS BASED ON BI AND EREKSON AS PRIMARY
`REFERENCES ............................................................................................. 28
`
`A. Ground 5 – Obviousness Of Claims 1, 2, 6-12, 15-31, 35-41,
`And 44-46 Based On Bi In View Of Erekson .................................... 28
`
`B.
`
`C.
`
`Ground 6 – Obviousness Of Claims 4-5 And 33-34 Based On
`Bi In View Of Erekson And Further In View Of P800 ..................... 44
`
`Ground 7 – Obviousness Of Claims 13 And 42 Based On Bi In
`View Of Erekson And Further In View Of Janik '955 ....................... 45
`
`IX. GROUND BASED ON BERMAN AND VAN RYZIN ............................. 46
`
`A. Ground 8 – Obviousness Of Claims 1, 2, 6-13, 15-31, 33, 35-
`42, And 44-46 Based On Berman In View Of Van Ryzin ................. 46
`
`X.
`
`CONCLUSION ............................................................................................. 60
`
`
`
`
`
`
`
`ii
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`
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`Exhibit List for Inter Partes Review of U.S. Patent No. 8,214,873
`
`Exhibit Description
`
`Exhibit #
`
`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
`
`Office Action dated March 1, 2012
`
`Notice of Allowance dated May 14, 2012
`
`U.S. Patent App. Pub. US2002/0068558 A1 to Janik
`
`U.S. Patent App. Pub. US2002/0065902 A1 to Janik
`
`U.S. Patent App. Pub. US2002/0040255 A1 to Neoh
`
`Cardoza, Take a Look at the Latest Integrated PDA/Cell Phone
`Devices, TECHREPUBLIC, April 8, 2002
`U.S. Patent App. Pub. 2003/0045955 A1 to Janik
`
`U.S. Patent App. Pub. US2002/0087996 A1 to Bi et al.
`
`U.S. Pat. No. 6,622,018 to Erekson
`
`Sony Ericsson P800/P802 White Paper (pages 1-14, 24-25, 36, 70-
`72, 87-88, 94, and 112)
`U.S. Patent No. 6,502,194 to Berman et al.
`
`U.S. Patent No. 6,127,941 to Van Ryzin
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`
`
`
`iii
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`

`

`
`
`Petitioner Yamaha Corporation of America (“Petitioner”) respectfully
`
`petitions for inter partes review of claims 1, 2, 4-13, 15-31, 33-42, and 44-46 of
`
`U.S. Patent No. 8,214,873 (“the '873 patent” (Ex. 1001)) in accordance with
`
`35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies Yamaha Corporation
`
`of America as the real party-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the related matters in
`
`Section III.
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel (and a power of attorney accompanies this Petition).
`
`Lead Counsel
`
`Backup Counsel
`
`David L. Fehrman
`dfehrman@mofo.com
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
`
`Mehran Arjomand
`marjomand@mofo.com
`Registration No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the '873 patent is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`
`
`
`1
`
`

`

`
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`II.
`
`INTRODUCTION
`
`The '873 patent is directed to a system and method for using a first device to
`
`provide remote control of the playing of multimedia items on a second device such
`
`as a media player. A device identifier is displayed on the first device to allow
`
`selection of the second device. A playlist, e.g., a list of songs, is received and
`
`displayed on the first device. The user selects one or more songs from the playlist,
`
`and the first device directs the media player to play the selected songs without user
`
`input via the media player.
`
`In this Petition, Petitioner presents numerous references that render obvious
`
`the challenged claims of the '873 patent. Section IV of this Petition summarizes
`
`the prosecution history of the '873 patent. Sections VI to IX set forth the detailed
`
`grounds for invalidity of the challenged claims. This showing is accompanied by
`
`the Declaration of Dr. V. Michael Bove, Jr. (“Bove Decl.,” Ex. 1002.)
`
`Accordingly, Petitioner respectfully requests a Decision to institute inter partes
`
`review.
`
`III. CO-PENDING LITIGATIONS
`
`On May 22, 2012, the Patent Owner filed suit against Petitioner Yamaha
`
`Corporation of America in the U.S. District Court for the District of Delaware
`
`
`
`
`2
`
`

`

`
`
`alleging infringement of several patents. See Black Hills Media, LLC v. Yamaha
`
`Corp. of America, No. 1:12-cv-00635-RGA (D. Del.). On September 12, 2012, the
`
`Patent Owner filed a First Amended Complaint alleging, inter alia, infringement of
`
`the '873 patent. The First Amended Complaint was served on September 19, 2012.
`
`Thus, this Petition has been filed within one year of Petitioner being served a
`
`complaint alleging infringement of the '873 patent. 35 U.S.C. § 315(b); 37 CFR
`
`§ 42.101(b).
`
`The Patent Owner has also filed lawsuits alleging infringement of the '873
`
`patent against Pioneer (1:12-cv-00634), Logitech (1:12-cv-00636), Sonos (1:12-cv-
`
`00637), LG (1:13-cv-00803), Sharp (1:13-cv-00804), Toshiba (1:13-cv-00805),
`
`and Panasonic (1:13-cv-00806) in the District of Delaware, and against Samsung
`
`(2:13-cv-00379) in the Eastern District of Texas. On August 5, 2013, the
`
`Delaware Court transferred four of the cases to the Central District of California,
`
`where the Yamaha (2:13-cv-06054), Pioneer (2:13-cv-05980), Logitech (2:13-cv-
`
`06055), and Sonos (2:13-cv-06062) cases are now pending.
`
`The Patent Owner also filed a recently instituted a Section 337 action in the
`
`U.S. International Trade Commission against LG, Sharp, Toshiba, Panasonic, and
`
`Samsung alleging, inter alia, infringement of the '873 patent. See Certain Digital
`
`Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater
`
`Systems, Tablets and Mobile Phones, Components Thereof and Associated
`
`
`
`
`3
`
`

`

`
`
`Software, Inv. No. 337-TA-882 (USITC). All of the above cases are currently
`
`pending.
`
`IV. PROSECUTION HISTORY
`
`A.
`
`Parent Application Issued As '323 Patent
`
`The application that issued as the '873 patent (i.e., Application No.
`
`13/207,113) was filed on August 10, 2011, as a continuation of Application No.
`
`10/840,109, filed on May 5, 2004, which issued as U.S. Patent No. 8,028,323 (“the
`
`'323 patent”). During prosecution of the '323 patent, rejections were made based
`
`on a combination of three references, namely U.S. Patent App. Pub.
`
`US2005/0262204 A1 to Szeto et al., in view of U.S. Patent App. Pubs.
`
`US2004/0119894 A1 to Higgins et al. and US2005/0113946 A9 to Janik (“Janik
`
`'946,” Ex. 1003). The rejections were appealed, and the applicant argued in its
`
`November 8, 2010 Appeal Brief (Ex. 1004) that the references lacked the feature in
`
`which a first device directs a second device to obtain (or receive) a media item,
`
`such as a song, without user input via the second device. With respect to the
`
`“without user input via the second device” limitation, the applicant argued:
`
`Appellant’s claim 35 further recites “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.” The Patent Office correctly concedes that Szeto fails
`
`to teach or suggest this feature, but asserts that Janik discloses this
`
`
`
`
`4
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`

`

`
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`feature (Final Office Action, page 3). Appellant respectfully
`
`disagrees. As discussed above, Janik discloses, among other features,
`
`that a PDA can be used as a system controller by manipulating
`
`software on a personal computer
`
`through a wireless LAN
`
`communication link (Janik, paragraph 0106). However, nowhere does
`
`Janik teach or suggest that the PDA can direct the stereo to receive a
`
`media item identified by a media item identifier from a content server
`
`under any circumstances, and certainly not without user input via the
`
`second device, as recited in Appellant’s claim 35.
`
`(Appeal Br. at 10 (Ex. 1004); emphasis in original.) The application was allowed
`
`in response to the Appeal Brief, and subsequently issued as the parent '323 patent.
`
`B. Continuation Application Issued As Challenged '873 Patent
`
`As noted above, the ‘113 application that ultimately issued as the '873 patent
`
`was filed on August 10, 2011, as a continuation of the application that issued as the
`
`'323 patent. The application was filed with 46 claims. Each independent claim
`
`included the limitation of directing a second device to perform a function, such as
`
`receiving a media item, “without user input via the second device,” as in the '323
`
`patent. An Office Action was mailed on March 1, 2012 (Ex. 1005) in which all of
`
`the claims were rejected based on obviousness-type double patenting in view of the
`
`claims of the parent '323 patent. The applicant filed a Terminal Disclaimer, and in
`
`response, the Examiner issued a Notice of Allowance on May 14, 2012 (Ex. 1006).
`
`
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`5
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`
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`V. CLAIM CONSTRUCTION
`
`Petitioner notes that a claim is given the “broadest reasonable construction in
`
`light of the specification” in inter partes review. See 37 C.F.R. § 42.100(b). With
`
`respect to the '873 patent, it is submitted that the claim terms should be accorded
`
`their ordinary and customary meaning as understood by one of skill in the art. A
`
`few terms warrant specific discussion regarding their proper construction.
`
`A.
`
`Identifier
`
`The term “identifier” appears in numerous claims. For example, the terms
`
`“device identifier” and “media item identifier” are recited in independent claims 1,
`
`25, 26, 27, 30, and 46. However, whereas device identifiers are recited as being
`
`displayed, media item identifiers are recited as being received as part of a playlist,
`
`without a recitation regarding displaying. Due to this inconsistent use, it is not
`
`clear whether an “identifier” is necessarily a displayed item. (Bove Decl. ¶¶ 12-
`
`13.)
`
`The specification indicates that both device identifiers and media item
`
`identifiers that make up a playlist are displayed. For example, with respect to
`
`device identifiers, it is stated at 11:60-67 that a list of devices is displayed on the
`
`first device and one is selected by a user. With respect to media items, it is stated
`
`at 9:38-49 and 10:30-38 that songs within a playlist are displayed and can be
`
`selected. Song selection by use of the display is also discussed at 11:27-32.
`
`
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`6
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`

`
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`In view of the consistent discussion in the specification that both devices and
`
`songs are selected by selecting them from a display, it is submitted that the term
`
`“identifier” should be construed as “a visual representation of an item that is
`
`displayed and may be selected, including representations of devices and songs
`
`contained in a playlist.” (Bove Decl. ¶¶ 12-14.)
`
`B. Directing The Second Device To Receive A Media Item
`
`Each of the independent claims includes a recitation regarding directing the
`
`second device to receive or obtain a media item identified by a selected media item
`
`identifier. For example, claims 1, 26, and 46 each recite “directing, from the first
`
`device, the second device to receive a media item identified by the at least one
`
`media item identifier.” In the specification, it is disclosed that the second device is
`
`not merely a passive device that receives audio, but must take some action to
`
`receive a song. This is discussed, for example, in connection with FIG. 4 and
`
`specifically steps 46-48. (See, e.g., 11:53-12:20.) The second device actively
`
`obtains the song data as opposed to merely passively receiving audio data sent to it.
`
`(Bove Decl. ¶¶ 15-17.)
`
`Such active involvement by the second device was also the basis upon which
`
`the applicant distinguished the Janik '946 reference in prosecution, during which
`
`(as noted above) it was argued that Janik '946 does not disclose that the PDA can
`
`direct the stereo to receive a media item.
`
`
`
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`7
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`

`
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`Thus, consistent with the specification, the recitations contained in the
`
`claims regarding the second device being directed by the first device to receive a
`
`media item should be construed as requiring that the second device actively obtain
`
`a media item in response to a direction or instruction received from the first device.
`
`(Bove Decl. ¶¶ 15-17.)
`
`C. Download And Stream
`
`Claims 15, 18, 28, and 44 include recitations regarding downloading a media
`
`item, whereas claims 16, 19, 29, and 45 contain a parallel recitation regarding
`
`streaming a media item. The ordinary and customary meaning of “download” is
`
`that data, such as a song, is received and permanently saved in a computer so that it
`
`can be accessed as desired. In contrast, the ordinary and customary meaning of
`
`“stream” is that data is provided in real time and played as received, and no data is
`
`stored, other than for temporary buffering. (Bove Decl. ¶ 18.)
`
`However, the '873 specification does not clearly distinguish between
`
`downloading and streaming, as it uses both terms in connection with real-time
`
`playback. See, e.g., 5:20-24, 10:7-10, 10:15-21, 10:22-24, 10:26-29, 12:41-43,
`
`13:31-33; 15:32-35, 15:44-46, 15:61-63 (downloading), 7:21-21, 7:40-43, 7:47-59,
`
`7:60-62, 8:40-43 (streaming). As noted at 10:7-10, “the present invention
`
`generally does not attempt to store songs within the music rendering devices
`
`themselves, but rather generally downloads songs via a network, as needed.” As
`
`
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`8
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`

`

`
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`the specification essentially uses downloading and streaming in the same fashion,
`
`it is submitted that both terms should be construed in the same fashion, i.e., as
`
`receiving a media item in real time on an as-needed basis for immediate playing.
`
`(Bove Decl. ¶¶ 18-19.)
`
`VI.
`
`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner respectfully requests the
`
`cancellation of claims 1, 2, 4-13, 15-31, 33-42, and 44-46 of the '873 patent.
`
`A.
`
`Statutory Grounds For The Challenge Of Each Claim
`
`The statutory grounds for the challenge of each claim are set forth below.
`
`All the statutory citations are pre-AIA.
`
`1. Grounds Based on US2002/0068558 A1 to Janik and
`US2002/0065902 A1 to Janik as Primary References
`
`Ground 1 – Obviousness under 35 U.S.C. § 103(a) of claims 1, 2, 4, 6-12, 15-31,
`
`33, 35-41, and 44-46 based on U.S. Patent App. Pub. US2002/0068558 A1 to Janik
`
`(“Janik '558,” Ex. 1007) in view of U.S. Patent App. Pub. US2002/0065902 A1 to
`
`Janik (“Janik '902,” Ex. 1008).
`
`Ground 2 – Obviousness under 35 U.S.C. § 103(a) of claims 9 and 38 based on
`
`Janik '558 and Janik '902 in view of U.S. Patent App. Pub. US2002/0040255 A1 to
`
`Neoh (“Neoh,” Ex. 1009).
`
`Ground 3 – Obviousness under 35 U.S.C. § 103(a) of claims 5 and 34 based on
`
`Janik '558 and Janik '902 in view of Cardoza, Take a Look at the Latest Integrated
`
`
`
`
`9
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`

`

`
`
`PDA/Cell Phone Devices, TECHREPUBLIC, Apr. 8, 2002 (“Cardoza,” Ex. 1010).
`
`Ground 4 – Obviousness under 35 U.S.C. § 103(a) of claims 13 and 42 based on
`
`Janik '558 and Janik '902 in view of U.S. Patent App. Pub. 2003/0045955 A1 to
`
`Janik (“Janik '955,” Ex. 1011).
`
`2. Grounds Based on US2002/0087996 A1 to Bi et al. and U.S.
`Patent No. 6,622,018 to Erekson as Primary References
`
`Ground 5 – Obviousness under 35 U.S.C. § 103(a) of claims 1, 2, 6-12, 15-31, 35-
`
`41, and 44-46 based on U.S. Patent App. Pub US2002/0087996 A1 to Bi et al.
`
`(“Bi,” Ex. 1012) in view of U.S. Patent No. 6,622,018 to Erekson (“Erekson,” Ex.
`
`1013).
`
`Ground 6 – Obviousness under 35 U.S.C. § 103(a) of claims 4-5 and 33-34 based
`
`on Bi in view of Erekson and further in view of Sony Ericsson P800/P802 White
`
`Paper (pages 1-14, 24-25, 36, 70-72, 87-88, 94, and 112) (“the P800,” Ex. 1014).
`
`Ground 7 – Obviousness under 35 U.S.C. § 103(a) of claims 13 and 42 based on
`
`Bi in view of Erekson and further in view of Janik '955.
`
`3. Ground Based on U.S. Patent No. 6,502,194 to Berman et al.
`and U.S. Patent No. 6,127,941 to Van Ryzin
`
`Ground 8 – Obviousness under 35 U.S.C. § 103(a) of claims 1, 2, 6-13, 15-31, 33,
`
`35-42, and 44-46 based on U.S. Patent No. 6,502,194 to Berman et al. (“Berman,”
`
`Ex. 1015) in view of U.S. Patent No. 6,127,941 to Van Ryzin (“Van Ryzin,” Ex.
`
`1016).
`
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`10
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`Set forth below is a discussion of how the challenged claims of the '873
`
`patent are unpatentable under the statutory grounds raised, including claim charts
`
`specifying where each element of a challenged claim is met by the prior art. 37
`
`C.F.R. § 42.104(b)(4). The showing in these sections establishes a reasonable
`
`likelihood of prevailing as to each ground of invalidity with respect to the
`
`challenged claims as to that ground. This showing is accompanied by the
`
`Declaration of Dr. V. Michael Bove, Jr. (Ex. 1002) as noted above.
`
`VII. GROUNDS BASED ON JANIK '558 AND JANIK '902 AS PRIMARY
`REFERENCES
`
`A. Ground 1 – Obviousness Of Claims 1, 2, 4, 6-12, 15-31, 33, 35-41,
`And 44-46 Based On Janik '558 In View Of Janik '902
`
`1.
`
`Claims 1, 2, 4, 6-8, 10-12, 15-23, 25-31, 33, 35-37, 39-41, And
`44-46
`
`Janik '558 was published on June 6, 2002, and Janik '902 was published on
`
`May 30, 2002. Therefore, both are prior art under 35 U.S.C. § 102(b) based on the
`
`earliest possible effective filing date of the '873 patent, i.e., May 5, 2004. Neither
`
`of these Janik references was cited or considered during the prosecution of the
`
`'873 patent. Notably, Janik '558 and Janik '902 are different from Janik '946,
`
`which was used by the Examiner in the prosecution of the '323 patent. As
`
`discussed in detail below, both disclose precisely the feature that was argued to be
`
`missing from the prior art during the prosecution of the parent '323 patent, i.e.,
`
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`11
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`
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`control of a second device to play a media item from a playlist by making a
`
`selection on a first device, without user input via the second device.
`
`Janik '558 discloses use of a wireless handheld device for controlling other
`
`devices, including selecting media content to be played on such devices. One
`
`embodiment of Janik '558 is illustrated in FIG. 1, reproduced below:
`
`
`
`Various client devices 78a-78d appear as nodes on local area network 70.
`
`([0127].) In one embodiment, system control application 18 “serves the function
`
`of managing the connection between content 10 and various servers on Internet 8,
`
`and PC 34 and storage gateway 38, and also manages the flow of information
`
`between PC 34 and storage gateway 38, and client devices 78.” ([0095].) To
`
`facilitate this, the Graphical User Interface (“GUI”) module 46 of the system
`
`control application 18 generates a GUI (with various interfaces shown in FIGS. 3-
`
`11, 14-16, 22, and 39-42) on the screen of PC 34. ([0084]; [0098].) Client devices
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`78 appear on the system console GUI 16. ([0097]-[0106].) Two of the
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`12
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`
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`client/remote devices shown in the system console (illustrated by itself in FIG. 3),
`
`an audio playback device 86 and webpad 92, are shown below. In addition, the
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`local speakers of the PC 34 are also shown as an audio device (not a client device)
`
`that can be selected. (FIG. 3; [0167].)
`
`
`
`
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`A webpad version of the GUI, such as shown on PC 34, can be presented on
`
`webpad 92. ([0242]-[0243].) Webpad 92 is “similar to many PDAs” and includes
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`an “integral wireless LAN transceiver.” ([0199].) Because the GUI shown in PC
`
`34 can also be presented on webpad 92, the webpad is able to select and control
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`various network devices, including playback of audio content. ([0242]-[0243].)
`
`The GUI, presented on webpad 92, “allow[s] the user to access playlists and
`
`tracks, and control audio playback device 86 in real time while away from PC 34.”
`
`([0243]; see, e.g., FIGS. 4-11, 14-15.) As noted above, because the speakers of PC
`
`34 are also selectable on the GUI, audio can also be played back through the
`
`speakers of PC 34. ([0088]; [0198]; [0243].)
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`13
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`
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`FIGS. 4-11 show the system console GUI 16, which displays selectable
`
`devices, as well as content editor GUI 24, which displays playlists and tracks of
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`audio content that are available for selection via the GUI. ([0085]-[0093]; [0146]-
`
`[0149]; [0167]; [0178].) Once audio content is selected for playback, playback can
`
`be controlled by audio playback device controller 60. ([0178]-[0179]; FIG. 15.)
`
`Janik '902 is directed to provision of a wireless webpad that is used to
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`control access to digital content, such as the playing of digital audio files. One
`
`embodiment of the Janik '902 system is illustrated in FIG. 1, reproduced below.
`
`The below figure is very similar to FIG. 1 of Janik '558. In FIG. 1 of Janik '992,
`
`wireless webpad 32 is a node in a local area network (LAN) that includes a PC and
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`various other client devices. ([0038]-[0041].) The wireless webpad 32 can be used
`
`to select and play audio content from the PC at another device, including, for
`
`example, a digital audio converter. ([0067]-[0069].)
`
`
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`14
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`

`
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`The webpad 32 may be a PDA, as shown below in FIG. 2. ([0039].) The webpad
`
`is provided with a graphical user interface (GUI) including a “webpad playlist
`
`manager GUI application 276.” (FIG. 6; [0054].) The GUI application facilitates
`
`selection of material by organizing it as channels, playlists, and tracks.
`
`
`
`It is submitted that claims 1, 2, 4, 6-8, 10-12, 15-23, 25-31, 33, 35-37, 39-41,
`
`and 44-46 would have been obvious based on Janik '558 in view of Janik '902. It
`
`would have been obvious to employ the various features of the related systems in
`
`Janik '558 and Janik '902 together. See, e.g., Boston Scientific Scimed, Inc. v.
`
`Cordis Corp., 554 F.3d 982, 991-92 (Fed. Cir. 2009). In Boston Scientific, the
`
`Federal Circuit found a claim to be obvious in view of a single reference that
`
`disclosed “all of the limitations . . . in two separate embodiments.” Id. at 991. In
`
`making the obviousness determination, the Federal Circuit observed that
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`
`
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`15
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`“[c]ombining two embodiments disclosed adjacent to each other in a prior art
`
`patent does not require a leap of inventiveness.” Id.
`
`Here, although there are two separate references, they are from the same
`
`source and relate to the same type of system, and it similarly “does not require a
`
`leap of inventiveness” to combine their features. (Bove Decl. ¶ 20.) The
`
`disclosures overlap. Whereas Janik '558 provides a detailed disclosure of the
`
`overall system, including the basic operation of a webpad, Janik '902 discloses
`
`specifics about the webpad itself, including, e.g., details of the nested playlist
`
`structure and GUI representation of playlists and individual tracks for selection. It
`
`would have been obvious to one of skill in the art to employ such a nested list
`
`structure in the system of Janik '558, especially in view of its statement that the
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`user can use the webpad “to access playlists and tracks.” (Id.)
`
`Set forth below is a claim chart that specifies where each element of a
`
`challenged claim is met by Janik '558 and/or Janik '902.
`
`Claim
`1. A method for facilitating the
`presentation of media, the method
`comprising:
`[a] displaying, on a first device, at least
`one device identifier identifying a
`second device;
`
`Janik '558 In View Of Janik '902
`
`
`
`The webpad 92 in Janik '558 is a first
`device. The webpad can display various
`network devices, i.e., device identifiers,
`on its GUI, such as audio playback
`device 86 and PC 34. The GUI is
`discussed in connection with the PC and
`subsequently with reference to the
`webpad. See, e.g., FIGS. 3-4; [0167];
`
`
`
`
`16
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`

`
`
`Claim
`
`[b] receiving user first input selecting
`the at least one device identifier;
`
`[c] receiving, on the first device, a
`playlist, the received play-list
`comprising a plurality of media item
`identifiers;
`
`[d] receiving user second input selecting
`at least one media item identifier from
`the received playlist; and
`
`Janik '558 In View Of Janik '902
`[0242]-[0243].
`
`Webpad 32 in Janik '902 is also a first
`device. The webpad can display device
`identifiers on its GUI. See, e.g., FIGS.
`1, 2, 6; [0069] (“A GUI element in
`webpad playlist manager application
`276 allows the user to select either
`digital audio converter or webpad 32 as
`the target device for the audio stream.”).
`Janik '558 - a user can select the audio
`playback device 86 or local speakers of
`the PC from the device identifiers in the
`GUI that is presented on webpad 92.
`See, e.g., FIG. 3; [0167]; [0178]; [0243]
`(“For example, a webpad 92 version of
`audio device content editor and audio
`device controller GUI allow the user to
`access play lists and tracks, and control
`audio playback device 86 in real time
`while away from PC 34.”).
`
`Janik '902 - See, e.g., FIGS. 1, 2, 6;
`[0069].
`Janik '558 - playlist(s) can be presented
`on the GUI of webpad 92. See, e.g.,
`FIG. 4; [0085]-[0087]; [0147]; [0176];
`[0178]; [0209]; [0242]-[0243].
`
`Janik '902 - webpad 32 receives a
`playlist having media item identifiers.
`See, e.g., FIG. 6 (playlist manager 276);
`[0054] (“playlists are lists of tracks.
`Track is a GUI representation of a
`locally cached digital audio file or a
`digital audio stream from Internet 8.”).
`Janik '558 - the user can select a media
`item, i.e., track, from the received and
`displayed playlist. See above; [0243].
`
`
`
`
`17
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`

`
`
`Claim
`
`[e] 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.
`
`2. The method as recited in claim 1,
`wherein the first device comprises a
`handheld portable device.
`
`4. The method as recited in claim 1,
`wherein the first device comprises an
`MP3 player.
`
`Janik '558 In View Of Janik '902
`
`
`Janik '902 - [0054] (playlist structures
`“can be interacted with by the user with
`the webpad playlist manager GUI
`application 276 running on wireless
`webpad 32.”).
`Janik '558 - webpad 92 can direct audio
`playback device 86 or PC, which are
`both second devices, to receive the
`selected content from an Internet content
`server without user input at those
`devices. See, e.g., FIGS. 1, 12, 15;
`[0127]; [0167]; [0176] (“In real-time
`mode, the user can activate and control
`the delivery of content 10 that has been
`set-up in audio device content editor 24,
`either at audio playback device 86, or at
`PC 34.”);[177] [0242]-[0243]
`(“Furthermore, webpad 92 can be used
`to control other client devices 78.”).
`XML messages are sent from webpad to
`PC 34 and audio playback device 86.
`
`Janik '902 - webpad 32 can direct
`streaming to selected device. See. e.g.,
`[0055]-[0056]; [0059]; [0067]-[0069].
`Janik '558 - webpad 92 is a handheld
`portable device. See, e.g., FIG. 29;
`[0198] (“A webpad 92 is defined as a
`PDA 164 or other tablet-based portable
`computing device . . . .”); [0242]-[0243].
`
`Janik '902 - [0039] (Palm PDA).
`Janik '558 - selected MP3 media content
`can be played back on the webpad
`(PDA), e.g., via an audio output jack,
`and therefore the webpad can be an MP3
`player. See, e.g., [0088]; [0198]; [0200]
`(“The wireless LAN adapter module 166
`
`
`
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`18
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`
`
`Claim
`
`6. The method as recited in claim 1,
`wherein the first device comprises a
`remote control operative to control the
`second device.
`7. The method as recited in claim 1,
`wherein the first device comprises a
`remote control operative to control the
`second device and the second device
`comprises a media rendering device.
`
`8. The method as recited in claim 7,
`wherein the first device is operative to
`adjust a volume parameter on the second
`device.
`10. The method as recited in claim 7,
`wherein the first device is operative to
`adjust a balance parameter on the
`second device.
`11. The method as recited in claim 1,
`further comprising displaying a plurality
`of device identifiers on the first device,
`wherein each of the plurality of device
`identifiers identifies a corresponding
`device, and wherein receiving the user
`first input selecting the at least one
`device identifier further comprises
`receiving the user first input selecting
`the at least one device identifier from
`the plurality of device identifiers.
`
`Janik '558 In View Of Janik '902
`also includes an audio DAC and an
`audio output jack 416 that is used to
`play back audio content sent from the
`PC 34, such as an MP3 file, through
`earphones that connect to the wireless
`LAN adapter module.”).
`
`Janik '902 - [0041]; [0059]-[0060].
`Janik '558 - FIG. 15; [0243]. See also
`claim 1.
`
`Janik '902 - [0067]-[0069].
`Janik '558 - PC and audio playback
`device 86 are media rendering devices
`that are controlled by webpad 92, which
`operates as a remote control to these
`devices. See claims 1 and