UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2013-00597
`U.S. Patent 8,230,099
`___________________
`
`DECLARATION OF Gareth Loy, D.M.A.
`
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ................................................ 2
`
`III. LEGAL STANDARDS .................................................................................. 6
`A. Anticipation .......................................................................................... 6
`B.
`Obviousness .......................................................................................... 7
`
`IV. DEFINITION OF THE PERSON OF SKILL IN THE ART ....................... 11
`
`V.
`
`THE STATE OF RELEVANT ART ............................................................ 11
`
`VI. Overview of the US 8,230,099 Patent .......................................................... 17
`
`VII. Opinions as to Claim Construction of the ‘099 Patent ................................. 20
`
`VIII. Overview of ALLEGED PRIOR ART ......................................................... 32
`A.
`Summary of United States Patent Application 2002/0087996 .......... 32
`B.
`Summary of International Patent Application WO 01/17142 to
`Gladwin .............................................................................................. 38
`Summary of U.S. Patent No. 6,502,194 to Berman ........................... 43
`
`C.
`
`IX. Claim 6 of the ‘099 patent Is Neither Anticipated Nor Obvious ................. 47
`A.
`Bi Does Not Anticipate Claim 6 ........................................................ 48
`B.
`Gladwin does not anticipate Claim 6 ................................................. 50
`C.
`Berman Does Not Render Claim 6 Obvious ...................................... 52
`
`X.
`
`Claim 12 of the ‘099 patent Is Neither Anticipated Nor Obvious ............... 54
`A. Gladwin Does Not Anticipate Claim 12 ............................................ 54
`B.
`Bi Does Not Anticipate Claim 12 ...................................................... 56
`C.
`Berman Does Not Render Claim 12 Obvious .................................... 60
`
`XI. CLAIM 2 of the ‘099 patent Is Neither Anticipated Nor Obvious .............. 68
`A.
`Bi Does Not Anticipate Claim 2 ........................................................ 69
`B.
`Gladwin Does Not Anticipate Claim 2 .............................................. 69
`C.
`Berman Does Not Render Claim 2 Obvious ...................................... 70
`
`XII. Claim 10 OF THE ‘099 PATENT Is Not Anticipated ................................. 70
`A.
`Bi Does Not Anticipate Claim 10 ...................................................... 70
`
`XIII. Claim 11 of the ‘099 patent is neither anticipated nor obvious.................... 72
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`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`A.
`B.
`C.
`
`Bi Does Not Anticipate Claim 11 ...................................................... 72
`Gladwin Does Not Anticipate Claim 11 ............................................ 73
`Berman Does Not Render Claim 11 Obvious .................................... 74
`
`
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`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`I, Gareth Loy, declare:
`
`I.
`
`INTRODUCTION
`
`1.
`
`
`I have been retained by Counsel for Patent Owner to
`
`provide opinions on certain issues concerning Inter Partes Review No.
`
`IPR2013-00597 of U.S. Patent No. 8,230,099 (“the ‘099 Patent”).
`
`2.
`
`
`I am aware that the Petition filed in the above-identified
`
`proceeding asserted various grounds and that the Patent Trial and Appeals
`
`Board (“Board”) instituted this proceeding on a subset of the asserted
`
`grounds. I am also aware that Petitioner submitted with the Petition a
`
`declaration of V. Michael Bove, Jr., Ph.D. opining on claim construction and
`
`the validity of the challenged claims.
`
`3.
`
`
`I have been asked to analyze the ‘099 Patent, the art cited
`
`by the Petitioner, the Bove Report, and the Institution Decision dated March
`
`20, 2014 (“the Institution Decision”) as they relate to the particular grounds
`
`instituted by the Board. I understand that the Board instituted this proceeding
`
`on the grounds as stated below:
`
`References
`US2002/0087996
`(B)i
`WO01/17142
`(Gladwin)
`US 6,502,194
`(Berman)
`
`Basis
`§ 102(b)
`
`Challenged Claims
`1, 2, 6, and 9-12
`
`§ 102(b)
`
`1, 2, 6, 9, 11, 12
`
`§ 103(a)
`
`1, 2, 6, 9, 11, 12
`
`
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`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`4.
`
`
`My opinions are set forth below. I make these statements
`
`based upon facts and matters within my own knowledge or on information
`
`provided to me by others. All such facts and matters are true to the best of
`
`my knowledge and belief.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`5.
`
`
`I am the President of Gareth, Inc., which provides
`
`software engineering, consulting, and litigation support to high-technology
`
`companies internationally. Gareth Inc. provides research and development
`
`services including product development, coding and documentation. Gareth
`
`Inc. also provides a wide variety of software engineering services including
`
`embedded systems, real-time systems, operating systems support and
`
`development, file systems, compilers, parallel processing systems, and digital
`
`signal processing (DSP) systems.
`
`6.
`
`
`Gareth Inc. has prepared and provided compilers,
`
`interpreters and assemblers, enterprise software systems, chip architectures,
`
`software architectures, real-time operating systems, home entertainment
`
`systems, embedded systems, instruction set architectures, datasheets,
`
`databooks, user guides, and custom automated documentation systems.
`
`Technology clients have included Infineon, Philips Semiconductor, Trimedia
`
`Technologies, Equator Technologies, Pixim, Inc., Palm, Inc., Sonic
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`Solutions, Sony Corporation of America, Chromatic Research, Raza
`
`Microelectronics, Cradle Technologies, Siemens Microelectronics, Zoran
`
`Corporation, Dolby Laboratories, and C-Cube Microsystems.
`
`7.
`
`
`I have over 37 years of academic and professional
`
`experience in computer science, software development, embedded systems,
`
`networking, enterprise software systems, digital audio signal processing, and
`
`music technology. I received my doctorate from Stanford University in
`
`1980, where I studied under John Chowning at the Center for Computer
`
`Research in Music and Acoustics, which was a center within the Stanford
`
`Artificial Intelligence Laboratory directed by John McCarthy at the time.
`
`8.
`
`
`I was an early Apple Computer employee, having been
`
`hired there in 1979 full time while still in graduate school. I worked for Jef
`
`Raskin who reported directly to Steve Jobs, founder and CEO of Apple
`
`Computer. I left Apple in 1980 to teach at UCSD where I taught, for a
`
`decade, graduate and undergraduate courses in computer science and digital
`
`audio, and cofounded the Computer Audio Research Laboratory there.
`
`9.
`
`
`I have published widely in various peer-reviewed
`
`journals, and have authored three books with the MIT Press, including
`
`Musimathics, a two-volume introduction and reference to the mathematics of
`
`music published by the MIT Press.
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`10.
`
`
`I have been a Software Architect for multiple consumer
`
`and professional products for large international electronics companies and
`
`have sustained a long and successful career at the cutting edge of software
`
`development and multimedia computing.
`
`11.
`
`
`I am experienced in a variety of computer science
`
`domains, ranging from embedded systems, digital home entertainment
`
`systems, graphical user interfaces, real-time operating systems, parallel
`
`processing systems, signal processing computers, device drivers, and
`
`software for film, music, and audio. I have extensive experience in use of
`
`multiprocessor/multicore architectures to solve problems in digital audio
`
`signal processing. I have also provided expertise in compiler design, file
`
`systems, operating systems, handheld networked Personal Information
`
`Management (PIM) devices, network audio streaming systems, wireless
`
`remote control systems, digital loudspeaker systems, digital home
`
`entertainment systems, enterprise email systems, software for factory
`
`automation systems, interactive databases, enterprise software for managing
`
`of music libraries, MPEG audio compression, on-line gaming, composition
`
`systems, digital camera hardware and software, digital audio hardware and
`
`software technologies, and more.
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`12.
`
`
`I also have over seventeen years of experience as an
`
`expert witness on numerous cases. Most recently, I testified at an
`
`International Trade Commission Investigation No. 337-TA-882 hearing
`
`involving U.S. Patent Nos. 8,214,873 and 8,230,099. I have also testified
`
`before a jury under oath, have provided Markman claim construction
`
`testimony, and have presented exhibits and Markman tutorials in federal
`
`court in trademark infringement, inequitable conduct, and patent technology
`
`litigation. I have been retained as an expert witness in such areas as software
`
`for handheld networked Personal Information Management (PIM) devices,
`
`digital music player software, enterprise email systems, software for factory
`
`automation systems, digital camera hardware and software, internet customer
`
`tracking systems, SAP billing systems, interactive databases, software for
`
`management of music libraries, Digital Audio Recording Devices (DARD),
`
`MPEG audio compression, on-line gaming, human interface design, music
`
`composition systems, MIDI systems, network audio streaming systems,
`
`rendering of 3D digital audio, and digital audio hardware and software
`
`technologies.
`
`
`
` A complete list of my qualifications, including a list of 13.
`
`my publications and lectures is included in my CV, which is attached as
`
`APPENDIX A.
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`14.
`
`
`In connection with forming my opinions, I reviewed the
`
`documents listed in Exhibit B. Particularly, I analyzed the ‘099 patent and
`
`the art on which the trial was instituted. I also reviewed the September 19,
`
`2013, Declaration of V. Michael Bove, Jr. (“Bove Declaration”) and the
`
`Institution Decision dated March 20, 2013 (“the Institution Decision”) as
`
`they relate to the grounds instituted by the Board. In addition, I also attended
`
`Dr. Bove’s deposition on May 29, 2014. My opinions are set forth below. I
`
`make these statements based upon facts and matters within my own
`
`knowledge or on information provided to me by others. All such facts and
`
`matters are true to the best of my knowledge and belief.
`
`III. LEGAL STANDARDS
`
`A. Anticipation
`
`15.
`
`
`I understand that a claim is anticipated if a single prior art
`
`reference discloses, explicitly or inherently, all limitations of the invention
`
`arranged or combined in the same way as in the claim. I further understand
`
`that inherency may not be established by probabilities or possibilities, and the
`
`fact that one of ordinary skill in the art understands that the missing
`
`limitation could exist under certain circumstances is not sufficient. Instead,
`
`the party claiming inherency must prove that the missing matter is
`
`necessarily present and that it would be so recognized by a person of ordinary
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`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`skill in the relevant art. Whether the inherent disclosure was recognized at
`
`the time of the reference is immaterial.
`
`16.
`
`
`I further understand that the disclosure of an anticipatory
`
`reference must describe the claimed invention to a degree adequate to enable
`
`person of ordinary skill in the art to not only comprehend the invention, but
`
`also to make, or in the case of a method, use, the claimed invention without
`
`undue experimentation. Provided that the reference asserted is enabling, it is
`
`my understanding that it need not disclose any independent use or utility to
`
`anticipate a claimed invention.
`
`B. Obviousness
`
`17.
`
`
`It is my understanding that an invention is unpatentable if
`
`the differences between the invention and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention
`
`was made to a person having ordinary skill in the art. I further understand
`
`that obviousness is determined by evaluating: (1) the scope and content of the
`
`prior art, (2) the differences between the prior art and the claim, (3) the level
`
`of ordinary skill in the art, and (4) secondary considerations of non-
`
`obviousness. To establish obviousness based on a combination of the
`
`elements disclosed in the prior art, it is my understanding that a petitioner
`
`must identify a specific combination that teaches all limitations and establish
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`that a person of ordinary skill in the art at the time of the claimed invention
`
`would have found it obvious to make that combination.
`
`18.
`
`
`To guard against hindsight and an unwarranted finding of
`
`obviousness, I understand that an important component of any obviousness
`
`inquiry is whether the petitioner has identified any teaching, suggestion or
`
`motivation that would have prompted a person of ordinary skill in the art to
`
`make the claimed combination and have a reasonable expectation of success
`
`in doing so. I understand that this test should not be rigidly applied, but can
`
`be an important tool to avoid the use of hindsight in the determination of
`
`obviousness.
`
`19.
`
`
`I further understand that the teaching, suggestion, or
`
`motivation may be found explicitly or implicitly: (1) in the prior art; (2) in
`
`the knowledge of those of ordinary skill in the art that certain references, or
`
`disclosures in those references, are of special interest or importance in the
`
`field; or (3) from the nature of the problem to be solved. Additionally, I
`
`understand that the legal determination of the motivation to combine
`
`references allows recourse to logic, judgment, and common sense. In order
`
`to resist the temptation to read into prior art the teachings of the invention in
`
`issue, however, it should be apparent that the expert is not conflating
`
`“common sense” and what appears obvious in hindsight.
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`20.
`
`
`I understand that if the teachings of a prior art would lead
`
`a person of ordinary skill in the art to make a modification that would render
`
`another prior art device inoperable, then such a modification would generally
`
`not be obvious. I also understand that if a proposed modification would
`
`render the prior art invention being modified unsatisfactory for its intended
`
`purpose, then there is no suggestion or motivation to make the proposed
`
`modification.
`
`21.
`
`
`I understand that it is improper to combine references
`
`where the references teach away from their combination. I understand that a
`
`reference may be said to teach away when a person of ordinary skill in the
`
`relevant art, upon reading the reference, would be discouraged from
`
`following the path set out in the reference, or would be led in a direction
`
`divergent from the path that was taken by the applicant. In general, a
`
`reference will teach away if it suggests that the line of development flowing
`
`from the reference’s disclosure is unlikely to be productive of the result
`
`sought by the patentee. I understand that a reference teaches away, for
`
`example, if (1) the combination would produce a seemingly inoperative
`
`device, or (2) the references leave the impression that the product would not
`
`have the property sought by the patentee. I also understand, however, that a
`
`reference does not teach away if it merely expresses a general preference for
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`an alternative invention but does not criticize, discredit, or otherwise
`
`discourage investigation into the invention claimed.
`
`22.
`
`
`I understand that where the party asserting invalidity
`
`establishes a prima facie case of obviousness, the burden shifts to the patent
`
`owner to come forward with objective evidence demonstrating secondary
`
`considerations of non-obviousness. I have been instructed that secondary
`
`considerations include: (1) long-felt but unsolved need; (2) commercial
`
`success of the invention; (3) failed efforts of others; (4) copying by others;
`
`(5) praise for the invention; (7) unexpected results; (8) disbelief of experts;
`
`(9) general skepticism of those in the art; (10) commercial acquiescence; and
`
`(11) simultaneous development. I understand that evidence of secondary
`
`considerations must be considered as part of all the evidence, not just when
`
`the decision maker remains in doubt after reviewing the art.
`
`23.
`
`
`I also understand that there must be a nexus between the
`
`claimed invention and the secondary considerations before the evidence is
`
`relevant to the question of obviousness. In particular, in the case of
`
`commercial success of a product embodying the claimed invention, I
`
`understand that the success must be shown to have in some way been due to
`
`the nature of the claimed invention, as opposed to other economic or
`
`commercial factors unrelated to the technical quality of the patented subject
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`matter. I understand that commercial acceptance and licensing are indicative
`
`of nonobviousness where it involves prominent or a substantial portion of the
`
`competitors in the relevant market.
`
`IV. DEFINITION OF THE PERSON OF SKILL IN THE ART
`
`24.
`
`
`I understand that the Patentee proposed a definition of a
`
`person of ordinary skill in the art as having a bachelor’s degree in computer
`
`science or electrical engineering and one year of practical experience with
`
`networked media. I also understand that the Petitioner, on the other hand,
`
`proposed that a person of ordinary skill in the art would have a bachelor’s
`
`degree in computer science or electrical engineering and at least one year of
`
`practical experience. Because the Petitioner’s definition specifies an
`
`unlimited range of years, it is therefore overly expansive, and would include
`
`persons who are overqualified to be considered to have “ordinary skill in the
`
`art.” The Patentee’s definition is limited, and more in line with the
`
`qualifications and experience that a typical person of skill in the art would
`
`have had in 2004.
`
`V. THE STATE OF RELEVANT ART
`
`25.
`
`
`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 digital video media. (Bove Tr., Ex. 2012 at 120:5-
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`121:19) In the early 2000’s, the availability of technology that allowed for
`
`compression of digital music and video files, for example using MPEG
`
`technology, such as MP3 for compression of audio files, began to allow
`
`convenient storage of multiple media files on the 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.
`
`
`
` Nonetheless, since the early 2000’s, advances in 26.
`
`networking speed made media file sharing more feasible. With regard to
`
`audio files, MP3 technology was utilized, for example, to copy media from a
`
`CD (i.e., “to rip the CD”) and then compress and store the media on a
`
`computer for later playback by the computer that 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. . (See, e.g., Ex. 2013, “Windows Media Player 9 Series, Copying
`
`music from CDs, © 2000-2002 Microsoft Corporation”). MP3 compression
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`technology also facilitated downloading of media from servers on the Internet
`
`onto a computer, although the download speed was limited by the network
`
`bandwidth available in those times.
`
`27.
`
`
`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.
`
`(Bove Tr., Ex. 2012 at 120:21-24) For example, Napster, an independent
`
`peer-to-peer file sharing service that operated between June 1999 and July
`
`2001, allowed users to easily share their MP3 files. Portable MP3 players
`
`began to be available in the late 1990’s and early 2000’s. For example, the
`
`iPod from Apple computer was released on October 23, 2001.
`
`(http://www.ilounge.com/index.php/articles/comments/instant-
`expert-a-brief-history-of-ipod/#2004 (site last visited on 6/6/2014); Ex.
`
`2014, “A Brief History of iPod.pdf,” see, e.g., p. 1 “Key Milestones in the
`
`Life of the iPod 2001”). MP3 media ripped from a CD or purchased online
`
`could be stored on a computer, and from there could be downloaded onto a
`
`portable MP3 player such as the iPod. These portable devices depended upon
`
`the services of a general-purpose computer such as a desktop or laptop
`
`personal computer to provide networking, computation, input/output ports,
`
`and bulk storage. The usage paradigm for an MP3 player, for example, was to
`
`tether it via a cable to a computer, to run an application on the computer such
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`as Microsoft Windows Media Player or Apple iTunes that accessed a web
`
`site containing media content, and use that application to download media
`
`and playlists to the computer, and then from the computer to download a
`
`subset of the media to the MP3 player, which could then be detached and
`
`used portably.
`
`28.
`
`In 2004, remote control of player devices was effected by
`
`the use of conventional optical infrared (CIR) technology, 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.
`
`(http://www.phidgets.com/docs/IR_Remote_Control_Primer (site last
`
`visited on 6/6/2014); Ex. 2015,”IR Remote Control Primer - Phidgets
`
`Support.pdf”). Importantly, these simple dedicated remote controls were not
`
`provisioned to receive anything other than button presses by the person using
`
`the remote. Specifically, they were not designed to receive a playlist from a
`
`remote source, present the playlist to a user on the remote device, receive a
`
`user selection, and direct a player device to play the selected media item. CIR
`
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`technology, introduced as Dr. Bove points out [Bove Decl., ¶14] 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.
`
`(http://www.howstuffworks.com/inside-rc.htm/printable (site last
`
`visited on 6/6/14); Ex. 2016, “HowStuffWorks Inside a TV Remote
`
`Control.pdf”). 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 is subject to the same line-of-
`
`sight restrictions as CIR devices. (http://www.irda.org (site last visited on
`IrDA.pdf”; http://en.wikipedia.org/wiki/Infrared_Ex. 2017
`Data_Association (site last visited on 6/6/2014); Ex.
`
`6/6/2014); Ex. 2017, “Welcome to
`
`29.
`
`
`2018, “Infrared Data Association - Wikipedia, the free encyclopedia.pdf”).
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`
` Although in 2004, a handful of networked and cellular-30.
`
`enabled portable devices with general purpose processors such as the Pocket
`
`PC (http://en.wikipedia.org/wiki/Pocket_PC_2002 (site last visited on
`(http://en.wikipedia.org/wiki/Smartphone (site last visited on 6/6/2014);
`
`6/6/2014); Ex. 2019, “Pocket PC 2002 - Wikipedia, the free
`
`encyclopedia.pdf”) and the Smartphone
`
`Ex. 2020, “Smartphone - Wikipedia, the free encyclopedia.pdf”) were
`
`available, in the time frame of the ‘099 patent, wireless handheld remote
`
`control systems did not allow a mobile device to receive a playlist from a
`
`content server, display it to a user, receive a user media selection, and direct a
`
`media player device associated with but separate from the wireless handheld
`
`remote control to play the selected media item. These capabilities would
`
`eventually evolve in subsequent years as the utility of such advanced mobile
`
`devices was further developed.
`
`31.
`
`
`Indeed, 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. (Bove Tr., 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. (Bove Tr., Ex. 2012, at 130:7-12).
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`

`

`VI. OVERVIEW OF THE US 8,230,099 PATENT
`
`32.
`
`
`I understand that invalidity analysis begins at the relevant
`
`date of the technology at issue. The relevant date for the ‘099 patent is the
`
`filing date of the earliest priority application, which is May 5, 2004.
`
`33.
`
`
`The ‘099 patent is generally directed to employing a
`
`wireless hand-held remote control to receive a playlist and present the
`
`playlist to a user from which the user can select at least one media item for
`
`playback by a media player device. The ‘099 patent relates to systems and
`
`methods for sharing playlists among a remote source (such as a networked
`
`server), a wireless hand-held remote control and media player devices, where
`
`the media player devices are associated with and separate from the wireless
`
`hand-held remote control.
`
`34.
`
`
`Figure 2 of the ‘099 patent, reproduced below, shows an
`
`embodiment in which a playlist is communicated from server 11 via the
`
`internet 12, and the playlist is received by remote control 18. [‘099 at 9:1-4]
`
`The playlist is displayed on the remote control and a user can choose a media
`
`item from the playlist to be played by a dedicated media player. [‘099 at 9:5-
`
`8]
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`

`

`
`The ‘099 patent further provides that the dedicated media
`
`35.
`
`
`player 17 itself could receive playlists from the server, as well as from the
`
`hand-held remote. [‘099 at 8:58-61] Additionally, the ‘099 patent describes
`
`that playlists communicated to the dedicated media player “may be further
`
`communicated to a remote control therefore.” [‘099 at 9:10-11]. This
`
`communication may be from the dedicated media player 17 or from any other
`
`source (such as from the server 11 via the Internet 12).” [‘099 at 9:9-13].
`
`36.
`
` A key feature of the ‘099 patent is the provision of the
`
`hand-held remote with a direct network connection — separate from the
`
`media player device — so that it can communicate directly with other
`
`internet-enabled devices, such as the dedicated media player and remote
`
`server, on an equal footing. As a result of this versatile communication of
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`

`

`playlists from the Internet to the dedicated media player and/or the remote
`
`control, the “playlists may be stored in, displayed upon, and used to make
`
`selections from either the dedicated media player 17, the remote control 18,
`
`or both.” [‘099 at 9:21-23]
`
`37.
`
`
`Importantly, the prior art does not anticipate a wireless
`
`handheld remote control that would allow a user to receive a playlist on the
`
`wireless handheld remote control directly from a server via a network. In
`
`May 2004, the state of the art was limited to obtaining playlists via a
`
`computer, not directly on a wireless handheld remote control. As described
`
`above, portable devices such as MP3 players received playlists from
`
`computers and could not receive them directly from the Internet because
`
`these devices were tethered to, and dependent upon, a computer for network
`
`access and required computational power. For example, the Apple iPod
`
`introduced in 2001 was tethered or docked to a portable computer for
`
`downloading media and playlists.
`
`(http://manuals.info.apple.com/MANUALS/1000/MA1195/en_US/iPod_clas
`
`sic_160GB_User_Guide.pdf; “iPod_classic_160GB_User_Guide.pdf” page
`
`10 search for “Connecting iPod Classic”) Ex. 2021. Such players had no
`
`capability to act as remote controls. Remote control technology — then as
`
`now — depended upon line-of-sight optical unidirectional CIR technology.
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`

`

`Thus, in the timeframe of the technology at issue, there was no capability to
`
`perform the limitations of the ‘099 patent to receive a playlist on a remote
`
`control device, display it to a user, receive a media selection from a user and
`
`then direct a player device to play the selected media item.
`
`VII. OPINIONS AS TO CLAIM CONSTRUCTION OF THE ‘099 PATENT
`
`38.
`
`
`I understand that in an inter partes review, claim terms in
`
`an unexpired patent are interpreted according to their broadest reasonable
`
`construction in light of the specification of the patent in which they appear.
`
`a.
`
`“Playlist”
`
`39.
`
`
`I further understand that the Board has interpreted claim
`
`term “playlist” to mean “a list of media selections.” (IPR2013-00597, Paper
`
`15, p. 9)
`
`40.
`
`
`I believe that the Board’s interpretation of the term
`
`“playlist” is not consistent with its plain and ordinary meaning and its
`
`broadest reasonable construction of that term in light of the specification of
`
`the ‘099 patent. Consistent with how a person of ordinary skill in the art
`
`would use and understand the term in the context of the ‘099 patent, a person
`
`of ordinary skill in the art would understand the term “playlist” to mean “a
`
`list referencing media items arranged to be played in a sequence.”
`
`IPR2014-00711 BHM Ex. 2012 (previously filed in IPR2013-00597 as Ex. 2011)
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`

`

`41.
`
`
`The Board refers to the following sentence from the
`
`Background Section of the ‘099 patent in its discussion of the term playlist:
`
`“A playlist is a list of a user’s favorite selections.” Below is the paragraph of
`
`the ‘099 patent in which the above sentence appears:
`
`“Playlists for music and movies are well known. A
`
`playlist is a list of a user’s favorite selections. Popular
`
`personal computer (PC) media playing programs, such as
`
`Windows Media Player (a trademark of Microsoft
`
`Corporation), offer the capability for a user to compile a
`
`playlist. The user may subsequently select items to be
`
`played from the playlist and the medi