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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`YAMAHA CORPORATION OF AMERICA, Petitioner,
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`
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`v.
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`BLACK HILLS MEDIA, LLC, Patent Owner
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`____________________
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`
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`Case IPR2013-00597
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`Patent 8,230,099
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`____________________
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`
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`PATENT OWNER’S MOTION TO AMEND U.S. PATENT NO. 8,230,099
`UNDER 35 U.S.C. §316 AND 37 C.F.R. §42.121
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`BHM Ex. 2008
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`
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
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`MOTION TO AMEND
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`Trial was instituted with respect to claims 1, 2, 6, 9, 10, 11, and 12 of U.S.
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`Patent No. 8,230,099 (“the ‘099 patent”) (Ex. 1001). Pursuant to 37 C.F.R.
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`§42.121, Patent Owner Black Hills Media, LLC (“Black Hills Media”) moves to
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`amend the ‘099 patent by canceling claims 1 and 9. Black Hills Media has met its
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`obligation to confer with the Board in accordance with 37 C.F.R. §42.121. The
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`Board authorized the Patent Owner to file this Motion to Amend Claims via an
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`email sent to Patent Owner’s representative on June 12, 2014. Below, Patent
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`Owner provides a claim listing that includes the text of the challenged claims and
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`the status of each of the challenged claims, labeling the canceled claims as
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`“canceled” with strikethrough text and the non-amended claims as “original”.
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`#26965852 v2
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`BHM Ex. 2008
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
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`
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`I.
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`CLAIMS
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`1.
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`(Canceled) A method comprising:
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`receiving, at a wireless handheld remote control, a playlist from a
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`remote source; and
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`presenting, at the wireless handheld remote control, the playlist to a
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`first user associated with the wireless handheld remote control such that the first
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`user is enabled to select at least one item from the playlist for playback by a media
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`player device which is associated with and separate from the wireless handheld
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`remote control.
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`2.
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`(Original) The method of claim 1 wherein the playlist is further
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`communicated from the remote source to the media player device.
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`6.
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`(Original) The method of claim 1 wherein the remote source is a
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`central server.
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`9.
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`(Canceled) The method of claim 1 wherein the remote source is the
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`media player device.
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`10.
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`(Original) A wireless handheld remote control comprising:
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
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`a communication interface communicatively coupling the wireless
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`handheld remote control to a remote source via a network; and
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`a control system associated with the communication interface and
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`adapted to:
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`receive a playlist from the remote source; and
`
`present the playlist to a first user associated with the wireless
`
`handheld remote control such that the first user is enabled to select at least
`
`one item from the playlist for playback by a media player device which is
`
`associated with and separate from the wireless handheld remote control.
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`11.
`
`(Original) A method comprising:
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`receiving, at a media player device, a playlist from a remote
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`source; and
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`communicating the playlist from the media player device to a
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`wireless handheld remote control associated with and separate from the
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`media player device, wherein, at the wireless handheld remote control, the
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`playlist is presented to a first user associated with the wireless handheld
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`remote control and used by the first user to select at least one item from the
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`playlist for playback by the media player device.
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`12.
`
`(Original) A media player device comprising:
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
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`a communication interface communicatively coupling the
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`media player device to a remote source via a network; and
`
`a control system associated with the communication interface
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`and adapted to:
`
`receive a playlist from the remote source; and
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`communicate the playlist from the media player device to
`
`a wireless handheld remote control which is associated with and
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`separate from the media player device, wherein, at the wireless
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`handheld remote control, the playlist is presented to a first user
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`associated with the wireless handheld remote control and used by the
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`first user to select at least one item from the playlist for playback by
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`the media player device.
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
`II.
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`SUPPORT FOR AMENDMENTS
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`By this amendment, claims 1 and 9 have been canceled. Because claim
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`language has not been amended and substitute claims have not been proposed,
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`Patent Owner submits that a showing of support is unnecessary for the present
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`Motion to Amend.
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`III.
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`SCOPE OF AMENDMENTS
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`Patent Owner submits that the scope of the above amendments is appropriate
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`for an Inter Partes Review proceeding. Specifically, the amendments respond to a
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`ground of unpatentability by canceling claims and rendering grounds of
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`unpatentability instituted for the canceled claims moot. In addition, the
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`amendments do not seek to enlarge the scope of the claims of the patent or
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`introduce new subject matter because the amendments merely cancel claims
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`without adding any new claim language.
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`IV.
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`CONCLUSION
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`For at least the reasons set forth above, Patent Owner submits that the
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`amendments reflected in the above claim listing are appropriate for entry in an
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`Inter Partes review proceeding. Accordingly, Patent Owner respectfully requests
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`grant of the present Motion to Amend and cancellation of claims 1 and 9 from the
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`‘099 Patent.
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`
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
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`
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`Dated: June 13, 2014
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`Respectfully submitted,
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`/Reza Mollaaghababa/
`Reza Mollaaghababa, Reg. No. 43,810
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02210
`Tel: (617) 204-5100
`Fax: (617) 204-5150
`
`Thomas J. Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02210
`Tel: (617) 204-5100
`Fax: (617) 204-5150
`
`Theodosios Thomas, Reg. No. 45,159
`Black Hills Media, LLC
`5400 Trinity Road, Suite 303
`Raleigh, NC 27607
`Tel: (919) 233-1942, Ext. 203
`Fax: (919) 233-9907
`
`Christopher Horgan, Reg. No. 40,394
`Concert Technology
`1438 Dahlia Loop
`San Jose, CA 95126
`Tel: (408) 687-8306
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`Counsel for Patent Owner
`Black Hills Media, LLC
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`Case No. IPR2013-00597
`U.S. Patent No. 8,230,099
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies the foregoing Patent Owner’s Motion to
`Amend was served by e-mail on June 13, 2014 to the Petitioner’s counsel of record
`upon the following:
`
`David L. Fehrman
`Morrison & Foerster LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`dfehrman@mofo.com
`
`Mehran Arjomand
`Morrison & Foerster LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`marjomand@mofo.com
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`
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`
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`Reza Mollaaghababa, Reg. No. 43,810
`Attorney for Patent Owner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02210
`Tel: (617) 204-5100
`Fax: (617) 204-5150
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`
`
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`Dated:
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`#26965852 v2
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`8
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`BHM Ex. 2008
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