IPR2014-00723
`U.S. Patent No. 8,214,873
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioners,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`
`___________________
`
`Case No. IPR2014-00723
`U.S. Patent 8,214,873
`
`___________________
`
`
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. §42.120
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Page
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`SUMMARY OF THE ‘873 PATENT ............................................................ 2
`
`III. CLAIM CONSTRUCTION ......................................................................... 11
`
`A.
`
`Legal Standard .................................................................................... 11
`
`B.
`
`C.
`
`Definition Of A Person of Ordinary Skill in the Art .......................... 12
`
`Claim Term Of The ‘873 Patent Requiring Construction .................. 12
`
`1.
`
`“Playlist” .................................................................................. 12
`
`IV. SUMMARY OF ALLEGED PRIOR ART .................................................. 16
`
`A. U.S. Patent 7,454,511 to Weast (“Weast,” Ex. 1004) ........................ 16
`
`B.
`
`U.S. Patent No. 7,668,939 to Encarnacion (“Encarnacion,” Ex.
`1005) ................................................................................................... 21
`
`V. ARGUMENT ................................................................................................ 25
`
`A.
`
`Legal Standard .................................................................................... 25
`
`B.
`
`Claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37, and 44-46
`Are Not Obvious In View Of Weast And Encarnacion. .................... 28
`
`1.
`
`2.
`
`3.
`
`The Combination Of Weast And Encarnacion Fails To
`Teach The Limitation Of “Receiving” Or “Obtaining”
`“On The First Device, A Playlist, The Received Playlist
`Comprising A Plurality Of Media Item Identifiers.” ............... 28
`
`Petitioner Provided No Evidence That The Playlists of
`Encarnacion Could Be Combined With Weast’s File
`System With Any Likelihood Of Success. .............................. 35
`
`The Combination Of Weast And Encarnacion Fails To
`Teach The Limitation Of “Receiving User Second Input
`
`-i-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Selecting At Least One Media Item Identifier From The
`Received Playlist” That Further Results In “Directing,
`From The First Device, The Second Device To Receive
`A Media Item Identified.” ........................................................ 37
`
`Page(s)
`
`VI. CONCLUSION ............................................................................................. 39
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ....................... 12
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................. 12
`
`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003) ................... 25
`
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902
`(Fed. Cir. 1988) ................................................................................................... 26
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183
`Paper No. 12 (July 31, 2013) .............................................................................. 26
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745, *58
`(Fed. Cir. May 9, 2014) .......................................................................... 26, 27, 28
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .................................... 25, 26, 27
`
`Macronix International Co., Ltd., et al. v. Spansion LLC, IPR2014-00106
`(Paper 13) (April 24, 2014)................................................................................. 12
`
`Motorola Mobility LLC, et al. v. Arendi S.A.R.L., IPR2014-00203
`Paper No. 10 (June 5, 2014) ............................................................................... 27
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 26
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................... 12
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 25
`
`STATUTES
`
`35 U.S.C. § 103 .......................................................................................................... 2
`
`35 U.S.C. §316(e) .................................................................................................... 25
`
`OTHER AUTHORITIES
`
`37 C.F.R. §42.100(b) ............................................................................................... 11
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ......................................................... 12
`
`MPEP § 2141 (8th Ed., Rev. 9, August 2012) ......................................................... 25
`
`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`TABLE OF EXHIBITS
`
`Exhibit Description (previously submitted)
`
`Mobile Application Distribution Agreement between Samsung
`and Google, Trial Exhibit 2775 in the matter of Oracle America,
`Inc. v. Google Inc., Case No. CV 10‐03561 WHA (N.D. Ca)
`
`Exhibit #
`
`2001
`
`Relevant Pages from Joint Submission of Corrected Exhibit List,
`Doc. 293 filed on 4/15/2012, in the matter of Oracle America,
`Inc. v. Google Inc., Case No. CV 10‐03561 WHA (N.D. Ca)
`
`2002
`
`Google’s Motion to Intervene filed in ITC Inv. No. 337-TA-882
`
`2003
`
`Initial Determination in ITC Inv. No. 337-TA-882, Order No. 17,
`Granting Google Inc.’s Motion to Intervene
`
`2004
`
`Patent Owner’s claim charts from ITC Inv. No. 337-TA-882
`
`Declaration of Gareth Loy and Exhibits A - N thereto (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2011)
`
`Deposition Transcript of Dr. Bove dated 5/29/2014 (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2012)
`
`
`
`Exhibit Description (new)
`
`Deposition Transcript of Dr. Almeroth, dated 1/9/2015
`
`Declaration of Gareth Loy, dated 2/4/2015
`
`“Microsoft Windows Media Player 7 Handbook,” Microsoft
`Press, ISBN 0-7356-1 178-5, Copyright ©2000.
`
`
`
`
`
`
`
`2005
`
`2006
`
`2007
`
`Exhibit #
`
`2008
`
`2009
`
`2010
`
`-v-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`I.
`
`INTRODUCTION1
`
`The Patent Owner Black Hills Media, LLC (“Patent Owner”) respectfully
`
`submits this Response to the Petition for Inter Partes Review in IPR 2014-00723
`
`(the “’723 IPR”) filed by Samsung Electronics, Co., Ltd. (“Petitioner” or
`
`“Samsung”), (Paper No. 1, “Petition”) concerning U.S. Patent 8,214,873 (“the ‘873
`
`Patent,” Ex. 1001) as to the grounds for which a trial was granted in the decision
`
`instituting the inter partes review (“Institution Decision,” Paper No. 7).
`
`
`1 This is the third Inter Partes Review challenging the ‘873 patent.
`
`IPR2013-00598 (the “‘598 IPR”), commenced by Yamaha Corporation of America
`
`(“Yamaha”) against the ‘873 patent, challenges essentially all of the claims at issue
`
`in this proceeding based on different prior art than that in the instant proceeding;
`
`IPR2014-00766, also commenced by Yamaha, challenges claims 4, 5, 33, and 34
`
`of the ‘873 patent, also based on different prior art. In the ‘598 IPR, Patent Owner
`
`filed its Response pursuant to 37 C.F.R. § 42.120 (Paper 31 in the ‘598 IPR) with a
`
`supporting Declaration by Dr. Gareth Loy (the “Loy Declaration,” Ex. 2011 in the
`
`‘598 IPR). With its preliminary response in this ‘723 IPR, Patent Owner submitted
`
`the Loy Declaration as Ex. 2006 and the transcript of deposition of petitioner
`
`Yamaha’s expert, Dr. Bove as Ex. 2007, which are both relevant to the
`
`construction of the claim term “playlist” in this proceeding.
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`
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`

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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`The Patent Trial and Appeals Board (“the Board”) instituted a trial only as to
`
`the following claims and ground: Claims 1, 2, 5-8, 15-19, 22, 23, 25-27, 30, 31,
`
`34-37, and 44-46 of the ’873 patent (the “Challenged Claims”) are unpatentable
`
`under 35 U.S.C. § 103 as obvious over U.S. Patent 7,454,511 to Weast (“Weast,”
`
`Ex. 1004) and U.S. Patent 7,668,939 to Encarnacion (“Encarnacion,” Ex. 1005).
`
`None of the claims the Challenged Claims of the ‘873 patent at issue in this
`
`proceeding is invalid over the asserted prior art as the prior art fails to teach the
`
`claimed inventions.
`
`II.
`
`SUMMARY OF THE ‘873 PATENT
`
`The ‘873 patent describes and claims a digital entertainment network that is
`
`“a fully integrated plug and play technology platform that delivers secure anytime,
`
`anywhere, on-demand multimedia content for digital home systems.” See Ex.
`
`1001 at 7:12-15. The ‘873 patent describes and claims systems and methods for
`
`facilitating media sharing between electronic devices.
`
`Petitioner does not contend that the ‘873 patent operates according to the
`
`UPnP protocol. Petitioner merely asserts that the “’873 Patent describes the
`
`devices using the nomenclature of the Universal Plug and Play (or ‘UPnP’)
`
`architecture, including that the first device is a ‘control point’ that accesses music
`
`and commands remote devices, and that the second device is a ‘rendering device’
`
`that plays back selected media.” Paper 1 at 7 (emphasis added). Petitioner,
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`therefore, tacitly agrees that the ‘873 patent does not employ the UPnP protocol.
`
`This is consistent at least with the fact that the ‘873 patent specification makes no
`
`reference to employing the “UPnP” protocol. Ex. 2009 at ¶¶14-15.
`
`Furthermore, the ‘873 patent contemplates both the remote control/first
`
`device and the media player/second device to independently connect to a data
`
`server directly, such as the Internet, in order to receive/obtain playlists, and to
`
`transfer media content from one device to another. In contrast, in the UPnP
`
`protocol, all of the participating devices must be UPnP-enabled and they are
`
`typically located on the same network (for example, in a local, home environment).
`
`See Ex. 1012 at Sec. 5.3 p. 9 (“Using UPnP’s Discovery mechanism, MediaServers
`
`and MediaRenderers in the home network are discovered.”) (emphasis added); Ex.
`
`2009 at ¶14.
`
`According to the UPnP protocol, “three distinct entities are involved: the
`
`Control Point, the source of the media content (called the “MediaServer”), and the
`
`sink for the content (called the “MediaRenderer”). Id. at p. 5. The media server
`
`“is used to locate content that is available via the home network” and the media
`
`renderer “is used to render (e.g. display and/or listen to) content obtained from the
`
`home network.” Ex. 1012 at Sec. 5.1 (p. 6) and 5.2 (p. 7).
`
`Importantly, the UPnP-enabled devices do not communicate directly with
`
`each other, they communicate exclusively with the Control Point:
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Although the Control Point is managing multiple devices, all
`
`interactions occur in isolation between the Control Point and
`
`each device. The Control Point coordinates the operation of
`
`each device to achieve an overall, synchronized, end-user
`
`effect. The individual devices do not interact directly with each
`
`other. All of the coordination between the devices is performed
`
`by the Control Point and not the devices themselves.
`
`Ex. 1012 at Sec. 4, p. 3. In the ‘873 patent, however, individual devices interact
`
`directly with each other. The ‘873 patent does not require an intermediary such as
`
`a Control Point – and Petitioner does not allege that it does – for a device to access
`
`media content on a server and request another device to play the content.
`
`Thus, the ‘873 patent addressed the problem of the prior art where users had
`
`“little or no control over which music selections are played.” Ex. 1001 at 1:37-43.
`
`Furthermore, the prior art methods for listening to music lacked personalization or
`
`required bulky physical media, while methods for listening to data files (such as
`
`an MP3 file) were hampered by piracy concerns. See id. at 1:28-2:15. With these
`
`deficiencies in mind, “[o]n-demand delivery of content, such as streaming music,
`
`is provided utilizing such user-friendly features such as customized playlists,
`
`collaboration, music management tools, and search capability.” Id. at 7:21-24.
`
`“Preferably, the present invention comprises a web services based component that
`
`-4-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`provides users with on-demand music streamed to a variety of devices, such as
`
`MP3 players, set-top boxes and home stereo systems.” Id. at 7:40-43.
`
`“[F]eatures preferably include web-based music catalog browsing via
`
`jukebox interface, search capability (to find artists and specific selections), the use
`
`of standard playlists, the use of custom playlists (created by each user), the ability
`
`to select different devices on which to play songs, the ability to view a user's
`
`activity over a given time period or in real-time with the activity streamer,
`
`collaboration, the ability to find buddies with the same music preferences you have
`
`in your playlists, the ability to share playlists with buddies, the ability to view
`
`buddies’ activity based on various time periods, instant messaging for chatting
`
`among users, and the use of a set top box to facilitate the use of playlists and the
`
`streaming of content.” Id. at 7:43-59.
`
`In Figure 1, the ‘873 patent provides for the interoperability of three classes
`
`of devices: first device 13 (the controller device), second device 14 (player device),
`
`and content server 10 (via the Internet 11), such that any controller device could
`
`interact with any playback device (and vice versa), and both the controller and the
`
`playback device have independent capability to contact and interact with any
`
`content server via the Internet to receive media, thereby maximizing the flexibility
`
`of the system to respond to the user’s media needs as well as the user’s location.
`
`See, e.g., id. at 8:57-59, 9:15-17, 9:55-56.
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`-5-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`The first device 13 and second device 14 are independent of each other in
`
`that they have the ability to independently communicate with the content server via
`
`the Internet to request and receive media content for playback. See id. at 8:65-9:3,
`
`9:4-16, 9:15-19, 9:55-56, etc. “[I]t may sometimes be beneficial to think of the
`
`first device 13 as a small handheld portable device such as a PDA or dedicated
`
`remote control that can function to control the second device 14 and it may
`
`similarly sometimes be beneficial to think of the second device as a larger music
`
`rendering device such as a stereo, television, or personal computer.” Id. at 9:57-
`
`64.
`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Furthermore, “the first device 13 may comprise a handheld portable device
`
`such as a personal digital assistant (PDA), a palmtop computer, an MP3 player, a
`
`telephone, or a remote control for a music rendering device. The first device may
`
`alternatively comprise a non-portable device, such as a desktop computer, a
`
`television, or a stereo. The second device 14 may comprise the same type of
`
`device as the first device 14 or may alternatively comprise a different type of
`
`device with respect thereto. Thus, the first and second devices may comprise
`
`portable devices, non-portable devices, or any combination thereof.” Id. at 9:8-19.
`
`According to one embodiment of the invention, shown in Figure 4, the first
`
`device 13 is capable of directing the second device 14 to communicate with the
`
`content server via the Internet to receive media from the content server for
`
`playback. See Ex. 2006 at ¶ 39, ‘873 patent, Ex. 1001 at Fig. 4, 4:46-60; 11:60-
`
`12:23.
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`-7-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`
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`The interaction between the user and content, and between the first and
`
`second devices is driven by playlists as exemplified throughout the claims and by
`
`steps 41, 42, 44, 46, and 47 in Figure 4. In this exemplary method, a list of
`
`playlists is displayed as shown in block 41. Id. at 11:53-59. “Each item on the list
`
`of playlists is representative of a particular playlist. Each playlist may come from
`
`any one of a variety of sources. For example, a playlist may be compiled by a user,
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`-8-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`a playlist may be obtained from someone else, or a playlist may be formed by a
`
`computer using an algorithm that attempts to identify songs that will suit the tastes
`
`of the listener.” Id. at 10:47-53. One of the playlists is selected as shown in block
`
`42. Id. at 11:53-59. “The selected playlist is a playlist that is expected to contain
`
`one or more songs that the listener would like to listen to. For example, the
`
`displayed list of playlists may contain a playlist named rock favorites, a playlist
`
`named country favorites, and a playlist named classical favorites. If the listener
`
`wants to listen to classical music that is on the playlist named classical favorites,
`
`the playlist named classical favorites is selected.” Id. at 10:64-11:5.
`
`At least one attribute (such as a name of a playlist, the number of a playlist,
`
`and/or any other unique identifier of a playlist) is sent to the playlist server as
`
`shown in block 43, and a playlist is received at the first device as shown in block
`
`44. Id. at 11:53-59; see also 11:23-26 (“A playlist that correspond to the
`
`attribute(s) is sent from the playlist server and is received by the first device as
`
`shown in block 34 [of Fig. 3]”). “[A] second device 14 typically must be selected
`
`as shown in block 45. A particular second device may be selected from a list of
`
`second devices that is displayed on the first device 13. For example, a listener's
`
`desktop computer may be selected from a list having the desktop computer, a
`
`television, and a stereo listed thereon.” Id. at 11:60-67.
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`“At least one song is selected from the playlist as shown in block 46.” Id. at
`
`12:6-7. “Information representative of the selected song(s) is sent from the first
`
`device 13 to the second device 14. This information tells the second device 14
`
`what song(s) are to be played. However, the second device does not typically have
`
`the selected songs stored therein.” Id. at 12:8-15. At step 48 “[t]he second device
`
`14 sends information representative of the selected song(s) to a content server.” Id.
`
`at 12:16-20. At steps 49 and 50, the second device 14 receives and plays the
`
`selected song(s). Id. at 12:21-36.
`
`Claim 1 of the ‘873 patent is representative of the technology claimed:
`
`1. A method for facilitating the presentation of media, the
`
`method comprising:
`
`displaying, on a first device, at least one device identifier
`
`identifying a second device;
`
`receiving user first input selecting the at least one device
`
`identifier;
`
`receiving, on the first device, a playlist, the received playlist
`
`comprising a plurality of media item identifiers;
`
`receiving user second input selecting at least one media item
`
`identifier from the received playlist; and
`
`directing, from the first device, the second device to receive a
`
`media item identified by the at least one media item identifier
`
`from a content server, without user input via the second device.
`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Claim 1 thus covers a method where a first device, such as a mobile phone
`
`or other handheld, receives a media playlist from another location (e.g., a server
`
`accessed over the Internet such as one maintained by YouTube or Netflix). The
`
`first device then allows for selection of a media item from the playlist and the
`
`selection of a second playback device, such as a stereo or television, that the media
`
`will be played on. In the claimed invention, the portable device directs the player
`
`device to receive the media item–without requiring user input at the player device
`
`(thus acting as a controller of that device).
`
`Independent claim 17 is directed to a method for obtaining a song over a
`
`network; independent claims 25-26 are directed to methods for obtaining media
`
`from a playlist server; independent claim 27 is directed to a method for directing a
`
`second device from a first device including sending from the first device at least
`
`one attribute of a playlist corresponding to a selected playlist name to a playlist
`
`server; independent claims 23 and 30 are directed to devices for selecting a media
`
`item; and independent claim 46 covers a computer program for facilitating the
`
`presentation of media.
`
`III. CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`In an inter partes review, a claim of an unexpired patent is construed using
`
`the “broadest reasonable construction in light of the specification.” 37 C.F.R.
`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`§42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). A claim term is given its ordinary and customary meaning in the
`
`context of the specification as it would be understood by one of ordinary skill in
`
`the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); In
`
`re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the
`
`broadest reasonable construction standard, there is “a ‘heavy presumption’ that a
`
`claim term carries its ordinary and customary meaning.” Macronix International
`
`Co., Ltd., et al. v. Spansion LLC, IPR2014-00106 (Paper 13 at 6) (April 24, 2014),
`
`citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`B. Definition Of A Person of Ordinary Skill in the Art
`
`Patent Owner submits that a person of ordinary skill in the art of the
`
`invention is a person with a bachelor’s degree in computer science or electrical
`
`engineering and one year of practical experience with networked multimedia.
`
`C. Claim Term Of The ‘873 Patent Requiring Construction
`
`1.
`
`“Playlist”
`
`Petitioner submitted no evidence to show the ordinary and customary
`
`meaning of the term “playlist.” See Paper 1 at 4-6 (Petitioner’s proposed
`
`construction of the term “playlist” relied solely on incomplete excerpts from the
`
`‘873 specification). Similarly, the Board’s construction of the term “playlist” as “a
`
`list of media selections” did not take into account the ordinary and customary
`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`meaning of the term “playlist.” Paper 7 at 8-10. Patent Owner submits that the
`
`broadest reasonable construction of the term “playlist” that is consistent with the
`
`ordinary and customary meaning (as explained in the Loy Declaration (Ex. 2006 at
`
`§§ 44-52), the specification of the ‘873 patent, and is supported by the extrinsic
`
`evidence in the form of Broadcast Dictionary definition (Ex. F to the Loy
`
`Declaration) and the Windows Media Player 7 Handbook (Ex. 2010 at 40)2 is “a
`
`list referencing media items arranged to be played in a sequence.”
`
`It is indisputable that a playlist inherently possesses an order that is often
`
`intentionally selected by a listener or creator of the playlist, which distinguishes a
`
`playlist from a group of songs/media items. Petitioner’s expert, Dr. Almeroth, so
`
`agreed on cross-examination, stating that a “playlist is a set of media items, a set of
`
`media items, has an inherent order to it… It has an order associated with it.” Ex.
`
`2008 at 139:23-140:12. Importantly, Dr. Almeroth, testified on cross-examination
`
`that a playlist “represents a playable sequence of resources.” Id. at 155:5-156:5.
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`2 The Windows Media Player 7 Handbook describes the shuffle function of
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`the Windows Media Player referred to in the ‘873 patent as follows: “This plays
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`the items in the current playlist in a random order. It does not change the order of
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`the items in the playlist, only the order in which they are played while the shuffle
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`option is selected.” (Ex. 2010 at 40) (emphasis added).
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`The Board’s construction, however, does not reflect these basic attributes of a
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`playlist of having “an order associated with it” and being “a playable sequence of
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`resources.”
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`As noted in the ‘873 Patent, when selecting songs within a playlist, “[t]he
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`selected songs may be played in the order selected, in random order, or in any
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`other desired order. The order can preferably be changed at any time.” Ex. 1001,
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`11:42-44; 3:20-24. Thus, the specification the ‘873 patent refers throughout to the
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`“selection of songs within [or from] a playlist.” Id., e.g., at 3:21-24; 9:40-43;
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`10:31-38; 11:27-32; 12:6-7; etc.
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`The ‘873 patent uses playlists as a form of curated content, distinct from an
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`arbitrary grouping of songs/media items, as the Petitioner’s order-less definition
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`implies. See, e.g., Ex. 1001, 10:64-11:5 (“list of playlists may contain a playlist
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`named rock favorites, a playlist named country favorites, and a playlist named
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`classical favorites,”); Id. at 7:47-59 (“find buddies with the same music preferences
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`you have in your playlists, the ability to share playlists with buddies”). For
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`example, the ‘873 Patent distinguishes playlists from a catalog of songs and notes
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`that playlists are customizable. Id. at 7:47-59 (“a web-based content and music
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`management system that offers users a list of features including… content catalog
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`browsing, search capability (to find artists and specific selections), the use of
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`standard playlists, the use of custom playlists (created by each user).”). Ex. 2009
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`at ¶16.
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`As explained by Dr. Loy in the ‘598 IPR, a playlist is not merely “a list of
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`media selections,” but, consistent with how a person of ordinary skill in the art
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`would use and understand the term in the context of the ‘873 Patent, the term
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`“playlist” means “a list of media items arranged to be played in a sequence.” Ex.
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`2006, Loy Decl. at ¶46; see also id. at ¶¶44, 45, 47-52. A construction of the term
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`“playlist” as proposed by the Board to mean “a list of media selections,” does not
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`only ignore the customary and ordinary meaning of the term but eliminates any
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`distinction between a list of “songs/selections” and a “playlist.” Additionally, the
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`Board’s definition of “playlist” also renders this term superfluous in the claims.
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`For example, in Claim 1, “receiving, on the first device, a playlist, the received
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`playlist comprising a plurality of media item identifiers” would mean the same
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`thing as “receiving… a plurality of media item identifiers.”
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`In the ‘598 IPR, an expert for the petitioner Yamaha repeatedly testified that
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`a playlist implies that there is an order in which items appear on the list and that
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`the items on the playlist are necessarily arranged in an order. See Ex. 2006 at ¶ 48
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`(citing Bove Tr., Ex. 2007, at 294:2-25; see also 295:1-10; 221:14-21; 215:1-4
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`(Bove stating that a playlist, “by virtue of it being a list, the items appear in an
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`order”); 215:20-216:2 (Bove stating that “I think the plain meaning of ‘list’ implies
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`that there is an order in which items appear. That makes it a list.”)). Yamaha’s
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`expert’s testimony is consistent with its usage of the term playlist in the ‘873
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`patent, as well as its dictionary definition. See Ex. 2006 at ¶ 46.
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`Yamaha’s expert also testified that a playlist is necessarily designed to be
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`played in sequence unless the user directs the machine to play it otherwise, and
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`agreed that the default in a user interface for playing a playlist is to play the items
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`in sequence in which they appear. See id. at ¶¶ 50-51 (citing Bove Tr., Ex. 2007,
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`at 216:23-217:7, 217:21-218:4). Thus, the evidence developed in this proceeding
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`and the 598 IPR contradicts the Board’s construction of the term “playlist.”
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`For these reasons and consistent with both its plain and ordinary meaning
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`and broadest reasonable construction in light of the specification of the ‘873 patent,
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`the term “playlist” should be construed to mean “a list of media items arranged to
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`be played in a sequence.”
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`IV. SUMMARY OF ALLEGED PRIOR ART
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`A. U.S. Patent 7,454,511 to Weast (“Weast,” Ex. 1004)
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`Weast is generally directed to “file system services and media related
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`services that automatically make visible … availability of one or more UPNP
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`media renderers.” Ex. 1004 at Abstract. Weast attempts to provide “a user
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`friendly technique for a user to employ and control a UPnP media renderer to
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`render media content available from a UPnP media server in an operating
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`environment.” Id. at 2:43-47. Weast’s teachings are purportedly motivated by a
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`deficiency in the UPnP A/V architecture specifications, in that they “do not specify
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`the user interface through which the media contents, the complying servers and
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`renderers are to be made visible to the users at the control points, and the user
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`interface through which their operations are to be controlled.” Id. at 1:47-51; Ex.
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`2009 at ¶17.
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`Weast proposes a user interface for a UPnP control point that works in the
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`framework of the “UPnP A/V Architecture Specification, that is version 1.0.” Ex.
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`1004 at 2:44-56. The UPnP A/V Architecture specification version 1.0 is
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`submitted by Petitioner in this IPR as Ex. 1012. Like in Weast, the term “playlist”
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`does not appear anywhere in the specification of Ex. 1012 upon which Weast
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`relied for its purported inventions. Ex. 2009 at ¶¶18-19.
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`In the context of UPnP A/V Architecture Specification 1.0, Fig. 1 illustrates
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`“UPnP media servers 104 comprise a number of media contents 132. UPnP media
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`servers 104 provide media contents 132 to selected ones of UPnP media renderers
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`106 to render, at the control of control point 102. In various embodiments, media
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`contents 132 provided by UPnP media servers 104 may include media contents
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`132 accessible to UPnP media servers 104, but not disposed on UPnP media
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`servers 104 itself.” Id. at 3:19-26; Ex. 2009 at ¶¶20-21. The control point 102 and
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`the various media renderers 106 and media servers are all elements on a local
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`wired or wireless network, and are members of the same network domain. Ex.
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`1004 at 3:36-40. “Media related services 112 and enhanced file system services
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`124 are equipped to cooperate with each other, to enable media contents 132
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`available from UPnP media servers 104 and availability of UPnP media renderers
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`106 be made visible through the user interface of the file system implemented by
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`file system services 124.” Id. at 3:48-53; Ex. 2009 at ¶¶20-21.
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`“[S]election of media content 132 for rendering, and media renderer 106 to
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`perform the rendering, may be made through the same user interface of the file
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`system….An example of a graphical file system user interface is the file system
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`user interface of the Windows family of operating systems of Microsoft
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`Corporation, of Redmond, Wash.” Id. at 3:54-61; Ex. 2009 at ¶22. Examples of
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`interactions with content and renderers via the file system interface are depicted in
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`Figs. 4a-8. For example, in Fig. 7 (reproduced below), a user can drag songs in the
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`system folder “Z:\MyMedia\Music” onto a renderer represented by a system folder
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`“Z:\MyMedia\Renderers\Music Player” in much the same way that a user might
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`copy or move files in a Windows-based operating system. Id. at 8:34-52
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`(“rendering of a media content 132 may be initiated by dragging and dropping the
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`corresponding file system entry of a media conte