Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 18
`Entered: February 23 2015
`
`
`
`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,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00723
`Patent 8,214,873 B2
`____________
`
`Before BRIAN J. McNAMARA, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 18
`Entered: February 23 2015
`
`
`
`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,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00723
`Patent 8,214,873 B2
`____________
`
`Before BRIAN J. McNAMARA, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`IPR2014-00723
`Patent 8,214,873 B2
`
`
`I.
`INTRODUCTION
`On November 18, 2014, Black Hills Media, LLC’s (“Patent Owner”)
`filed a Request for Rehearing (Paper 9, “Req.”) of our Decision to Institute
`(Paper 7, “Dec.”), dated November 4, 2014, which instituted inter partes
`review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30, 31, 34–37, and 44–46
`of U.S. Patent No. 8,214,873 B2 (Ex. 1001, “the ’873 patent”).
`In its Request, Patent Owner argues that the Decision to Institute (1)
`applied an erroneous legal standard for the construction of the term
`“playlist” recited in the challenged claims and (2) overlooked Patent
`Owner’s evidence on the ordinary and customary meaning of “playlist.”
`Req. 1–2.
`For the reasons set forth below, the request for rehearing is denied.
`II.
`STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
`(Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
`request must identify, with specificity, all matters that the moving party
`believes the Board misapprehended or overlooked. See 37 C.F.R.
`§ 42.71(d).
`
`
`
`2
`
`
`
`IPR2014-00723
`Patent 8,214,873 B2
`
`
`III.
` DISCUSSION
`For purposes of the Decision to Institute, we construed the term
`“playlist” as “a list of media selections.” Dec. 8–10. As we explained, the
`Specification of the ’873 patent discloses that:
`This play list is a list of songs containing at least one song that the
`listener would like to hear. The listener selects at least one song from
`the received playlist, as shown in block 35. Either a single song may
`be selected, or a plurality of songs may be selected.
`
` Dec. 9 (citing Ex. 1001, 11:25–29). We also considered the two different
`proposed constructions and supporting evidence provided by the Petitioner
`and Patent Owner for “playlist.” Id. at 8–9. We did not adopt either
`proposed construction. With respect to Patent Owner’s proposal, we were
`not persuaded that the broadest reasonable construction of “playlist” is “a list
`referencing media items arranged to be played in a sequence.” Id. at 9–10.
`Additionally, in the Decision to Institute, we provided the general
`principles governing our claim construction. Dec. 8–9. These general
`principles are that:
`(1)
`claim terms in an unexpired patent are given their broadest
`reasonable construction in light of the specification of the
`patent in which they appear (id.);
`
`(2)
`
`(3)
`
`there is a heavy presumption that claim terms are given their
`ordinary and customary meaning (id.); and
`
`a patentee can act as his own lexicographer and clearly set forth
`a definition for a claim term (id. at 9).
`
`In its Request for Rehearing, Patent Owner argues that the Decision to
`Institute erred by not adopting Patent Owner’s proposed construction of
`“playlist” as “a list referencing media items arranged to be played in a
`sequence.” Req. 4. Patent Owner asserts that we did not apply the broadest
`3
`
`
`
`
`
`IPR2014-00723
`Patent 8,214,873 B2
`
`reasonable construction standard because we overlooked the evidence of
`record on the ordinary and customary meaning of “playlist” and enlarged the
`scope of the term beyond the ordinary and customary meaning. Id. at 3.
`Patent Owner also contends that “the items in a playlist – including in the
`context of the ‘873 patent – are arranged in a certain order to be played in a
`sequence unless and until the user changes the order.” Id. at 5 (citing Ex.
`2006 at ¶¶ 50–51).
`We determined that limiting the meaning of “playlist” to those
`examples that specify how the items of a playlist are played, such as the
`order or sequence of the items played, would exclude embodiments
`described in the Specification that are not limited in this manner. Dec. 9,
`citing Ex., 1001, 3:23–24, 11:42–44 (“selected songs may be played in the
`order selected, in random order, or in any other order. The order can
`preferably be changed at any time”). We continue to be persuaded that, for
`the purposes of the Decision to Institute, “playlist” would have been
`understood by one of ordinary skill in the art as “a list of media selections.”
`We also disagree that the Decision to Institute overlooked any
`evidence provided by the Patent Owner. As discussed above, we considered
`the Preliminary Response and accompanying exhibits, including the
`declaration of Gareth Loy. Dec. 9. Based on the current record, we were
`persuaded, and remain persuaded, that the Specification and claim language
`itself requires a broader construction than that espoused by Patent Owner’s
`arguments and extrinsic evidence.
`For the foregoing reasons, Patent Owner has not shown that the Board
`abused its discretion in instituting the instant proceeding on the grounds
`specified in the Decision to Institute.
`
`
`
`4
`
`
`
`IPR2014-00723
`Patent 8,214,873 B2
`
`
`IV. ORDER
`Accordingly, it is hereby ORDERED that Patent Owner’s request for
`rehearing is denied.
`
`
`
`
`
`PETITIONER:
`
`Andrea Reister
`areister@cov.com
`
`Gregory Discher
`gdischer@cov.com
`
`PATENT OWNER:
`
`Lana Gladstein
`gladsteinl@pepperlaw.com
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Christopher Horgan
`chris.horgan@concerttechnology.com
`
`
`
`5
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