IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner.
`
`Case No. To Be Assigned
`Patent No. 8,214,873
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,214,873
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
` DC: 5283578-2
`
`

`
`Docket No. 032449.0032-US09
`
`TABLE OF CONTENTS
`
`I.
`
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ....................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ........................................ 1
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .................................................. 1
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ................................ 2
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ........................................... 2
`
`II.
`
`Fees (37 C.F.R. § 42.103) ...................................................................................... 2
`
`III. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104 ..................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) ......................................... 3
`
`Citation of Prior Art ................................................................................... 3
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2)) .......................................................................................................... 4
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ....................................... 4
`
`Person of Ordinary Skill in the Art ............................................................ 6
`
`Unpatentability of the Construed Claims (37 C.F.R.
`§ 42.104(b)(4)) ........................................................................................... 6
`
`G.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ..................................... 6
`
`IV. Summary of the ‘873 Patent ................................................................................. 7
`
`A.
`
`B.
`
`Overview of the ‘873 Patent ...................................................................... 7
`
`Prosecution History Summary of the ‘873 Patent .................................... 7
`
`V.
`
`There is a Reasonable Likelihood that Petitioner Will Prevail With
`Respect to at Least One Claim of the ‘873 Patent ............................................. 11
`
`A.
`
`Prior Art .................................................................................................... 11
`
`1.
`
`U.S. Patent No. 7,454,511 to Weast (Ex. 1004) .......................... 11
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`

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`Docket No. 032449.0032-US09
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`2.
`
`U.S. Patent No. 7,668,939 to Encarnacion (Ex. 1005) ................ 14
`
`B.
`
`Ground I: Combination of the Weast and Encarnacion Patents
`Renders Obvious Claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31,
`34-37, and 44-46 Under 35 U.S.C. § 103 ............................................... 17
`
`C.
`
`Conclusion ................................................................................................ 60
`
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`Docket No. 032449.0032-US09
`
`LIST OF EXHIBITS
`
`
`Description
`U.S. Patent No. 8,214,873
`File History for U.S. Patent No. 8,214,873
`File History for U.S. Patent No. 8,028,323
`U.S. Patent No. 7,454,511 to Weast
`U.S. Patent No. 7,668,939 to Encarnacion et al.
`U.S. Patent Application Publication No. 2005/0262204 to Szeto
`et al.
`U.S. Patent Application Publication No. 2003/0225834 to Lee et
`al.
`Declaration of Kevin Almeroth, Ph.D.
`Curriculum vitae of Kevin Almeroth, Ph.D.
`Miller et al., “Home Networking with Universal Plug and Play”
`(IEEE, Dec. 2001)
`Michael Jeronimo & Jack Weast, UPnP Design By Example,
`Intel Press (Apr. 2003)
`UPnP AV Architecture:1 For Universal Plug and Play Version
`1.0, Status: Approved Design Document, Date: June 25, 2002
`“TV Meets the Web” (Financial Times, Sept. 10, 2002)
`“Intel Pushes Plug and Play Into Homes” (Extremetech.com,
`Sept. 10, 2002)
`“Mediabolic Incorporates Support for UPnP Technology into
`the Mediabolic ONE Platform” (Business Wire, Jan. 6, 2003)
`“Oregan Networks Demonstrates UPnP” (PR Newswire, Feb.
`18, 2003)
`UPnP Content Directory:1 Service Directory Template Version
`1.01 For UPnP™ Version 1.0, Status: Standardized DCP, Date:
`June 25, 2002
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
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`Docket No. 032449.0032-US09
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest for this petition for Inter Partes Review (“IPR”)
`
`are Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; and
`
`Samsung Telecommunications America, LLC.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`U.S. Patent No. 8,214,873 (“the ‘873 Patent”) is currently the subject of
`
`
`
`litigation against multiple defendants in the Eastern District of Texas, the District of
`
`Delaware and the Central District of California, including the action captioned Black
`
`Hills Media, LLC v. Samsung Elecs. Co., Ltd. et al. (Civil Action No. 2-13-cv-00379
`
`(E.D. Tex.); the “Samsung Litigation”). Other defendants in the litigations include
`
`LG Elecs., Inc.; LG Elecs. U.S.A, Inc.; LG Elecs. Mobilecomm U.S.A., Inc.; Toshiba
`
`Corp.; Toshiba Am. Info. Sys., Inc.; Panasonic Corp.; Panasonic Corp. of N. Am.;
`
`Yamaha Corp. of Am.; Sonos, Inc.; Pioneer Corp.; and Pioneer Elecs. (USA) Inc.
`
`The ‘873 Patent is also the subject of proceedings before the U.S. International Trade
`
`Commission, captioned In re Certain Digital Media Devices, Including Televisions,
`
`Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones,
`
`Components Thereof and Associated Software, Inv. No. 337-TA-882.
`
`
`
`An inter partes review of claims 1, 2, 6-13, 15-31, 35-42, and 44-46 of the
`
`‘873 Patent was instituted on March 20, 2014 (IPR2013-00598, Paper 19).
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`Docket No. 032449.0032-US09
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`
`
`The application that issued as the ‘873 Patent is a continuation of the
`
`application that issued as U.S. Pat. No. 8,028,323 (“the ‘323 Patent”), which in turn
`
`is listed as a related application in U.S. Pat. No. 8,230,099 (“the ‘099 Patent”). An
`
`inter partes review of claims 1, 2, 6, and 9-12 of the ‘099 Patent was instituted on
`
`March 20, 2014 (IPR2013-00597, Paper 15).
`
`C. Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`Lead Counsel
`Back-up Counsel
`
`Andrea G. Reister (Reg. No. 36,253)
`
`Gregory S. Discher (Reg. No. 42,488)
`
`areister@cov.com
`
`gdischer@cov.com
`
`Postal and Hand-Delivery Address:
`
`Postal and Hand-Delivery Address:
`
`Covington & Burling LLP
`
`Covington & Burling LLP
`
`1201 Pennsylvania Avenue, NW
`
`1201 Pennsylvania Avenue, NW
`
`Washington, DC 20004
`
`Washington, DC 20004
`
`T: (202)662-5141; F: (202)778-5141
`
`T: (202)662-5485; F: (202)778-5485
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`The undersigned authorizes the Office to charge $28,000 ($9,000 request
`
`fee; $1,000 request excess claims fees; $14,000 post-institution fee and $4,000
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`Docket No. 032449.0032-US09
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`post-institution excess claims fee) to Deposit Account No. 50-0740 for the fees set
`
`forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes Review. The
`
`undersigned further authorizes payment for any additional fees that might be due in
`
`connection with this Petition to be charged to the above referenced Deposit
`
`Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘873 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ‘873 Patent on the grounds
`
`identified in the present petition.
`
`B. Citation of Prior Art
`Exhibit Reference
`
`Publication
`
`Availability
`
`or Filing
`
`as Prior Art
`
`Date
`
`Ex. 1004 U.S. Patent No. 7,454,511 to Weast
`
`May 29, 2003 35 U.S.C.
`
`(“Weast”)
`
`§ 102(e)
`
`Ex. 1005 U.S. Patent No. 7,668,939 to
`
`December 19,
`
`35 U.S.C.
`
`Encarnacion et al. (“Encarnacion”)
`
`2003
`
`§ 102(e)
`
`
`
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`Docket No. 032449.0032-US09
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`C. Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2))
`
`
`
`The relief requested by Petitioner is that claims 1-2, 5-8, 15-19, 22-23, 25-
`
`27, 30-31, 34-37, and 44-46 of the ‘873 Patent be found unpatentable and
`
`cancelled from the ‘873 Patent on the following ground:
`
`Ground Claims
`
`Basis
`
`I
`
`1-2, 5-8, 15-19, 22-23, 25-27,
`
`Obvious under 35 U.S.C. § 103 in
`
`30-31, 34-37, 44-46
`
`view of Weast and Encarnacion.
`
`
`
`
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`Petitioner has included below a discussion of the “broadest reasonable construction
`
`consistent with the specification” (“BRC”) for the claim term “playlist” of the ‘873
`
`Patent.
`
`
`
`Each of independent claims 1, 17, 23, 25-27, 30 and 46 recites a “playlist.”
`
`Petitioner submits that the BRC for “playlist” is “a list of media items.” The
`
`specification of the ‘873 Patent repeatedly discloses that the playlist is a list of
`
`songs. See, e.g., Ex. 1001, 11:27-29 (“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.”); 11:42-44 (“The selected songs may be
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`Docket No. 032449.0032-US09
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`played in the order selected, in random order, or in any other desired order. The
`
`order can preferably be changed at any time.”) Beyond songs, the specification
`
`uses broadening language to encompass audio and audio/video as the type of
`
`“content” that can be included in “playlists.” See, e.g., id. at 1:19-24 (“The present
`
`invention relates . . . to a digital entertainment network wherein playlists are
`
`obtained by communicating attributes of the playlists to a playlist server and
`
`wherein songs are obtained by communicating information representative of the
`
`songs to a content server.”); 16:18-24 (“Although the content described herein is
`
`music, those skilled in the art will appreciate that other types of content . . . may
`
`comprise . . . pictures, video, software, or data.”)
`
`
`
`Moreover, the BRC of the term “playlist” does not require that the
`
`constituent media items be arranged to be played in a sequence (as the patent
`
`owner has argued in litigation). The specification notes that selected songs, rather
`
`than all songs on the playlist, are played, which would operate contrary to the
`
`concept of playing the songs in a sequence. Id. at 11:27-32. The specification
`
`also explicitly states that selected songs can be played in a selected order, a random
`
`order, or any other desired order, and may be changed at any time. Id. at 11:42-44.
`
`Based on this disclosure one of skill in the art would not understand the “playlist”
`
`to include a requirement that the contents of the playlist be arranged to play in any
`
`particular sequence. Ex. 1008 (“Almeroth Dec.”), ¶ 35. Rather, one skilled in the
`
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`Docket No. 032449.0032-US09
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`art would understand that “playlist” includes within its scope content that may or
`
`may not be arranged to play in a particular sequence. Id.1
`
`Person of Ordinary Skill in the Art
`
`E.
`A person of ordinary skill in the art of the ‘873 Patent at the time of the
`
`
`
`alleged invention (“POSA”) would typically have had at least a B.S. degree in
`
`electrical engineering, computer engineering or computer
`
`science and
`
`approximately two years of professional experience with computer networking and
`
`multimedia technologies, or the equivalent. Almeroth Dec., ¶ 4.
`
`F. Unpatentability of the Construed Claims (37 C.F.R.
`§ 42.104(b)(4))
`
`
`
`An explanation of how claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37,
`
`and 44-46 of the ‘873 Patent are unpatentable under the statutory ground(s)
`
`identified above, is provided in Section V, below.
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`G.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`
`1 The construction of “playlist” as “a list of media items” is consistent with the
`
`construction “a list of media selections” adopted by the PTAB in IPR2013-00597 for
`
`“playlist” in the related ‘099 Patent.
`
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`Docket No. 032449.0032-US09
`
`provided below in the form of explanatory text and claim charts. An Exhibit List
`
`with the exhibit numbers and a brief description of each exhibit is set forth above.
`
`IV. SUMMARY OF THE ‘873 PATENT
`A. Overview of the ‘873 Patent
`The ‘873 Patent addresses a method and system for obtaining media on a
`
`
`
`network. A first device receives a playlist of songs or other media items, selects
`
`media items from the playlist, selects a second device, and directs the second
`
`device to receive the selected media item from a content server without user input
`
`on the second device. Ex. 1001, 11:53 – 12:34. Figure 4 is representative of the
`
`processing of an exemplary embodiment of the ‘873 Patent.
`
`
`
`The ‘873 Patent describes the devices using the nomenclature of the
`
`Universal Plug and Play architecture, including describing a “control point” that
`
`accesses music and commands remote devices, and describing a “rendering
`
`device” to play back selected media. Ex. 1001, 7:25-39; 8:9-35.
`
`Prosecution History Summary of the ‘873 Patent
`
`B.
`The ‘873 Patent was filed on August 10, 2011, as application number
`
`
`
`13/207,113 as a continuation of application number 10/840,109, filed May 5, 2004,
`
`which issued as the ‘323 Patent. The ‘323 Patent was under examination by the
`
`USPTO for more than seven years, during which time the USPTO issued numerous
`
`rejections of the draft claims to which the applicant filed numerous responses and
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`Docket No. 032449.0032-US09
`
`amendments. Petitioner summarizes here the actions most relevant to the grounds
`
`of unpatentability set forth in the present Petition.
`
`
`
`In the Final Rejection dated October 20, 2008, the Examiner rejected all
`
`claims of the application leading to the ‘323 Patent under 35 U.S.C. § 102(e) as
`
`being anticipated by Szeto (U.S. Patent App. Pub. No. 2005/0262204). Ex. 1003
`
`(File History of ‘323 Patent), pp. 314-20. Szeto discloses a system for “facilitating
`
`a shared content experience” between two devices where a first user may allow a
`
`server to update a second user’s media player application display with a link to a
`
`song or playlist being played by the first user. See, e.g., Ex. 1006, [0006], [0025]-
`
`[0027], [0034], FIGS. 3-4. The second user may select the song, causing it to be
`
`streamed to the second user’s media player application so that the second user may
`
`listen to the song. Id.
`
`
`
`In a Response dated December 22, 2008, the applicant attempted to traverse
`
`the rejection in light of Szeto by arguing that “Applicant’s claimed invention directs
`
`or instructs a second device to obtain or receive the song. A user need not
`
`affirmatively select a hyperlink . . . [and the invention] can work with second
`
`devices with which a user could not affirmatively select a hyperlink, such as a
`
`stereo receiver, a television, and the like.” Ex. 1003, p. 308. The examiner
`
`disagreed and maintained the rejection in an Advisory Action dated January 12,
`
`2009. Id. at pp. 295-302.
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`Docket No. 032449.0032-US09
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`
`
`In a Response dated February 20, 2009, the applicant amended the claims to
`
`specifically require that the first device directs the second device to receive media
`
`items from the server. Ex. 1003, pp. 282-83. The applicant argued that “Szeto
`
`neither teaches nor suggests a first device that can direct a second device to obtain
`
`or receive a media item, because Szeto discloses that a user must enter input at the
`
`second device to direct the second device to obtain the media item.” Id. at p. 282.
`
`
`
`In an Office Action dated March 18, 2009, the examiner again rejected the
`
`claims as unpatentable under 35 U.S.C. § 103 in light of Szeto and Lee. Ex. 1003,
`
`pp. 260-66. The examiner found the additional limitation of the first device
`
`directing the second device would have been obvious in light of Lee. Id. at p. 263.
`
`Lee discloses that a first user can invite a second user to participate in a shared
`
`audio experience, and if the second user accepts, then any music that the first user
`
`subsequently plays on his computer will also play on the second computer. See,
`
`e.g., Ex. 1007, at [0008]-[0009], [0060]-[0061], [0064]-[0065] and FIGS. 3-4, 9.
`
`
`
`In a Response dated June 17, 2009, the applicant amended the claims to
`
`require “directing” the “second device” to receive or obtain the selected media item
`
`“without user input via the second device.” Ex. 1003, pp. 253-54. The applicant
`
`further argued that both Szeto and Lee “require user input via the second device
`
`and, consequently, cannot render obvious Applicant’s claimed invention.” Id. at
`
`p. 254.
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`Docket No. 032449.0032-US09
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`
`
`In an Office Action dated October 26, 2009, the examiner again rejected the
`
`claims under 35 U.S.C. §103(a) in light of Szeto and Janik (U.S. Patent App. Pub.
`
`No. 2005/0113946). Ex. 1003, pp. 234-40. The Examiner found that Janik teaches
`
`using a PDA as an enhanced remote controller, and that such a PDA could be used
`
`to control the system in Szeto to direct media for playback.
`
`
`
`The applicant filed a Notice of Appeal on September 8, 2010. Ex. 1003,
`
`p. 177. On November 8, 2010, the applicant filed an opening appeal brief. The
`
`applicant argued, inter alia, that neither Szeto nor Janik taught a first device
`
`directing a second device to receive media content without user input at the second
`
`device. Id. at p. 161.
`
`
`
`Without a substantive response to Appellant’s Appeal Brief, a Notice of
`
`Allowance issued for the ‘323 Patent, on January 1, 2011. Ex. 1003, pp. 136-39.
`
`The Notice of Allowance did not address the reasons for allowance.
`
`
`
`Shortly thereafter, the ʼ873 Patent was filed as a continuation of the ‘323
`
`Patent. In an Office Action dated March 1, 2012, the examiner rejected all of the
`
`claims of the ‘873 Patent based on non-statutory obviousness-type double patenting
`
`over the ‘323 Patent. Ex. 1002, pp. 92-96. On March 8, 2012, the applicant filed a
`
`terminal disclaimer with respect to the ‘323 Patent to overcome the double
`
`patenting rejection. Id. at p. 72. The examiner subsequently issued a Notice of
`
`Allowance for the ‘873 Patent on May 14, 2012. Id. at pp. 37-43.
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`Docket No. 032449.0032-US09
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`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ‘873 PATENT
`
`The subject matter of claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37,
`
`and 44-46 of the ‘873 Patent is disclosed and taught in the prior art as explained
`
`below. As set forth in § V.A.-V.B., the references and combinations utilized in
`
`Ground I render obvious each of claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-
`
`37, and 44-46 pursuant to 35 U.S.C. § 103, and provide a reasonable likelihood
`
`that the Petitioner will prevail on at least one claim. 35 U.S.C. § 314(a).
`
`Prior Art
`
`A.
`Paragraphs 15-31 of the Almeroth Declaration, Ex. 1008, describe the state
`
`of the art regarding networked media streaming in the 2003 time frame. In
`
`particular, as discussed below, the references relied upon in Ground I discuss
`
`devices operating according to the Universal Plug and Play (“UPnP”) architecture.
`
`Dr. Almeroth also provides a background on the knowledge of one skilled in the
`
`art regarding UPnP in the 2003 time frame. Almeroth Dec., ¶¶ 21-31. As that
`
`discussion and the prior art make clear, by May 2003, the purported innovations of
`
`the ‘873 Patent were well-known.
`
`U.S. Patent No. 7,454,511 to Weast (Ex. 1004)
`
`1.
`Weast was filed in the U.S. on May 29, 2003, and issued on November 18,
`
`2008. It therefore qualifies as prior art to the ‘873 Patent under 35 U.S.C. § 102(e).
`
`Weast was neither cited nor considered during prosecution of the ’873 Patent.
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`Docket No. 032449.0032-US09
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`Weast discloses the user interface for a computing device operating in a
`
`UPnP network. See, e.g., Ex. 1004, 1:36-51. Using the nomenclature of the UPnP
`
`architecture, Weast describes both the user interface for a “control point” device,
`
`and the interaction among the control point, media server, and media rendering
`
`devices. Weast explicitly draws support from the UPnP architecture, referring to
`
`the UPnP Architecture Specification for the well-known features of UPnP in order
`
`to focus on the inventive aspects of Weast. See, e.g., id. at 2:65-67; 3:15-18. The
`
`exemplary UPnP environment is reflected in Figure 1 of Weast:
`
`
`
`The user interface of Weast is configured to display resources that are
`
`available on the network, including available media renderers and available media
`
`content for playback on those renderers. See, e.g., id. at 5:1-9; 5:16-44. The
`
`control point locates media renderers on the network by transmitting discovery
`
`requests, to which media renderers respond. See, e.g., id. at 5:59-67. Similarly,
`
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`Docket No. 032449.0032-US09
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`the control point locates media servers by transmitting discovery requests, and can
`
`then query the media servers for available media content. See, e.g., id. at 5:16-44.
`
`After locating the resources, they can be displayed on the control point. See, e.g.,
`
`id. at Figs. 4a-4c, 5a-5b, 6a-6b. The control point can use a tree-like interface to
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`display available media renderers and content. See, e.g., id. at 7:6-15, Fig. 4c. As
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`described in the patent, the list of available media content allows selection of
`
`media content to be played back on a selected media renderer. See, e.g., id. at
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`7:29-46; 8:18-30; 8:34-39. The interface also allows selection of a media renderer.
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`See, e.g., id. at 7:65-8:2.
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`
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`Id. at Fig. 4b.
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`After selection of media content, the control point will direct the selected
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`media renderer to retrieve the requested media content from the media server,
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`without user input at the media renderer. For example, Weast discloses that “in
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`Docket No. 032449.0032-US09
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`response to a user selection to render a media content, control point device 102
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`instructs the applicable UPnP media renderers 106 accordingly, to receive/pull and
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`render provided media contents 132 from UPnP media servers 104.” Id. at 6:19-
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`23; Fig. 3b. Weast describes the user input needed to cause the rendering of media
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`content as occurring solely on the control point device, for example by using an
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`interface on the control point to drag and drop media to playback onto an icon
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`representing a media renderer or by using a drop-down menu in the same interface.
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`Id. at 8:34-43; 7:29-40. Weast also describes that when a selected media renderer
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`is already in use, requests to play additional media items are handled
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`algorithmically, rather than by resorting to user input at the media rendering device.
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`Id. at 8:44-52. There is no description of any user input at the media rendering
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`device, and a POSA would understand that the system and method of Weast
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`renders media content without user input at the media renderer. Almeroth Dec., ¶
`
`38.
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`U.S. Patent No. 7,668,939 to Encarnacion (Ex. 1005)
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`2.
`Encarnacion was filed in the U.S. on December 19, 2003, and issued on
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`February 23, 2010. It therefore qualifies as prior art to the ‘873 Patent under 35
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`U.S.C. § 102(e). Encarnacion was neither cited nor considered during prosecution
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`of the ’873 Patent.
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`Encarnacion discloses a UPnP network configured to allow media from a
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`Docket No. 032449.0032-US09
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`server device to be played on a rendering device. See, e.g., Ex. 1005, 1:20-24; 3:4-
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`16; 14:31-47. In the UPnP network of Encarnacion, a “control point” device, for
`
`example a personal digital assistant, is configured to control the other devices on
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`the network. See, e.g., id. at 8:14-28. The UPnP network of Encarnacion also
`
`includes a “media rendering device,” which can play back the media, and a “media
`
`server,” which stores the media for transmission to other devices on-demand. See,
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`e.g., id. at 7:65-8:13.
`
`Consistent with all UPnP networks of the time, each of the three categories
`
`of devices disclosed in Encarnacion corresponds to a device that could be used in a
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`home network for the purpose of accessing and playing media across devices. A
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`“media rendering device” could include a “stereo system, speakers, TVs, hand-held
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`audio players, and so on.” Id. at 8:6-8. A “media server” could be “a personal
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`computer that stores a collection of music, video, pictures, etc., or may comprise
`
`various types of jukebox devices.” Id. at 3:9-12; 5:25-26. Lastly, a “control point”
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`could be a device, such as a personal digital assistant, that includes functionality
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`both to both receive information about other devices on the UPnP network and to
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`issue commands to those devices. Id. at 2:25-67; 8:21-24; 8:51-9:4; 14:31-63;
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`25:48-55; 37:36-54.
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`The media server includes a resource store that contains media content, such
`
`as songs, made available for presentation at media renderers in the UPnP network.
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`Docket No. 032449.0032-US09
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`Id. at 5:52-64; 8:51-58; 20:17-32; 37:18-27; 37:36-54. Media is identified using
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`“resource locators,” which allow devices on the network to identify the location of
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`the media. Id. at 37:18-27.
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`One key use case of the UPnP system disclosed in Encarnacion is where the
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`user of the control point submits a “browse” request to the media server for
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`available media resources matching certain criteria. See, e.g., Ex. 1005, 12:30-67.
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`The media server stores media resources hierarchically in a resource store, with
`
`individual media items organized into “resource containers.” See, e.g., id. at
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`20:17-32; 20:44-58; 21:42-60. Exemplary resource containers include a “music”
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`resource container, which includes all music items, and a “music/album” resource
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`container that includes albums of music, with each album represented by its own
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`container. Id. at 21:47-54.
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`In response to a browse request, the media server returns a set of resource
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`locators that identify media responsive to the request. See, e.g., id. at 12:38-40;
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`13:5-14; 14:8-19. A “resource locator” can refer to various forms of media that
`
`can be identified on the network, including an individual song, a collection of
`
`songs, or a playlist of songs. See, e.g., id. at 13:62-14:7; 14:14-21; 25:39-43. A
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`POSA would understand that the “browse” request would allow a user to request a
`
`list of resources present in a given resource collection. See, e.g., id. at 6:39-42;
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`6:43-46; 12:38-40; 13:56-62; 14:8-21; 20:8-16; 25:55-61; Almeroth Dec., ¶ 40.
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`Docket No. 032449.0032-US09
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`For example, a control point user could first browse the “music” collection to
`
`retrieve a list of albums, and then use the resource locator for an album in that
`
`collection to request a list of individual media items within the album. Id. A
`
`control point user can use the retrieved resource locators, such as for an album or
`
`individual song within the album, for rendering on a media rendering device,
`
`which will cause the control point to command a selected media rendering device
`
`to request the resource from the media server. See, e.g., Ex. 1005, 25:46-50.
`
`The media rendering device then downloads the requested resource and
`
`plays it back without any user input at the media rendering device. See, e.g., Ex.
`
`1005, 14:36-47; 25:46-50; 51:1-22; Fig. 20. In particular, Encarnacion discloses
`
`the steps that are performed at each device when rendering media content from a
`
`media server, and it does not disclose any user input at the media rendering device.
`
`Id. For example, Encarnacion discloses that selection of a media resource on a
`
`control point allows the consumer to “command the media rendering device 306 to
`
`play resource content,” with no disclosure of an input at the media rendering
`
`device. Id. at 25:46-50. Therefore, a POSA would understand the system and
`
`method of Encarnacion as rendering media content solely as the result of input at
`
`the control point device, without any user input at the media rendering device.
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`Almeroth Dec., ¶ 42.
`
`B. Ground I: Combination of the Weast and Encarnacion Patents
`Renders Obvious Claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37,
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`Docket No. 032449.0032-US09
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`and 44-46 Under 35 U.S.C. § 103
`
`Both Weast and Encarnacion discuss the capabilities of devices in a UPnP
`
`network. Ex. 1004, 1:7-10; Ex. 1005, 5:3-5. Encarnacion includes an extensive
`
`description of the UPnP architecture in its Background section, uses standard
`
`terminology defined in the UPnP architecture to describe components of the
`
`Encarnacion system, and on its face cites to numerous UPnP architecture
`
`documents as prior art. See, e.g., Ex. 1005, cover page 2; 1:28-3:3; 5:3-37; Fig. 1.
`
`Likewise, the Weast reference explicitly discusses that its invention is in the
`
`context of UPnP media devices, and it expressly refers to UPnP architecture
`
`documents as prior art. See, e.g., Ex. 1004, cover page; 1:7-10; 1:36-46; 2:44-56;
`
`3:12-4:17.
`
`Both references describe aspects of the capabilities of devices in a UPnP
`
`network, including control points, media rendering devices, and media servers.
`
`Whereas Weast includes a detailed disclosure of the user interface for a control
`
`point device, Encarnacion describes the exchange of communications among the
`
`control point, media rendering device, and media server. A POSA would
`
`understand that the user interface for a UPnP control point that is disclosed in
`
`Weast could be used in the context of a UPnP system that involves the exchange of
`
`communications described in Encarnacion. Almeroth Dec., ¶ 44.
`
`One reason to combine the references is that a POSA implementing a UPnP
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`Docket No. 032449.0032-US09
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`system would need to implement both a user interface for a control point device
`
`and a set of communications for the various devices in the system to exchange with
`
`one another. The POSA would consider references that taught these distinct
`
`portions of the UPnP system, and would find that combining the teachings of
`
`Weast and Encarnacion would yield no more than predictable results from the
`
`combination of known prior art devices and methods. Almeroth Dec., ¶¶ 45-46.
`
`For example, a UPnP network must include a user interface on the control point
`
`device, and Weast teaches one configuration of a user interface on the control point.
`
`A UPnP system also needs to store resources available to be accessed by the
`
`control point and media rendering device, and one of skill would appreciate that
`
`the storage architecture described in Encarnacion would allow resources to be
`
`stored efficiently. Almeroth Dec., ¶ 45. The teachings of Weast and Encarnacion
`
`are therefore complementary and could readily be combined with predictable
`
`results. Almeroth Dec., ¶ 46.
`
`Moreover, the system and method of Encarnacion render media content with
`
`user input only at the control point device, and without any user input at the media
`
`rendering device. Almeroth Dec., ¶ 42. Similarly, the system and method of
`
`Weast render media content without user input at the media renderer. Almeroth
`
`Dec., ¶ 38. Therefore, the combination of the Weast and Encarnacion patents
`
`discloses directing a second device to receive media content without user input at
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`Docket No. 032449.0032-US09
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`the second device, a feature that applicant argued in its Appeal Brief was missing
`
`in the prior art – ultimately leading to the allowance of th