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.
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2014-00723
`U.S. Patent 8,214,873
`
`___________________
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71
`
`
`U.S. Patent No. 8,214,873
`
`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. IPR2014-00723
`U.S. Patent 8,214,873
`
`___________________
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71
`
`
`
`TABLE OF CONTENTS
`
`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED .......... 1
`
`STANDARD OF REVIEW ............................................................................ 2
`
`III. BASIS FOR RELIEF REQUESTED ............................................................. 2
`
`A.
`
`The Board Erred In The Application Of The Law Governing the
`Broadest Reasonable Interpretation ..................................................... 2
`
`IV. CONCLUSION ............................................................................................... 6
`
`
`
`-i-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`TABLE OF AUTHORITIES
`
`
`CASES
`American Express Company, et al. v. Metasearch Systems, LLC, CBM2014-
`00001 (Paper 29) (March 20, 2014) ..................................................................... 3
`
`Page(s)
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................... 3
`
`Gose v. United States Postal Service, 451 F.3d 831 (Fed. Cir. 2006) ....................... 2
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 2
`
`Endo Pharmaceuticals Inc. v. Depomed, Inc., IPR2014-00656 (Paper 12)
`(September 29, 2014) ............................................................................................ 1
`
`Macronix International Co., Ltd., et al. v. Spansion LLC, IPR2014-00106
`(Paper 13) (April 24, 2014)................................................................................... 3
`
`O'Keefe v. U.S. Postal Service, 318 F.3d 1310 (Fed. Cir. 2002) ............................... 2
`
`Thorner v. Sony Computer Entm’t. Am. LLC, 669 F.3d 1362 (Fed. Cir.2012) ......... 3
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`37 C.F.R. § 42.100(b) ................................................................................................ 2
`
`
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`-ii-
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`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`Exhibit #
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`TABLE OF EXHIBITS
`
`Exhibit Description (Previously Submitted)
`
`Mobile Application Distribution Agreement between Samsung
`and Google, Trial Exhibit 2775 in the matter of Oracle America,
`
`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)
`Inc. v. Google Inc., Case No. CV 10‐03561 WHA (N.D. Ca)
`
`Google’s Motion to Intervene filed in ITC Inv. No. 337-TA-882
`
`Initial Determination in ITC Inv. No. 337-TA-882, Order No. 17,
`Granting Google Inc.’s Motion to Intervene
`
`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)
`
`
`
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`-iii-
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`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`Pursuant to 37 C.F.R. § 42.71(d), Black Hills Media, LLC (“Patent Owner”)
`
`hereby submits the following Request for Rehearing in response to the Decision,
`
`Institution of Inter Partes Review of U.S. Patent No. 8,214,873 (“Decision”)
`
`(Paper 7).
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`In the Decision, the Board granted review of claims 1, 2, 5–8, 15–19, 22, 23,
`
`25–27, 30–31, 34–37, and 44–46 of the ’873 patent as obvious based on the
`
`combination of Weast and Encarnacion based on the Board’s construction of the
`
`claim term “playlist.”
`
`The Board construed the term “playlist” to mean “a list of media selections.”
`
`(Decision at 10) It is respectfully submitted that the Board overlooked the
`
`evidence of record on the ordinary and customary meaning of the term “playlist” as
`
`would be understood by one of ordinary skill in the art at the time of the invention.
`
`As a result, the Board reached an erroneous conclusion of law and issued a
`
`construction which is broader than the ordinary and customary meaning.
`
`Patent Owner requests reconsideration of the Board’s Decision of the claim
`
`construction of the term “playlist” and resultant grant of review of claims 1, 2, 5–8,
`
`15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of the ’873 patent.
`
`
`
`
`
`II.
`
`STANDARD OF REVIEW
`
`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`
`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
`
`occurs where the decision is based on an erroneous interpretation of the law, on
`
`factual findings that are not supported by substantial evidence, or represents an
`
`unreasonable judgment in weighing relevant factors.” Gose v. United States Postal
`
`Service, 451 F.3d 831, 836 (Fed. Cir. 2006) (internal quotations omitted); see also
`
`O'Keefe v. U.S. Postal Service, 318 F.3d 1310, 1314 (Fed. Cir. 2002) (“The Board
`
`necessarily abuses its discretion when it rests its decision on factual findings
`
`unsupported by substantial evidence.”) (internal quotations omitted).
`
`III. BASIS FOR RELIEF REQUESTED
`A. The Board Erred In The Application Of The Law Governing the
`Broadest Reasonable Interpretation
`“In an inter partes review, the Board interprets claim terms in an unexpired
`
`patent according to the broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under that
`
`standard, and absent any special definitions, we give claim terms their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art at
`
`the time of the invention.” Endo Pharmaceuticals Inc. v. Depomed, Inc., IPR2014-
`
`00656 (Paper 12 at 6) (September 29, 2014) citing In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Under the broadest reasonable construction
`
`-2-
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`
`
`standard, there is “a ‘heavy presumption’ that a claim term carries its ordinary and
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`
`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). Patent Owner
`
`respectfully submits that the Board reached an erroneous conclusion of law when it
`
`overlooked the evidence of record on the ordinary and customary meaning of the
`
`term “playlist” and enlarged the scope of the term beyond the ordinary and
`
`customary meaning.
`
`The Board’s construction of the term “playlist” to mean “a list of media
`
`selections” (Decision at 10) is in error because such construction is broader than
`
`the ordinary and customary meaning of the term. Petitioner submitted no evidence
`
`to show either the ordinary and customary meaning of this term or that the patentee
`
`acted as its own lexicographer. See Petition (Paper 1) at 4-6 (Petitioner relying
`
`solely on the ‘873 specification). As the Board explained in American Express
`
`Company, et al. v. Metasearch Systems, LLC, CBM2014-00001 (March 20, 2014):
`
`To act as its own lexicographer, a patentee must “clearly set forth a
`
`definition of the disputed claim term” other than its plain and ordinary
`
`meaning. It is not enough for a patentee to simply disclose a single
`
`embodiment or use a word in the same manner in all embodiments, the
`
`patentee must “clearly express an intent” to redefine the term.
`
`-3-
`
`
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`CBM2014-00001 (Paper 29 at 10) citing Thorner v. Sony Computer Entm’t. Am.
`
`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir.2012) (citations omitted). It is undisputed that
`
`the inventor of the ‘873 patent did not set forth any special definition for the term
`
`“playlist.” Absent any special definition and consistent with the broadest
`
`reasonable construction standard, the term “playlist” should be given its ordinary
`
`and customary meaning, as would be understood by one of ordinary skill in the art
`
`at the time of the invention. Endo Pharmaceuticals Inc., IPR2014-00656 (Paper
`
`12 at 6).
`
`Patent Owner submitted evidence from a prior inter partes review
`
`proceeding involving the ‘873 patent (IPR2013-00598) in the form of (1) an expert
`
`declaration, (2) prior art, and (3) testimony of another petitioner’s expert,
`
`establishing that the ordinary and customary meaning of the term “playlist” is “a
`
`list referencing media items arranged to be played in a sequence” and not simply
`
`“a list of media selections.” See Preliminary Response (Paper 6) at 20-24; Ex.
`
`2006 at ¶¶ 46, 48, 50, 51; and Ex. 2007 at 294:2-25; 295:1-10; 221:14-21; 215:1-4;
`
`215:20-216:2; 216:23-217:7, 217:21-218:4.
`
`Based on the evidence submitted, the ordinary and customary meaning of
`
`the term playlist is “a list referencing media items arranged to be played in a
`
`sequence.” The Board appears to have misapprehended the fact that the
`
`specification of the ’873 patent is consistent with the ordinary and customary
`
`-4-
`
`
`
`meaning of the term “playlist.” The ‘873 specification describes that a playlist can
`
`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`
`be manipulated by a user in many different ways, including selecting songs to be
`
`played “in the order selected, in random order, or in any other order. The order can
`
`preferably be changed at any time.” Ex. 1001, 3:23-24, 11:42-44; Decision at 9.
`
`That the ‘873 patent specifies that the order in a playlist can be changed at any
`
`time does not negate the foundational principle of the playlist itself: namely, that
`
`ab origine 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 in which the original list of items is to be played. See Ex. 2006
`
`at ¶¶ 50-51 (citing Ex. 2007 at 216:23-217:7, 217:21-218:4). Thus, the
`
`construction proposed by Patent Owner is not too narrow and does not exclude any
`
`embodiment described in the ‘873 specification, but is consistent with the ordinary
`
`and customary meaning as supported by the evidence of record.
`
`Given a proper construction of “playlist” consistent with its customary and
`
`ordinary meaning, the combination of Weast and Encarnacion does not render the
`
`claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of the ‘873 patent
`
`invalid because Weast in combination with Encarnacion fail to teach “playlists,”
`
`“receiving, on the first device, a playlist, the received playlist comprising a
`
`plurality of media item identifiers,” “selecting at least one media item identifier
`
`from the received playlist,” or “receiving user second input selecting at least one
`
`-5-
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`
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`media item identifier from the received playlist” as required by the challenged
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`
`
`claims for the reasons set forth in detail in the Preliminary Response (Paper 6) at
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`37-43.
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`IV. CONCLUSION
`For all the reasons stated above, Patent Owner respectfully requests that the
`
`Board construe “playlist” as “a list referencing media items arranged to be played
`
`in a sequence,” and to deny review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30–
`
`31, 34–37, and 44–46 of the ’873 patent.
`
`Dated: November 18, 2014
`
`
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`
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`Respectfully submitted,
`
`
`
`/Lana A. Gladstein/
`Lana A. Gladstein, Reg. No. 48,502
`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
`
`Christopher Horgan, Reg. No. 40,394
`Concert Technology
`1438 Dahlia Loop
`San Jose, CA 95126
`Tel: (408) 687-8306
`
`Counsel for Patent Owner
`Black Hills Media, LLC
`
`-6-
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`
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 18, 2014, a true and accurate copy of this
`paper, PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71, was served on the
`following counsel for Petitioner via email:
`
`Andrea G. Reister areister@cov.com
`Gregory S. Discher gdischer@cov.com
`Covington & Burling LLP
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004
`Tel. 202-662-5141
`
`By:
`
` /Lana Gladstein/
`Lana Gladstein, Reg. No. 48,502
`Pepper Hamilton LLP
`
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Counsel for Patent Owner
`
`
`
`Dated:
`
`November 18, 2014
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