`U.S. Patent No. 8,214,873
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`BLACK HILLS MEDIA, LLC
`Patent Owner
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`___________________
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`Case No. IPR2014-00723
`U.S. Patent 8,214,873
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`___________________
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`
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`PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71
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`
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`TABLE OF CONTENTS
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Page
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`I.
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`II.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED .......... 1
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`STANDARD OF REVIEW ............................................................................ 2
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`III. BASIS FOR RELIEF REQUESTED ............................................................. 2
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`A.
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`The Board Erred In The Application Of The Law Governing the
`Broadest Reasonable Interpretation ..................................................... 2
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`IV. CONCLUSION ............................................................................................... 6
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`TABLE OF AUTHORITIES
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`CASES
`American Express Company, et al. v. Metasearch Systems, LLC, CBM2014-
`00001 (Paper 29) (March 20, 2014) ..................................................................... 3
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`Page(s)
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................... 3
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`Gose v. United States Postal Service, 451 F.3d 831 (Fed. Cir. 2006) ....................... 2
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`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 2
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`Endo Pharmaceuticals Inc. v. Depomed, Inc., IPR2014-00656 (Paper 12)
`(September 29, 2014) ............................................................................................ 1
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`Macronix International Co., Ltd., et al. v. Spansion LLC, IPR2014-00106
`(Paper 13) (April 24, 2014)................................................................................... 3
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`O'Keefe v. U.S. Postal Service, 318 F.3d 1310 (Fed. Cir. 2002) ............................... 2
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`Thorner v. Sony Computer Entm’t. Am. LLC, 669 F.3d 1362 (Fed. Cir.2012) ......... 3
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.71(c) ................................................................................................... 2
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`37 C.F.R. § 42.100(b) ................................................................................................ 2
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`-ii-
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Exhibit #
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`TABLE OF EXHIBITS
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`Exhibit Description (Previously Submitted)
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`Mobile Application Distribution Agreement between Samsung
`and Google, Trial Exhibit 2775 in the matter of Oracle America,
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`Relevant Pages from Joint Submission of Corrected Exhibit List,
`Doc. 293 filed on 4/15/2012, in the matter of Oracle America,
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`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)
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`Google’s Motion to Intervene filed in ITC Inv. No. 337-TA-882
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`Initial Determination in ITC Inv. No. 337-TA-882, Order No. 17,
`Granting Google Inc.’s Motion to Intervene
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`Patent Owner’s claim charts from ITC Inv. No. 337-TA-882
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`Declaration of Gareth Loy and Exhibits A - N thereto (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2011)
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`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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`IPR2014-00723
`U.S. Patent No. 8,214,873
`Pursuant to 37 C.F.R. § 42.71(d), Black Hills Media, LLC (“Patent Owner”)
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`hereby submits the following Request for Rehearing in response to the Decision,
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`Institution of Inter Partes Review of U.S. Patent No. 8,214,873 (“Decision”)
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`(Paper 7).
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`In the Decision, the Board granted review of claims 1, 2, 5–8, 15–19, 22, 23,
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`25–27, 30–31, 34–37, and 44–46 of the ’873 patent as obvious based on the
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`combination of Weast and Encarnacion based on the Board’s construction of the
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`claim term “playlist.”
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`The Board construed the term “playlist” to mean “a list of media selections.”
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`(Decision at 10) It is respectfully submitted that the Board overlooked the
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`evidence of record on the ordinary and customary meaning of the term “playlist” as
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`would be understood by one of ordinary skill in the art at the time of the invention.
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`As a result, the Board reached an erroneous conclusion of law and issued a
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`construction which is broader than the ordinary and customary meaning.
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`Patent Owner requests reconsideration of the Board’s Decision of the claim
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`construction of the term “playlist” and resultant grant of review of claims 1, 2, 5–8,
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`15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of the ’873 patent.
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`II.
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`STANDARD OF REVIEW
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” “An abuse of discretion
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`occurs where the decision is based on an erroneous interpretation of the law, on
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`factual findings that are not supported by substantial evidence, or represents an
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`unreasonable judgment in weighing relevant factors.” Gose v. United States Postal
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`Service, 451 F.3d 831, 836 (Fed. Cir. 2006) (internal quotations omitted); see also
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`O'Keefe v. U.S. Postal Service, 318 F.3d 1310, 1314 (Fed. Cir. 2002) (“The Board
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`necessarily abuses its discretion when it rests its decision on factual findings
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`unsupported by substantial evidence.”) (internal quotations omitted).
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`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
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`patent according to the broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under that
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`standard, and absent any special definitions, we give claim terms their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the art at
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`the time of the invention.” Endo Pharmaceuticals Inc. v. Depomed, Inc., IPR2014-
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`00656 (Paper 12 at 6) (September 29, 2014) citing In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007). Under the broadest reasonable construction
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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
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`customary meaning.” Macronix International Co., Ltd., et al. v. Spansion LLC,
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`IPR2014-00106 (Paper 13 at 6) (April 24, 2014), citing CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Patent Owner
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`respectfully submits that the Board reached an erroneous conclusion of law when it
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`overlooked the evidence of record on the ordinary and customary meaning of the
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`term “playlist” and enlarged the scope of the term beyond the ordinary and
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`customary meaning.
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`The Board’s construction of the term “playlist” to mean “a list of media
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`selections” (Decision at 10) is in error because such construction is broader than
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`the ordinary and customary meaning of the term. Petitioner submitted no evidence
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`to show either the ordinary and customary meaning of this term or that the patentee
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`acted as its own lexicographer. See Petition (Paper 1) at 4-6 (Petitioner relying
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`solely on the ‘873 specification). As the Board explained in American Express
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`Company, et al. v. Metasearch Systems, LLC, CBM2014-00001 (March 20, 2014):
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`To act as its own lexicographer, a patentee must “clearly set forth a
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`definition of the disputed claim term” other than its plain and ordinary
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`meaning. It is not enough for a patentee to simply disclose a single
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`embodiment or use a word in the same manner in all embodiments, the
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`patentee must “clearly express an intent” to redefine the term.
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`CBM2014-00001 (Paper 29 at 10) citing Thorner v. Sony Computer Entm’t. Am.
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir.2012) (citations omitted). It is undisputed that
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`the inventor of the ‘873 patent did not set forth any special definition for the term
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`“playlist.” Absent any special definition and consistent with the broadest
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`reasonable construction standard, the term “playlist” should be given its ordinary
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`and customary meaning, as would be understood by one of ordinary skill in the art
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`at the time of the invention. Endo Pharmaceuticals Inc., IPR2014-00656 (Paper
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`12 at 6).
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`Patent Owner submitted evidence from a prior inter partes review
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`proceeding involving the ‘873 patent (IPR2013-00598) in the form of (1) an expert
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`declaration, (2) prior art, and (3) testimony of another petitioner’s expert,
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`establishing that the ordinary and customary meaning of the term “playlist” is “a
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`list referencing media items arranged to be played in a sequence” and not simply
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`“a list of media selections.” See Preliminary Response (Paper 6) at 20-24; Ex.
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`2006 at ¶¶ 46, 48, 50, 51; and Ex. 2007 at 294:2-25; 295:1-10; 221:14-21; 215:1-4;
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`215:20-216:2; 216:23-217:7, 217:21-218:4.
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`Based on the evidence submitted, the ordinary and customary meaning of
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`the term playlist is “a list referencing media items arranged to be played in a
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`sequence.” The Board appears to have misapprehended the fact that the
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`specification of the ’873 patent is consistent with the ordinary and customary
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`meaning of the term “playlist.” The ‘873 specification describes that a playlist can
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`IPR2014-00723
`U.S. Patent No. 8,214,873
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`be manipulated by a user in many different ways, including selecting songs to be
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`played “in the order selected, in random order, or in any other order. The order can
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`preferably be changed at any time.” Ex. 1001, 3:23-24, 11:42-44; Decision at 9.
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`That the ‘873 patent specifies that the order in a playlist can be changed at any
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`time does not negate the foundational principle of the playlist itself: namely, that
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`ab origine the items in a playlist – including in the context of the ‘873 patent – are
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`arranged in a certain order to be played in a sequence unless and until the user
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`changes the order in which the original list of items is to be played. See Ex. 2006
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`at ¶¶ 50-51 (citing Ex. 2007 at 216:23-217:7, 217:21-218:4). Thus, the
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`construction proposed by Patent Owner is not too narrow and does not exclude any
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`embodiment described in the ‘873 specification, but is consistent with the ordinary
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`and customary meaning as supported by the evidence of record.
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`Given a proper construction of “playlist” consistent with its customary and
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`ordinary meaning, the combination of Weast and Encarnacion does not render the
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`claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of the ‘873 patent
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`invalid because Weast in combination with Encarnacion fail to teach “playlists,”
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`“receiving, on the first device, a playlist, the received playlist comprising a
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`plurality of media item identifiers,” “selecting at least one media item identifier
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`from the received playlist,” or “receiving user second input selecting at least one
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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
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`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
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`Board construe “playlist” as “a list referencing media items arranged to be played
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`in a sequence,” and to deny review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30–
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`31, 34–37, and 44–46 of the ’873 patent.
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`Dated: November 18, 2014
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`Respectfully submitted,
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`/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
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`Counsel for Patent Owner
`Black Hills Media, LLC
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`IPR2014-00723
`U.S. Patent No. 8,214,873
`CERTIFICATE OF SERVICE
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`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
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`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
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`
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`Dated:
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`November 18, 2014