Patent No. 8,458,356
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Yamaha Corporation of America
`Petitioner
`
`v.
`
`Black Hills Media, LLC
`Patent Owner
`
`Patent No. 8,458,356
`Issue Date: June 4, 2013
`Title: SYSTEM AND METHOD FOR
`SHARING PLAYLISTS
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`DECLARATION OF V. MICHAEL BOVE, JR.
`
`
`
`
`
`Yamaha Corporation of America Exhibit 1002 Page 1
`
`
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Yamaha Corporation of America
`Petitioner
`
`v.
`
`Black Hills Media, LLC
`Patent Owner
`
`Patent No. 8,458,356
`Issue Date: June 4, 2013
`Title: SYSTEM AND METHOD FOR
`SHARING PLAYLISTS
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`DECLARATION OF V. MICHAEL BOVE, JR.
`
`
`
`
`
`Yamaha Corporation of America Exhibit 1002 Page 1
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`
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`I, V. Michael Bove, Jr., make this declaration in connection with the
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`proceeding identified above.
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by counsel for Yamaha Corporation of
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`America (“Yamaha”) as a technical expert in connection with the proceeding
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`identified above. I submit this declaration in support of Yamaha’s Petition for
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`Inter Partes Review of United States Patent No. 8,458,356 (“the '356 patent”).
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`2.
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`I am being paid at an hourly rate for my work on this matter. I
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`have no personal or financial stake or interest in the outcome of the present
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`proceeding.
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`II. QUALIFICATIONS
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`3.
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`I am employed as a Principal Research Scientist at the
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`Massachusetts Institute of Technology, where I am also currently head of the
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`Object-Based Media group at the Media Laboratory, co-director of the Center for
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`Future Storytelling, and co-director of the consumer electronics working group
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`CE2.0. I was also co-founder of and technical advisor to WatchPoint Media, Inc.,
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`an interactive television products and services company with offices in Lexington,
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`Massachusetts and London, England, which is now part of Ericsson. I also until
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`recently served as technical advisor to One Laptop Per Child, creators of an
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`inexpensive laptop computer for children in developing nations.
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`
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`1
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`Yamaha Corporation of America Exhibit 1002 Page 2
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`
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`4.
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`I hold an S.B. in Electrical Engineering, an S.M. in Visual Studies,
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`and a Ph.D. in Media Technology, all from the Massachusetts Institute of
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`Technology. I have authored over ninety journal and conference papers on
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`distributed media, interactive media, and digital media. I have supervised over
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`fifty graduate theses, and since 1990 have taught a graduate subject at MIT called
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`Signals, Systems, and Information for Media Technology. I am a Fellow of the
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`Society of Photo-Instrumentation Engineers, a member of the Board of Editors of
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`the Journal of the Society of Motion Picture and Television Engineers, and a
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`member of a number of other professional organizations including the Optical
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`Society of America, the Association for Computing Machinery, and the Institute of
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`Electrical and Electronic Engineers. I am a named inventor on seventeen U.S.
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`patents, including U.S. Patent No. 7,249,367, which was cited in the prosecution of
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`the '356 patent. I served as General Chair of the 1996 ACM Multimedia
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`Conference and of the 2006 IEEE Consumer Communications and Networking
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`Conference (CCNC’06). Attached as Appendix A is a copy of my curriculum
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`vitae.
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`III. MATERIALS CONSIDERED
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`5.
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`In preparing this declaration, I have reviewed, among other things,
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`the following materials: (a) the '356 patent and its prosecution history; (b) U.S.
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`Patent Application Publication US2002/0087996 A1 to Bi et al. (“Bi”); U.S. Patent
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`2
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`Yamaha Corporation of America Exhibit 1002 Page 3
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`
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`No. 6,502,194 (“Berman”); (c) PCT Publication WO 01/17142 A2 to Gladwin et
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`al. (“Gladwin”); (d) U.S. Patent No. 7,472,353 to Wolff et al. (“Wolff”); (e) the
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`Petition for Inter Partes Review of the '356 patent to which my declaration relates;
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`(f) March 20, 2014 Decision to Institute Inter Partes Review of U.S. Patent No.
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`8,230,099; and (g) my September 19, 2013 Declaration in Support of Yamaha’s
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`Petition for Inter Partes Review of the '099 patent.
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`IV. DEFINITIONS AND STANDARDS
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`6.
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`I have been informed and understand that claims are construed
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`from the perspective of one of ordinary skill in the art at the time of the claimed
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`invention, and that during inter partes review, claims are to be given their broadest
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`reasonable construction consistent with the specification.
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`7.
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`I have also been informed and understand that the subject matter of
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`a patent claim is obvious if the differences between the subject matter of the claim
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`and the prior art are such that the subject matter as a whole would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`art to which the subject matter pertains. I have also been informed that the
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`framework for determining obviousness involves considering the following
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`factors: (i) the scope and content of the prior art; (ii) the differences between the
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`prior art and the claimed subject matter; (iii) the level of ordinary skill in the art;
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`and (iv) any objective evidence of non-obviousness. I understand that the claimed
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`3
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`Yamaha Corporation of America Exhibit 1002 Page 4
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`
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`subject matter would have been obvious to one of ordinary skill in the art if, for
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`example, it results from the combination of known elements according to known
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`methods to yield predictable results, the simple substitution of one known element
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`for another to obtain predictable results, use of a known technique to improve
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`similar devices in the same way or applying a known technique to a known device
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`ready for improvement to yield predictable results. I have also been informed that
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`the analysis of obviousness may include recourse to logic, judgment and common
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`sense available to the person of ordinary skill in the art that does not necessarily
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`require explication in any reference.
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`8.
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`In my opinion, a person of ordinary skill in the art pertaining to the
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`'356 patent would have at least a bachelor’s degree in computer science or
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`electrical engineering, and at least one year of practical experience with networked
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`multimedia.
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`9.
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`I have been informed that the relevant date for considering the
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`patentability of the claims of the '356 patent is May of 2004. Based on my
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`education and experience in the fields of networked digital media and consumer
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`electronics, I believe I am qualified to provide opinions about how one of ordinary
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`skill in the art in 2004 would have interpreted and understood the '356 patent and
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`the prior art discussed below.
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`4
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`Yamaha Corporation of America Exhibit 1002 Page 5
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`
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`V. THE '356 PATENT
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`10.
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`The claims of the '356 patent are directed to a system and method
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`for a wireless remote control device to receive a playlist of songs from a remote
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`source, allowing a user to select one or more songs from the playlist for playback
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`on a media player that is associated with but separate from the remote control.
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`VI. CLAIM CONSTRUCTION
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`11.
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`I have been asked to provide my opinion on one claim term: “item
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`identifier,” by discussing what one of ordinary skill in the art at the time of the
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`patent filing would regard as the broadest reasonable interpretation consistent with
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`the specification. My opinion agrees with the position taken in Yamaha’s Petition
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`for Inter Partes Review.
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`A.
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`12.
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`“item identifier”
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`The claims of the '356 patent state that “the playlist compris[es] at
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`least one item identifier that identifies at least one item.” The specification of the
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`'356 patent does not contain a single reference to the term “item identifier.”
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`Because there is nothing in the specification to aid in construction of the term
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`“item identifier,” the broadest reasonable construction based upon the ordinary
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`meaning of the term is “any information that in any manner identifies an item in
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`the playlist.”
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`5
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`Yamaha Corporation of America Exhibit 1002 Page 6
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`
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`VII. ANALYSIS OF PRIOR ART
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`A. Elements disclosed in the references
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`13.
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`I have reviewed the claim charts contained in the petition for Bi,
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`Wolff, Gladwin, and Berman. I agree with the identification therein of elements in
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`the prior art references that correspond to the recited claim elements.
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`B. Obviousness of Claims 1, 23, and 28 based on Bi in combination
`with Wolff
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`14.
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`As set forth in the claim chart in the petition, Bi discloses that a
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`playlist is communicated from the media player (computing platform 100) to the
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`navigator 260 and the navigator is used to browse and select music to play. Bi
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`does not explicitly state what information is sent back from the navigator to the
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`computing platform in order to select a song. However, one of ordinary skill in the
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`art would understand that for the remote navigator to function as described,
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`information identifying the song to be selected is provided to the player from the
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`remote control. Therefore, playlists must necessarily include item identifiers that
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`identify the media items (e.g., songs) in the playlist, otherwise, the media items
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`could not be played or accessed. In this regard, I note that the '356 specification
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`itself does not contain any explicit discussion regarding media identifiers being
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`associated with songs.
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`15.
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`Wolff discloses in numerous places (for example at 1:49-58, 3:44-
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`47, 5:22-24, 6:8-10 and 7:62-8:4) the provision of media identifiers and sending
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`6
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`Yamaha Corporation of America Exhibit 1002 Page 7
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`
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`media item identifiers from a remote control to a media player to select an item
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`from a playlist. In my opinion, it would have been obvious to one of ordinary skill
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`in the art that the remote navigator of Bi could provide media identifiers as in
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`Wolff identifying songs in order to access and play a song. Doing so is merely
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`combining known prior art elements in an obvious manner to yield predictable
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`results. It is therefore my opinion that claims 1 and 23 are obvious based upon Bi
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`in view of Wolff.
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`16.
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`With respect to claim 28, I have been asked my opinion as to
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`whether one of ordinary skill in the art would find that it would have been obvious
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`to display a playlist on the media player device in Bi in addition to displaying it on
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`the remote navigator.
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`17.
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`Displaying playlists on media player devices was a common and
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`well-known practice at the time, and a person of ordinary skill in the art would
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`have recognized that since the playlist is already on the media player device, a user
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`(for example, one sitting close to the media player) may wish to view and interact
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`with a playlist displayed on the device itself. The Bi reference (at, e.g. [0027] and
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`Fig. 4) discloses that the media player device may be a general purpose computing
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`device, and that it has a display output. Wolff likewise (at for example 2:60-64)
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`discloses that the media player may be a general purpose computer, which one of
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`ordinary skill in the art would understand to include a display. I believe that it
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`7
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`Yamaha Corporation of America Exhibit 1002 Page 8
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`
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`would have been obvious to provide a display of the playlist on the media player of
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`Bi based at least on the knowledge of a person of ordinary skill in the art and the
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`desire to provide the conventional display and user interface options for users at
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`the media player device itself. It is therefore my opinion that claim 28 is also
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`obvious based upon the combination of Bi and Wolff.
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`C. Obviousness of Claim 28 based on Bi And Wolff In Combination
`With Berman
`As discussed above in paragraph 16, it is my opinion that claim 28
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`18.
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`is obvious based upon Bi and Wolff based upon the conventional display of
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`playlists on personal computers. It is also my opinion that claim 28 is obvious
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`based upon Bi and Wolff and further in view of Berman. Berman discloses a
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`dedicated media player unit in which a playlist is displayed on the unit. Bi and
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`Wolff also indicate that the media player can be a dedicated media player unit. If
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`the system of Bi was implemented as a dedicated media player, I believe that one
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`of ordinary skill in the art would recognize that the devices and applications in the
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`Bi, Wolff, and Berman references are similar, and that it would have been obvious
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`to a person of ordinary skill in the art to combine Bi and Wolff with Berman and
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`provide a display of the playlist on the media player of Bi as in Berman based on a
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`desire to provide additional display and user interface options for users.
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`
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`8
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`Yamaha Corporation of America Exhibit 1002 Page 9
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`
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`D. Obviousness of Claims 1, 23, and 28 based on Gladwin
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`19.
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`The Gladwin reference does not explicitly disclose what
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`information is sent from the remote device when selecting a song to be played in
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`the disclosed system. However, one of ordinary skill in the art would understand
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`that for the remote device to function as described, some information identifying
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`the song to be selected is provided to the player from the remote. Therefore,
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`playlists must necessarily include item identifiers that identify the media items
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`(e.g., songs) in the playlist, otherwise, the media items could not be played or
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`accessed. Two well-known ways to implement item identifiers are by means of an
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`index number indicating the position of a song within a playlist and/or an address
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`indicating a storage location of a song; the Gladwin reference describes the use of
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`an address, for example, at FIG 8. As media items are commonly locally or
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`remotely stored as files, just as with any other data storage system it is well-
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`understood to use an address of a local or remote storage location as an item
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`identifier. In my opinion, it would have been obvious to one of ordinary skill in
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`the art that the playlist provided to the remote device of Gladwin could provide
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`(for example) an index number reflecting the position of a song in the playlist or an
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`address identifying the song, and that the remote device could send such identifier
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`to the media player in order to access and play the song. It is therefore my opinion
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`that claims 1 and 23 are obvious based upon Gladwin.
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`9
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`Yamaha Corporation of America Exhibit 1002 Page 10
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`20.
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`With respect to claim 28, I have been asked my opinion as to
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`whether one of ordinary skill in the art would find that it would have been obvious
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`to display the playlist on the host PC in Gladwin. While Gladwin does not
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`specifically disclose display of the playlist on the host PC media player, displaying
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`playlists on a PC was well known at the time, and a person of ordinary skill in the
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`art would have recognized that since the playlist is already on the PC, a user (for
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`example, one sitting close to the PC) may wish to view and interact with the
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`playlist on the PC itself. It is also well-known that a PC has a display, generally
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`larger and more detailed than that of a media player, and the addition of a remote
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`control does not in any way suggest to one of ordinary skill in the art that the
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`display should no longer be used for this well-known purpose. It is therefore my
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`opinion that claim 28 is obvious based upon Gladwin.
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`E. Obviousness of Claims 1, 23, and 28 based on Berman
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`21.
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`While the Berman reference does not explicitly disclose a wireless
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`remote control, it does disclose the replication of the GUI of the user display on a
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`remote control device at 13:60-64. In my opinion, it would have been obvious that
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`the remote control device could be implemented as a handheld wireless device.
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`Because nearly all the remote control devices used with home audio systems since
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`at least the 1980s have been wireless, it is my opinion that one of skill in the art
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`would easily understand that the Berman remote control device could be wireless.
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`10
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`Yamaha Corporation of America Exhibit 1002 Page 11
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`22.
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`Berman does not explicitly disclose that an item identifier is sent
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`from the remote control when selecting a song to be played in the disclosed
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`system. However, one of ordinary skill in the art would understand that for the
`
`remote control to function as described, some information identifying the song to
`
`be selected is provided to the player from the remote. Therefore, playlists must
`
`necessarily include item identifiers that identify the media items (e.g., songs) in the
`
`playlist, otherwise, the media items could not be played or accessed. As the GUI
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`of the media player in Berman may be replicated on the remote control, it would
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`have been obvious to one of ordinary skill in the art that the playlist information in
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`the remote control could be the same as that contained in the media player. This
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`would include songlist data as shown in FIG. 8 that is received from the server. In
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`my opinion, it would have been obvious to one of ordinary skill in the art for the
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`remote control of Berman to provide such a media identifier from the songlist back
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`to the media player in order to select a song. It is therefore my opinion that claims
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`1 and 23 are obvious in view of Berman.
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`23.
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`With respect to claim 28, as set forth in the claim chart in the
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`petition, Berman discloses display of the playlist on the media player. It is
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`therefore my opinion that claim 28 is also obvious in view of Berman.
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`
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`* * *
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`11
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`Yamaha Corporation of America Exhibit 1002 Page 12
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`
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`I declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true, and that
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`these statements were made with knowledge that willful false statements and the
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`like so made are punishable by fine or imprisonment, or both, under section 1001
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`of Title 18 of the United States Code.
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`Dated: May 6, 2014
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`_______________________
`V. Michael Bove, Jr.
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`12
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`Yamaha Corporation of America Exhibit 1002 Page 13
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