Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`Petitioners
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2014-00737
`Case No. IPR2015-00334
`U.S. Patent 8,050,652
`___________________
`
`PATENT OWNER RESPONSE
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................ iii
`
`UPDATED TABLE OF EXHIBITS ..................................................................... vi
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`PETITIONER’S BURDEN OF PROOF .................................................... 1
`
`III. BACKGROUND OF THE ‘652 PATENT ................................................. 2
`
`A.
`
`B.
`
`Summary Of The ‘652 Patent ........................................................... 3
`
`Summary Of The Claimed Subject Matter ..................................... 8
`
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE
`ART .............................................................................................................. 11
`
`A.
`
`B.
`
`Legal Standard ................................................................................. 12
`
`A Person Having Ordinary Skill In The Art ................................. 13
`
`C. Construction Of “Playlist” .............................................................. 15
`
`1.
`
`2.
`
`Plain and ordinary meaning of “playlist” in the media
`file sharing arts ....................................................................... 16
`
`The specification of the ‘652 patent uses “playlist”
`consistent with its plain and ordinary meaning .................. 20
`
`D. Construction Of “Assigned To The Electronic Device” ............... 26
`
`V. WHITE DOES NOT RENDER OBVIOUS THE CHALLENGED
`CLAIMS ...................................................................................................... 26
`
`A.
`
`B.
`
`Legal Standard ................................................................................. 27
`
`Summary Of White .......................................................................... 29
`
`C. Neither The Petition Nor The Jeffay Report Apply A
`Proper Claim Construction To The Obviousness Analysis .......... 31
`
`-i-
`
`

`

`
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`Page
`
`D. Neither The Petition Nor The Jeffay Report Provide Any
`Rationale To Modify White To Arrive At The Claimed
`Inventions .......................................................................................... 37
`
`E. White Does Not Disclose At Least One Material Limitation
`Of Independent Claims 1 And 42 ................................................... 43
`
`1.
`
`No electronic device of White that plays a song
`receives information from a central system enabling
`the electronic device to obtain a song ................................... 44
`
`2.
`
`No electronic device of White receives a playlist ................ 50
`
`F. White Does Not Render Obvious Claims 13 And 55..................... 54
`
`VI. CONCLUSION ........................................................................................... 55
`
`
`
`-ii-
`
`

`

`TABLE OF AUTHORITIES
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`Page(s)
`
`
`
`CASES
`
`ActiveVideo Networks v. Verizon Comm’s, Inc., 694 F.3d 1312
`(Fed. Cir. 2012) ................................................................................................... 42
`
`CallCopy, Inc. v. Verint Americas, Inc., IPR2013-00486, Paper No. 11
`(PTAB, Feb. 5, 2014) .......................................................................................... 36
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................. 13
`
`Crocs, Inc. v. International Trade Commission, 598 F.3d 1294
`(Fed. Cir. 2010) ................................................................................................... 37
`
`Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982
`(Fed. Cir. 2009) ................................................................................................... 38
`
`Endo Pharmaceutical, Inc. v. Depomed, Inc., IPR2014-00656, Paper 12
`(PTAB, September 29, 2014) ............................................................................. 13
`
`Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010) ............ 31, 35
`
`Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper No. 9
`(PTAB, May 22, 2014) ....................................................................................... 52
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ..................................... 27, 31, 35, 37
`
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902
`(Fed. Cir. 1988) ................................................................................................... 28
`
`In Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183, Paper
`No. 12 (PTAB, July 31, 2013) ...................................................................... 28, 39
`
`In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999) ...................................................... 12
`
`In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) ........................................................... 27
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 28
`
`In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992) ........................................................... 2
`
`-iii-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`Page(s)
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) .......................................................... 13
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................. 12
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745, *58 ...... 28
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .........................................passim
`
`Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928 (Fed. Cir. 2003) .............................. 31
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper No. 17
`(PTAB, December 21, 2012) .............................................................................. 35
`
`Motorola Mobility LLC v. Arendi S.A.R.L., IPR2014-00203, Paper No. 10
`(PTAB, June 5, 2014) ......................................................................................... 29
`
`Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362
`(Fed. Cir. 2012) ................................................................................................... 13
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 27
`
`United States v. Adams, 383 U.S. 39 (1966) ............................................................ 37
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-
`00152, Paper No. 8 (PTAB, Aug. 19, 2013) ...................................................... 13
`
`Wowza Media Systems, LLC v. Adobe Systems Inc., IPR2013-00054,
`Paper No. 12 (PTAB, April 8, 2013) .................................................................. 29
`
`ZTE Corporation v. ContenGuard Holdings, Inc., IPR2013-00139,
`Paper No. 15 (July 9, 2013) ................................................................................ 35
`
`STATUTES
`
`35 U.S.C. § 103(a) ..................................................................................................... 1
`
`35 U.S.C. § 312(a)(3) ........................................................................................... 2, 37
`
`35 U.S.C. § 316(e) ..................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.20(c) ................................................................................................. 36
`
`-iv-
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`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`Page(s)
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 36
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.104 ................................................................................... 2, 23, 37, 52
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`37 C.F.R. §42.123(a) ................................................................................................ 36
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 12
`
`MPEP § 2111 ........................................................................................................... 12
`
`MPEP § 2142 ............................................................................................................. 2
`
`MPEP § 2141 (8th Ed., Rev. 9, August 2012) ................................................... 14, 27
`
`
`
`-v-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`Previously filed
`
`UPDATED TABLE OF EXHIBITS
`
`Exhibit Description
`
`Exhibit #
`
`Mobile Application Distribution Agreement between
`Samsung and Google
`
`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)
`
`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
`
`Claim Chart filed in ITC Inv. No. 337-TA-882 as
`Exhibit 107 to Original Complaint
`
`Redacted Claim Chart supplied in ITC Inv. No. 337-
`TA-882
`
`Declaration of Ivan Zatkovich filed in IPR2013-
`00594 as Exhibit 2011
`
`TerraTec M3PO High Quality Audio
`Decoder Manual (May 18, 2000)
`
`Siren Jukebox Operating Manual (2000)
`
`Microsoft Windows Media Player 7 Handbook, Ch. 2
`(October 4, 2000)
`
`Public Version of Initial Determination in ITC Inv.
`No. 337-TA-882, issued July 7, 2014
`
`Declaration of Ivan Zatkovich submitted in ITC
`Proceeding 337-TA-882
`
`-vi-
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`UPDATED TABLE OF EXHIBITS (CONTINUED)
`
`New
`
`Exhibit Description
`
`Declaration of Ivan Zatkovich
`
`Jeffay Deposition Transcript, January 15, 2015
`
`Exhibit #
`
`2013
`
`2014
`
`
`
`-vii-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`PATENT OWNER RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.120, Patent Owner, Black Hills Media, LLC,
`
`(“Patent Owner”) hereby submits this Response to the Petition for Inter Partes
`
`Review (Paper 1, “Petition”) of U.S. Patent No. 8,050,652 (the ‘652 Patent) as to
`
`the grounds for which a trial was instituted in the Decision Institution of Inter
`
`Partes Review dated November 4, 2014 (Paper 7, “Institution Decision”).
`
`The Patent Trial and Appeals Board (“the Board”) instituted a trial only with
`
`respect to claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of the ‘652
`
`Patent as obvious under 35 U.S.C. § 103(a) over U.S. Patent No. 7,187,947 of
`
`White (Ex. 1003, “White”).
`
`As detailed below, none of the claims at issue in this proceeding are obvious
`
`over White as the asserted prior art fails to teach the claimed inventions, and the
`
`Petitioner has failed to demonstrate by a preponderance of the evidence that it
`
`would have been obvious to combine the various embodiments of White to arrive
`
`at the claimed inventions.
`
`II.
`
`PETITIONER’S BURDEN OF PROOF
`
`“[T]he petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). The
`
`legal standard of “a preponderance of evidence” requires the evidence to be more
`
`-1-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`convincing than the evidence which is offered in opposition to it. MPEP § 2142.
`
`The ultimate determination of patentability is based on the entire record, by a
`
`preponderance of evidence, with due consideration to the persuasiveness of the
`
`arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
`
`Cir. 1992).
`
`To prove unpatentability, the Petitioner is required to file a petition that must
`
`identify with particularity: 1) the statutory grounds on which the challenge to each
`
`claim is based, and 2) evidence that supports the grounds for the challenge to each
`
`claim, including “such other information as the Director may require by
`
`regulation.” 35 U.S.C. § 312(a)(3). Consistent with these statutory requirements,
`
`Rule 42.104(b) requires that the petition must: 1) identify “[h]ow the challenged
`
`claim is to be construed”; 2) identify “[h]ow the construed claim is unpatentable
`
`under the statutory grounds identified” and “specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon”; and 3)
`
`provide “the relevance of the evidence to the challenge raised.”
`
`III. BACKGROUND OF THE ‘652 PATENT
`The ‘652 Patent was filed on November 27, 2006, as U.S. Application No.
`
`11/563,232, and issued on November 1, 2011. The ’652 Patent claims priority as a
`
`continuation of U.S. Application No. 09/805,470, filed on March 12, 2001, which
`
`-2-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`in part claims priority to U.S. Provisional Application No. 60/246,842, filed on
`
`Nov. 8, 2000.
`
`Summary Of The ‘652 Patent
`
`A.
`In 2000, when the provisional application disclosing the subject matter that
`
`was ultimately claimed in the ‘652 Patent was filed, the industry was primarily
`
`focused on the significance of audio content in digital content distribution systems.
`
`By way of example, audio player devices were developed to have large amounts of
`
`storage (e.g., personal digital assistants (PDAs)) that enabled a user to aggregate
`
`personal content on their own local player device. Other products at the time were
`
`instead focused on aggregating audio content centrally such that a user’s player
`
`device could receive for playback centrally-stored audio content selected by a user
`
`on that user’s player device. (Zatkovich Decl. Ex. 2013, ¶¶28-29).
`
`The ‘652 Patent is generally directed to methods and systems that provide a
`
`user with access to audio content from a variety of remote sources, e.g., networked
`
`remote sources or web sites (Ex. 1001, Abstract and 2:16-20,58-63), and one of the
`
`more significant innovations described and claimed in the ‘652 Patent is its focus
`
`on the role of the playlist (as opposed to the audio content itself) in the
`
`management of audio content. (Zatkovich Decl. Ex. 2013, ¶29). Specifically, the
`
`‘652 Patent provides that the receipt of an assigned playlist by a network-enabled
`
`electronic device allows the playlist-receiving device to obtain and play the audio
`
`-3-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`content indicated by the playlist, for example, to “provide[] people who are or are
`
`not comfortable with computers a way of taking music from various sources and
`
`putting it into one place for listening pleasure.” (Ex. 1001, 3:20-24). For example,
`
`the ‘652 Patent describes a process that allows a user logged into a central server
`
`(which may authorize the user based on a password) to assign a centrally-managed
`
`playlist, which identifies a plurality of songs aggregated from one or more remote
`
`sources, to a local electronic device. (Ex. 1001, 23:35-45 and 24:8-12). The
`
`centrally-managed playlists can thus be controlled by the user, for example, to add
`
`songs to and delete songs from the playlist. (Ex. 1001, 23:35-45 and 24:8-12).
`
`(See also Zatkovich Decl. Ex. 2013, ¶29).
`
`A copy of the playlist can then be transmitted from the server to the device,
`
`such that the receiving device takes control to obtain audio content of the songs
`
`indicated in the playlist from the one or more remote sources and to sequentially
`
`play the songs identified by the playlist. (See Ex. 1001, Figures 19B-19C and
`
`27:47-30:18). For example, when an electronic device obtains and plays back the
`
`audio content corresponding to a song within a playlist, the audio content can be
`
`streamed to, or downloaded by, the electronic device. (Ex. 1001, 21:65-22:4).
`
`(See also Zatkovich Decl. Ex. 2013, ¶50).
`
`The ‘652 Patent describes various computing environments that enable the
`
`network-enabled audio devices to store files, play standard audio CDs and MP3
`
`-4-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`encoded CDs, record songs from CDs, receive digitized radio broadcasts over the
`
`World Wide Web, and/or receive assignments of playlists of songs from other
`
`network-enabled audio devices. (Ex. 1001, 2:58-63). Figure 11 of the ’652 Patent,
`
`which is reproduced below, shows one exemplary embodiment of such a
`
`computing environment. The network includes network-enabled electronic
`
`‘Device A’ (1108), network-enabled electronic ‘Device B’ (1110), and personal
`
`computer (1106). These electronic devices interact with a server (1104) “through
`
`the network 1102 (such as the Internet).” (Ex. 1001, 16:56-60). (See also
`
`Zatkovich Decl. Ex. 2013, ¶¶39-40).
`
`
`The electronic devices (e.g., devices (1108) and (1110)) are assigned, and
`
`can receive, playlists and content over a network (e.g., the Internet or a local home
`
`-5-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`network), and can retrieve content indicated by the playlists through the network
`
`connection. (Ex. 1001, 2:38-40, 22:47-48, and 30:19-26). For example, the ‘652
`
`Patent describes a process that allows a user logged into a central server (which
`
`may authorize the user based on a password) to assign a centrally-managed
`
`playlist, which identifies a plurality of songs aggregated from one or more remote
`
`sources, to a local electronic device. (Ex. 1001, 23:35-45 and 24:8-12; Zatkovich
`
`Decl. Ex. 2013, ¶29). Alternatively, the ‘652 Patent provides that playlists can be
`
`assigned to one or more playback devices when those devices connect to the IPAN
`
`Server, for example. (Ex. 1001, 25:53-58; Zatkovich Decl. Ex. 2013, ¶47). A
`
`copy of the playlist can then be transmitted from the server to the device, such that
`
`the playlist-receiving device takes control to obtain audio content indicated by the
`
`playlist from the one or more remote sources and can play the songs identified by
`
`the playlist. (Ex. 1001, Figures 19B-19C and 27:47-30:18; Zatkovich Decl. Ex.
`
`2013, ¶29). When an electronic device obtains and plays back the audio content
`
`corresponding to a song within a playlist, the audio content can be streamed to, or
`
`downloaded by, the electronic device. (Zatkovich Decl. Ex. 2013, ¶50; Ex. 1001,
`
`21:65-22:4). In some embodiments, the electronic device does not include local
`
`storage and therefore can only stream the audio content corresponding to the songs
`
`of a playlist from a remote source. (Ex. 1001, 3:57-58; Zatkovich Decl. Ex. 2013,
`
`¶50).
`
`-6-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`In another aspect, the ‘652 Patent provides that a user can select between
`
`various modes of operation. For example, as an alternative to the playlist mode of
`
`operation described above, the ‘652 Patent additionally discloses that the network-
`
`enabled device can select an “Internet Radio” option in order to receive and play
`
`Internet radio broadcasts. (Ex. 1001, FIG. 18A (“option 1814”) and 26:20-25;
`
`Zatkovich Decl. Ex. 2013, ¶55). For example, “in the Web Radio mode, the
`
`intelligent radio 100 uses the modem 206 to connect to the ISP 232. The ISP 232
`
`provides a list of available Web broadcasts, and access to the Internet 234, so that
`
`the various Web broadcasts can be received by the intelligent radio 100. In the
`
`Web Radio mode, the display device 112 is used to select a Web broadcast and to
`
`provide information about the selected Web broadcast.” (Ex. 1001, 10:50-57).
`
`The Web Radio mode “allows the user to select a preferred type of program
`
`material (e.g., Sports, Weather, News, All, etc.). The display 330 includes a list
`
`332 of program types and a scroll bar 331. The user uses the cursor control 116 or
`
`the tuning control 114 to highlight a desired program type from the list 332, and
`
`then the user presses the select button 118 to select the highlighted program type.”
`
`(Ex. 1001, 11:45-52; Zatkovich Decl. Ex. 2013, ¶56).
`
`After selecting the type of program material, the list of available programs
`
`corresponding to the selected program type can be displayed to allow the user to
`
`-7-
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`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`select a particular Web broadcast for playback. (Ex. 1001, 11:53-54 and 12:62-
`
`13:1; Zatkovich Decl. Ex. 2013, ¶¶57-58).
`
`Summary Of The Claimed Subject Matter
`
`B.
`Independent claim 1 recites an electronic device that comprises, inter alia,
`
`“a system enabling playback of audio content from a playlist assigned to the
`
`electronic device via the central system.” The electronic device of claim 1 further
`
`comprises “a control system associated with the network interface and the system
`
`enabling playback of the audio content indicated by the playlist, and adapted
`
`to…iii) when the desired mode of operation is the playlist mode of operation:
`
`
`
`receive the playlist assigned to the electronic device from the central
`
`system, the playlist identifying a plurality of songs, wherein ones of the
`
`plurality of songs are not stored on the electronic device;
`
`receive information from the central system enabling the electronic
`
`device to obtain the ones of the plurality of songs from at least one remote
`
`source;
`
`obtain the ones of the plurality of songs from the at least one remote
`
`source; and
`
`play the audio content indicated by the playlist.”
`
`Each of challenged claims 3, 4, 6, 7, 10, 11, and 13 depends from
`
`independent claim 1 and recites additional limitations of the device of claim 1.
`
`-8-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`Independent claim 42 recites a method of operation for an electronic device
`
`that comprises, inter alia, “enabling a user of the electronic device to select a
`
`desired mode of operation from a plurality of modes of operation comprising… a
`
`playlist mode of operation,” and “when the desired mode of operation is the
`
`playlist mode of operation:
`
`i) receiving a playlist assigned to the electronic device via a central
`
`system, the playlist identifying a plurality of songs, wherein ones of the
`
`plurality of songs are not stored on the electronic device;
`
`ii) receiving information from the central system enabling the
`
`electronic device to obtain the ones of the plurality of songs from at least
`
`one remote source;
`
` iii) obtaining the ones of the plurality of songs from the at least one
`
`remote source; and
`
`iv) playing audio content indicated by the playlist.”
`
`Each of challenged claims 44, 45, 47-50, 52, and 55 depends from
`
`independent claim 42 and recites additional limitations of the method of claim 42
`
`In every method and system described in the ‘652 Patent and recited in the
`
`challenged claims, three distinct pieces of information are received or obtained by
`
`the electronic device in order to the play the songs indicated by a playlist assigned
`
`thereto: i) a playlist identifying a plurality of media items (e.g., by song title) (see
`
`-9-
`
`

`

`IPR2014-00737
`U.S. Patent 8,050,652
`
`e.g., Ex. 1001, 4:29-30, “The playlists include titles of audio from a variety of
`
`audio sources.”); ii) information enabling the electronic device to obtain the media
`
`items (see, e.g., Ex. 1001, 4:30-31, “The assignments provide information about
`
`the location of other web sites containing the audio sources.”); and, iii) the media
`
`items themselves (see, e.g., Ex. 1001, 4:32-33, “The software module is configured
`
`to connect through the ISP to the web sites to download the audio files.”).
`
`(Zatkovich Decl. Ex. 2013, ¶¶30, 85).
`
`The ‘652 Patent distinguishes between the information for identifying a song
`
`(e.g., a song title), the information for obtaining a song (e.g., a location or source
`
`from which a song identified in a playlist may be obtained), and the song itself
`
`(e.g., an audio file to be streamed or downloaded). (Zatkovich Decl. Ex. 2013,
`
`¶30). Though these three pieces of information are distinct and can be received
`
`independently from one another (see, e.g., Ex. 1001, 4:50-5:3, Zatkovich Decl. Ex.
`
`2013, ¶31), the ‘652 Patent also describes embodiments in which the information
`
`enabling the electronic device to obtain the song is received together with the
`
`information identifying the songs (see, e.g., Ex. 1001, 21:62-65, and 22:48-50,
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`Zatkovich Decl. Ex. 2013, ¶32). The ‘652 Patent makes clear that, regardless of
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`their association in the playlist, the information identifying a song is different from
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`the information used to obtain a song. (see, e.g., Ex. 1001, 21:62-65, and 22:48-
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`50, Zatkovich Decl. Ex. 2013, ¶33). For example, in every portion of the ‘652
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`Patent that depicts the contents of a playlist, the song title is identified. (See e.g.,
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`Ex. 1001, 4:29-30 (“The play lists include titles of audio from a variety of audio
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`sources.”) and 22:48-50 (“Within the playlist, the URL’s indicate the location from
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`which the audio files associated with the song titles in the playlist can be
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`downloaded.”); Zatkovich Decl. Ex. 2013, ¶¶33-37). Indeed, it is key that a
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`playlist meaningfully identify the songs (e.g., by title) such that the user can assign,
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`compose, and/or manipulate the playlists and the songs contained therein.
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`(Zatkovich Decl. Ex. 2013, ¶34). Thus, the ‘652 Patent makes clear that while the
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`“information enabling a song to be obtained” can be associated with the
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`“information identifying the song,” the information enabling the electronic device
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`to obtain a song in and of itself is not sufficient to identify the song within the
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`meaning of the ‘652 Patent. (Zatkovich Decl. Ex. 2013, ¶33).
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`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`As noted above, each of independent claims 1 and 42 recites a method or
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`device involving a “playlist assigned to the electronic device. . ., the playlist
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`identifying a plurality of songs. . . .” Patent Owner submits that the proper
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`construction for the term “playlist” is “a list referencing media items arranged to be
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`played in a sequence.”
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`The Board preliminarily construed the term “playlist” to mean “a list of
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`audio files.” Institution Decision, p. 11. It is respectfully submitted that this
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`preliminary construction neglected substantial evidence of record as to the
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`complete ordinary and customary meaning of the term “playlist.” The Board’s
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`determination that its preliminary construction of “playlist” is “consistent with”
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`certain aspects of the specification and that “[a]ny other aspects of ‘playlist’ need
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`not be construed expressly for purposes of this decision” is erroneous as a matter
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`of law. Rather, “the broadest reasonable interpretation of the claims must also be
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`consistent with the interpretation that those skilled in the art would reach,” Manual
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`of Patent Examining Procedure (MPEP) § 2111 (citing In re Cortright, 165 F.3d
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`1353 (Fed. Cir. 1999)), including the fundamental “aspect” that media items
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`referenced by a playlist are arranged to be played as a group (i.e., in succession
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`one after another), as discussed in detail below.
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`A. Legal Standard
`In an inter partes review, claim terms in an unexpired patent are interpreted
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`according to their broadest reasonable construction in light of the specification of
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`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). “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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007).” Endo Pharmaceutical, Inc. v. Depomed, Inc., IPR2014-00656 (Paper
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`12 at 6, September 29, 2014).
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`Indeed, “[t]here is a ‘heavy presumption’ that a claim term carries its
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`ordinary and customary meaning,” Universal Remote Control, Inc. v. Universal
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`Electronics, Inc., IPR2013-00152 (Paper 8, Aug. 19, 2013) (quoting CCS Fitness,
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`Inc. v. Brunswick Corp., 288 F.3d 1359, 1366. (Fed. Cir. 2002)), and “there are
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`only two exceptions to this general rule: 1) when a patentee sets out a definition
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`and acts as his own lexicographer, or 2) when the patentee disavows the full scope
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`of a claim term either in the specification or during prosecution.” Thorner v. Sony
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`Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Any special
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`definitions for claim terms must be set forth with reasonable clarity, deliberateness,
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`and precision.” Endo Pharmaceutical, Inc., IPR2014-00656 (Paper 12 at 6) (citing
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`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)).
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`B. A Person Having Ordinary Skill In The Art
`Patent Owner submits that a person having ordinary skill in the art (also
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`referred to as “PHOSITA”) at the time of the invention of the ‘652 Patent would
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`have had a Bachelor’s degree in computer science or electrical engineering or its
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`equivalent and 1-2 years of practical experience with media file sharing.
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`(Zatkovich Decl. Ex. 2013, ¶24). Patent Owner’s proposed definition is supported
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`by the declaration of Ivan Zatkovich, which takes into account various factors to be
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`considered in determining this hypothetical person such as the type of problems
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`encountered in the art at the time of the invention, the sophistication of the
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`technology, and the education level and professional capabilities of active workers
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`in the field. MPEP §2141(II)(C); (Zatkovich Decl. Ex. 2013, ¶25).
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`The ‘737 Petition, on the other hand, has proposed an open-ended definition
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`for a person having ordinary skill in the art (also referred to as “PHOSITA”) as
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`having “at least a B.S. degree in electrical engineering, computer engineering or
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`computer science and approximately two years of professional experience with
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`computer networking and multimedia technologies, or the equivalent.” (Paper 1, p.
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`7; Jeffay Decl. Ex. 1015, ¶4, emphasis added). Though there appears to be no
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`material difference exists between the fields of study and experience between
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`Patent Owner’s proposed definition and that of Petitioner (Zatkovich Decl. Ex.
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`2013, ¶27), Patent Owner’s proposed definition more accurately reflects the
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`education level of a person of ordinary skill in the art in that it specifically
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`excludes persons having a PhD that would exceed the level of “ordinary” skill.1
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`
`1 During his deposition, Dr. Jeffay acknowledged that the analysis contained within
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`the Jeffay Report “focus[ed] on someone who has a BS degree and approximately
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`two years of experience, and for purposes of doing it specifically, I would say I
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`was basically doing it with two years of experience.” Ex. 2014, p. 113, ll. 4-8.
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`Accordingly, Patent Owner respectfully requests that the Board adopt the
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`Patent Owner’s proposed definition because it would exclude persons who are
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`overqualified to be considered of “ordinary skill in the art.”
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`C. Construction Of “Playlist”
`In its Institution Decision, the Board provided a preliminary construction
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`that the term “playlist” means “a list of audio files” but does “not requir[e] items
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`arranged to be played in a sequence.” Institution Decision, p. 11.
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`Patent Owner respectfully disagrees and submits that the broadest reasonable
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`interpretation of “playlist” from the vantage point of one of ordinary skill in the art
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`at the time of the invention of the ’652 Patent