Trials@uspto.gov
`571-272-7822
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`
`
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`
`
`Paper 19
`Entered: February 23, 2015
`
`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,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00737
`Patent 8,050,652 B2
`____________
`
`Before BRIAN J. McNAMARA, FRANCES L. IPPOLITO, and
`TINA E. HULSE, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 19
`Entered: February 23, 2015
`
`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,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00737
`Patent 8,050,652 B2
`____________
`
`Before BRIAN J. McNAMARA, FRANCES L. IPPOLITO, and
`TINA E. HULSE, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`IPR2014-00737
`Patent 8,050,652 B2
`
`
`I. INTRODUCTION
`On November 18, 2014, Black Hills Media, LLC’s (“Patent Owner”)
`filed a Request for Rehearing (Paper 9, “Req.”) of our Decision to Institute
`(Paper 7, “Dec.”), dated November 4, 2014, which instituted inter partes
`review of claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of
`U.S. Patent No. 8,050,652 B2 (Ex. 1001, “the ’652 patent”).
`In its Request, Patent Owner argues the Board (1) applied an
`erroneous legal standard for the construction of the term “playlist” recited in
`the challenged claims, (2) overlooked Patent Owner’s evidence on the
`ordinary and customary meaning of “playlist,” and (3) misapprehended
`Patent Owner’s argument regarding playlist 1528 disclosed in the ’652
`patent. Req. 2.
`For the reasons set forth below, the request for rehearing is denied.
`II. STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
`Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004);
`In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The request must
`identify, with specificity, all matters that the moving party believes the
`Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).
`
`
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`2
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`IPR2014-00737
`Patent 8,050,652 B2
`
`
`III. DISCUSSION
`For purposes of the Decision to Institute, we construed the term
`“playlist” as “a list of audio files.” Dec. 10–11. As we explained, the
`Specification of the ’652 patent describes a playlist as a list of audio files
`that may or may not include URLs. Id. In reaching this construction, we
`noted the Specification teaches playlist 1528 is “a list of audio files and
`associated URLs.” We further discerned URLs may not be included in a
`“playlist” where, for example, “all the songs in the playlist are already on the
`first device.” See id. (citing Ex. 1001, 28:9–43). Moreover, our decision
`referred to column 4, lines 50 through 67 of the ’652 patent where the
`Specification describes a “playlist of songs” and downloading songs in the
`form of audio files for the playlist. Id. at 11. Further, we considered the two
`different proposed constructions and supporting evidence provided by the
`Petitioner and Patent Owner for “playlist.” Id. at 10–11. Nonetheless, we
`did not adopt either proposed construction. With respect to Patent Owner’s
`proposal, we were not persuaded that the broadest reasonable construction of
`“playlist” is “a list referencing media items arranged to be played in a
`sequence.” Id; see Prelim. Resp. 26.
`Additionally, in the Decision to Institute, we provided the general
`principles governing our claim construction. Dec. 9. These general
`principles are that
`(1)
`claim terms in an unexpired patent are given their broadest
`reasonable construction in light of the specification of the
`patent in which they appear (id.);
`
`(2)
`
`claim terms are given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the
`context of the entire disclosure (id.); and
`
`
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`3
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`IPR2014-00737
`Patent 8,050,652 B2
`
`
`(3)
`
`any special definition for a claim term must be set forth with
`reasonable clarity (id.).
`
`In its Request for Rehearing, Patent Owner asserts we did not apply
`the broadest reasonable construction standard because we improperly
`focused on one aspect of playlists described in the ’652 patent. Req. 3.
`Patent Owner adds our decision did not address the full meaning of the
`“playlist” and, further, ascribes a “special definition” limiting the claim
`construction to certain aspects of the claim term. Id. at 3–4. Patent Owner
`contends the term “playlist” should be construed as “a list of media items
`arranged to be played in a sequence (i.e., as a group, without having to
`select individual songs for playback).” Id. at 4–5.
`As we wrote in the Decision to Institute, we reviewed more than one
`aspect of “playlist” described the ’652 patent. As reflected in our decision,
`we considered Patent Owner’s arguments based on the portion of the
`Specification describing audio player 1792, shuffle button 1796, and repeat
`button 1798. Dec. 10–11. We further considered several examples of
`playlists described in the ’652 patent, including at least playlist 1528 and
`others described in column 4, lines 50 through 67 and column 28, lines 9
`through 43. Id. Our Decision to Institute also did not adopt a “special
`definition.” Rather, upon review of the Specification and evidence and
`arguments provided by both parties, we explained in the Decision to Institute
`that Patent Owner’s position was not persuasive in light of the Specification.
`Id. We continue to be persuaded that, for the purposes of the Decision to
`Institute, “playlist” would have been understood as “a list of audio files.”
`Patent Owner further contends we overlooked the extrinsic evidence it
`provided on the ordinary and customary meaning of “playlist. Req. 5–10.
`
`
`
`4
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`IPR2014-00737
`Patent 8,050,652 B2
`
`Patent Owner asserts the Petition did not include any substantive analysis or
`evidence on this issue and our Decision to Institute “focused on only one
`aspect” of “playlist.” Id. at 5–6. Patent Owner maintains the testimony (Ex.
`2007) of its declarant, Mr. Ivan Zatkovich, and contemporaneous
`publications (Exs. 2008–2010) evidence the ordinary and customary
`meaning of “playlist” as “a list of media items arranged to be played in a
`sequence (i.e., as a group, without having to select individual songs for
`playback).” See id. at 5, 7–8, 10. Patent Owner also argues the testimony of
`Petitioner’s declarant, Dr. Jeffay, supports Patent Owner’s construction of
`“playlist.” Id. at 8–10.
`Again, we disagree the Decision to Institute was focused on only one
`aspect of playlist. As discussed above, we considered several examples and
`aspects of playlist described in the ’652 patent, including those portions of
`the Specification cited by the Patent Owner. Dec. 10–11 (citing Ex. 1001,
`4:50–67, 21:61–63, 24:31–43, 28:9–43). Additionally, we considered Patent
`Owner’s extrinsic evidence. Id. at 10 (citing Exs. 2007, 2008, 2010).
`Nevertheless, based on the current record, we were persuaded, and remain
`persuaded, that the Specification and claim language itself requires a broader
`construction than that espoused by Patent Owner’s arguments and extrinsic
`evidence. Accordingly, we are not persuaded that we abused our discretion
`on this basis.
`Additionally, Patent Owner asserts that the Decision to Institute
`erroneously misapprehends Patent Owner’s argument regarding playlist
`1528 because Patent Owner did not “acknowledge” the Specification
`discloses the contents of playlist 1528, but not a sequence or arrangement of
`the contents. Req. 10–11. Patent Owner contends that it did not “concede
`
`
`
`5
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`IPR2014-00737
`Patent 8,050,652 B2
`
`that playlist 1528 is not arranged to be played in a sequence. Rather, Patent
`Owner contends that its “unambiguous argument was that the passage of the
`’652 Patent relied upon by the Board in IPR2013-00594 describes only one
`aspect of the playlist 1528.” Id. at 11.
`We are not persuaded we abused our discretion on this basis. In the
`Preliminary Response, Patent Owner refers to a passage in the Specification
`as “speak[ing] to the contents of one particular playlist (i.e., playlist (1528)),
`and not to the arrangement of the contents of the playlist.” Prelim. Resp.
`26–27; Req. 11. In the Decision to Institute, we referred to Patent Owner’s
`statement as an acknowledgement that the Specification describes the
`contents of playlist 1528, but does not disclose a sequence or arrangement of
`the playlist contents. Dec. 11 (citing Prelim. Resp. 26). Regardless, we did
`not rely solely on Patent Owner’s characterization of playlist 1528 for our
`construction of “playlist.” As explained, we relied on the Specification’s
`description of playlist 1528, which does not require playlist 1528 to be
`arranged to be played in a particular manner. Dec. 11.
`Patent Owner further contends the Decision to Institute
`misapprehended Patent Owner’s phrase “played in a sequence.” Req. 13.
`Patent Owner argues the phrase “‘played in a sequence’ refers to the
`fundamental characteristic that items of a playlist are played as a group (i.e.,
`in succession one after another).” Id. However, we did not misapprehend or
`overlook this argument. We considered all of Patent Owner’s arguments
`and supporting evidence, including Patent Owner’s assertion that “for
`purposes of this proceeding, the broadest reasonable interpretation of
`‘playlist’ should include an indication that the list of media items are
`‘arranged to be played in a sequence.’” Dec. 10–11. However, ultimately,
`
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`6
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`IPR2014-00737
`Patent 8,050,652 B2
`
`we disagreed with Patent Owner’s proposal and determined, for the purpose
`of the Decision to Institute, that “a list of audio files” provides the broadest
`reasonable construction of “playlist” consistent with the Specification.
`Accordingly, we are not persuaded that we have misconstrued the
`term “playlist” as provided and used in the Decision to Institute. For the
`foregoing reasons, Patent Owner has not shown that the Board abused its
`discretion in instituting the instant proceeding on the grounds specified in
`the Decision to Institute.
`
`IV. ORDER
`Accordingly, it is hereby ORDERED that Petitioner’s request for
`rehearing is denied.
`
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`7
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`
`
`IPR2014-00737
`Patent 8,050,652 B2
`
`PETITIONER:
`
`Andrea G. Reister
`Gregory S. Discher
`Covington & Burling LLP
`areister@cov.com
`gdischer@cov.com
`
`Doris Johnson Hines
`Jonathan R.K. Stroud
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`dori.hines@finnegan.com
`jonathan.stroud@finnegan.com
`
`PATENT OWNER:
`Thomas Engellenner
`Reza Mollaaghababa
`Pepper Hamilton LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Christopher Horgan
`Concert Technology
`chris.horgan@concerttechnology.com
`
`
`
`
`
`
`
`8
`
`
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