IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. To Be Assigned
`Patent No. 8,050,652
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,050,652
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
` DC: 5276905-18
`
`

`

`Docket No. 032449.0032-US08
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1)) ........................................ 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ........................................ 1
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .................................................. 1
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ................................ 2
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ........................................... 2
`
`II.
`
`FEES (37 C.F.R. § 42.103) .................................................................................... 2
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ..................................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) ......................................... 3
`
`Citation of Prior Art ................................................................................... 3
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2)) .......................................................................................................... 5
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) and Effective
`Filing Date .................................................................................................. 5
`
`1.
`
`2.
`
`Claim Construction ......................................................................... 5
`
`Effective Filing Date ....................................................................... 6
`
`Person of Ordinary Skill in the Art ............................................................ 7
`
`Unpatentability of the Construed Claims (37 C.F.R.
`§ 42.104(b)(4)) ........................................................................................... 7
`
`G.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ..................................... 7
`
`IV. SUMMARY OF THE ‘652 PATENT ................................................................. 8
`
`A.
`
`B.
`
`Overview of the ‘652 Patent ...................................................................... 8
`
`Prosecution History Summary of the ‘652 Patent .................................. 10
`
`- i -
`
`

`

`Docket No. 032449.0032-US08
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ‘652 PATENT ............................................................................................ 11
`
`A.
`
`Prior Art .................................................................................................... 12
`
`1.
`
`2.
`
`3.
`
`U.S. Patent No. 7,187,947 to White et al. (Ex. 1003) ................. 15
`
`U.S. Patent No. 6,199,076 to Logan et al. (Ex. 1004) ................. 19
`
`U.S. Patent No. 7,020,704 to Lipscomb et al. (Ex. 1005) ........... 23
`
`Ground I: White Renders Obvious Each Of Claims 1, 3-4, 6-7,
`10, 13, 42, 44-45, 47-48, 50, 52 and 55 Under 35 U.S.C. § 103 ........... 29
`
`Ground II: The Combination of Logan and Lipscomb Renders
`Each of Claims 1, 3-4, 6-7, 10-11, 13, 42, 44-45, 47-50, 52 and
`55 Obvious Under 35 U.S.C. § 103 ......................................................... 41
`
`B.
`
`C.
`
`VI. CONCLUSION ................................................................................................... 59
`
`- ii -
`
`

`

`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`Docket No. 032449.0032-US08
`
`LIST OF EXHIBITS
`
`
`Description
`U.S. Patent No. 8,050,652
`File History for U.S. Patent No. 8,050,652
`U.S. Patent No. 7,187,947 to White et al. (“White”).
`U.S. Patent No. 6,199,076 to Logan et al. (“Logan”)
`U.S. Patent No. 7,020,704 to Lipscomb et al. (“Lipscomb”)
`U.S. Provisional Patent Application No. 60/157,736 (“the ‘736
`application” or “the ‘736 app.”)
`U.S. Provisional Patent Application No. 60/176,829 (“the ‘829
`application” or “the ‘829 app.”)
`U.S. Provisional Patent Application No. 60/176,830 (“the ‘830
`application” or “the ‘830 app.”)
`U.S. Provisional Patent Application No. 60/176,833 (“the ‘833
`application” or “the ‘833 app.”)
`U.S. Provisional Patent Application No. 60/177,063 (“the ‘063
`application” or the “063 app.”)
`U.S. Provisional Patent Application No. 60/177,783 (“the ‘783
`application” or “the ‘783 app.”)
`U.S. Provisional Patent Application No. 60/177,867 (“the ‘867
`application” or “the ‘867 app.”)
`U.S. Provisional Patent Application No. 60/177,884 (“the ‘884
`application” or “the ‘884 app.”)
`Decision on Institution of Inter Partes Review Pursuant to 37
`C.F.R. § 42.108 in Yamaha Corp. of America v. Black Hills
`Media, LLC, Case IPR2013-00594 (March 20, 2014)
`Declaration of Kevin Jeffay, Ph.D.
`Curriculum vitae of Kevin Jeffay, Ph.D.
`U.S. Patent No. 5,168,481 to Culbertson et al. (“Culbertson”)
`U.S. Patent No. 5,616,876 to Cluts (“Cluts”)
`Nielsen, J., Desurvire, H., Kerr, R., Rosenberg, D., Salomon, G.,
`Molich, R., and Stewart, T., “Comparative Design Review: An
`Exercise in Parallel Design,” Proc. ACM INTERCHI’93 Conf.
`(Apr. 24-29, 1993) (“Nielsen”)
`Hacker, S. “MP3: The Definitive Guide by Scot Hacker” March,
`2000 (Springer) (“Hacker”)
`
`- iii -
`
`

`

`Docket No. 032449.0032-US08
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest for this Petition for Inter Partes Review (“IPR”)
`
`are Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; and
`
`Samsung Telecommunications America, LLC.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`U.S. Patent No. 8,050,652 (“the ‘652 Patent”) is currently the subject of
`
`inter partes review proceeding IPR2013-00594 that was filed on September 18,
`
`2013, by Yamaha Corporation of America (“the ‘594 IPR Petitioner”). Yamaha
`
`Corp. of America v. Black Hills Media, LLC, Case IPR2013-00594 (instituted
`
`March 20, 2014). After a preliminary response filed on December 26, 2013, by
`
`Black Hills Media, LLC, the owner of the ‘652 Patent, the Board on March 20,
`
`2014, instituted inter partes review of claims of the ‘652 Patent. Decision on
`
`Institution of Inter Partes Review Pursuant to 37 C.F.R. § 42.108 in Yamaha Corp.
`
`of America v. Black Hills Media, LLC, Case IPR2013-00594 (March 20, 2014).
`
`
`
`The ‘652 Patent is currently the subject of litigation against multiple
`
`defendants in the Eastern District of Texas, the District of Delaware and the
`
`Central District of California, including the action captioned Black Hills Media,
`
`LLC v. Samsung Elecs. Co., Ltd. et al. (Civil Action No. 2-13-cv-00379 (E.D.
`
`Tex.); the “Samsung Litigation”). Other defendants in the litigations include LG
`
`Electronics, Inc.; LG Electronics U.S.A, Inc.; LG Electronics Mobilecomm U.S.A.,
`
`- 1 -
`
`

`

`Docket No. 032449.0032-US08
`
`Inc.; Toshiba Corp.; Toshiba America Information Systems, Inc.; Panasonic Corp.;
`
`Panasonic Corp. of North America; Yamaha Corporation of America; Sonos, Inc.;
`
`Pioneer Corp.; and Pioneer Electronics (USA) Inc. The ‘652 Patent is also the
`
`subject of proceedings before the U.S. International Trade Commission, captioned
`
`In re Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players,
`
`Home Theater Systems, Tablets and Mobile Phones, Components Thereof and
`
`Associated Software, Inv. No. 337-TA-882.
`
`C. Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`Lead Counsel
`Back-up Counsel
`
`Andrea G. Reister (Reg. No. 36,253)
`
`Gregory S. Discher (Reg. No. 42,488)
`
`areister@cov.com
`
`gdischer@cov.com
`
`Postal and Hand-Delivery Address:
`
`Postal and Hand-Delivery Address:
`
`Covington & Burling LLP
`
`Covington & Burling LLP
`
`1201 Pennsylvania Avenue, NW
`
`1201 Pennsylvania Avenue, NW
`
`Washington, DC 20004
`
`Washington, DC 20004
`
`T: (202)662-5141; F: (202)778-5141
`
`T: (202)662-5485; F: (202)778-5485
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`- 2 -
`
`

`

`Docket No. 032449.0032-US08
`
`The undersigned authorizes (a) the Office to charge $23,800 ($9,000 request
`
`fee; $14,000 post-institution fee and $800 post-institution excess claims fees) to
`
`Deposit Account No. 50-0740 for the fees set forth in 37 C.F.R. § 42.15(a) for this
`
`Petition; and (b) payment for any additional fees that might be due in connection
`
`with this Petition to be charged to Deposit Account 50-0740.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘652 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ‘652 Patent on the grounds
`
`identified in the present petition.
`
`B. Citation of Prior Art
`Exhibit Reference
`
`Filing Date Availability
`
`as Prior Art
`
`Ex. 1003 U.S. Patent No. 7,187,947 to White et
`
`March 28,
`
`35 U.S.C.
`
`al. (“White”)
`
`2000
`
`§ 102(e)
`
`Ex. 1004 U.S. Patent No. 6,199,076 to Logan et
`
`October 2,
`
`35 U.S.C.
`
`al. (“Logan”)
`
`1996
`
`§ 102(e)
`
`Ex. 1005 U.S. Patent No. 7,020,704 to
`
`October 5,
`
`35 U.S.C.
`
`- 3 -
`
`

`

`Docket No. 032449.0032-US08
`
`Lipscomb et al. (“Lipscomb”)
`
`20001
`
`§ 102(e)
`
`Ex. 1006 U.S. Provisional Patent Application
`
`October 5,
`
`35 U.S.C.
`
`No. 60/157,736 (“the ‘736 app.”)
`
`1999
`
`§ 102(e)
`
`Ex. 1007 U.S. Provisional Patent Application
`
`January 19,
`
`35 U.S.C.
`
`No. 60/176,829 (“the ‘829 app.”)
`
`2000
`
`§ 102(e)
`
`Ex. 1008 U.S. Provisional Patent Application
`
`January 19,
`
`35 U.S.C.
`
`No. 60/176,830 (“the ‘830 app.”)
`
`2000
`
`§ 102(e)
`
`Ex. 1009 U.S. Provisional Patent Application
`
`January 19,
`
`35 U.S.C.
`
`No. 60/176,833 (“the ‘833 app.”)
`
`2000
`
`§ 102(e)
`
`Ex. 1010 U.S. Provisional Patent Application
`
`January 19,
`
`35 U.S.C.
`
`No. 60/177,063 (“the ‘063 app.”)
`Ex. 1011 U.S. Provisional Patent Application
`
`2000
`
`§ 102(e)
`
`January 24,
`
`35 U.S.C.
`
`No. 60/177,783 (“the ‘783 app.”)
`
`2000
`
`§ 102(e)
`
`Ex. 1012 U.S. Provisional Patent Application
`
`January 24,
`
`35 U.S.C.
`
`No. 60/177,867 (“the ‘867 app.”)
`
`2000
`
`§ 102(e)
`
`Ex. 1013 U.S. Provisional Patent Application
`
`January 24,
`
`35 U.S.C.
`
`No. 60/177,884 (“the ‘884 app.”)
`
`2000
`
`§ 102(e)
`
`
`
`
`1 As discussed below in Section V.A.3 below, the priority date of this patent for
`
`Section 102(e) purposes is not later than January 24, 2000.
`
`- 4 -
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`

`

`Docket No. 032449.0032-US08
`
`C. Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2))
`
`
`
`The relief requested by Petitioner is that claims 1, 3-4, 6-7, 10-11, 13, 42,
`
`44-45, 47-50, 52 and 55 of the ‘652 Patent be found unpatentable and cancelled
`
`from the ‘652 Patent on the following grounds:
`
`Ground Claims
`
`Basis
`
`I
`
`II
`
`
`
`1, 3-4, 6-7, 10, 13, 42, 44-45,
`
`Obvious under 35 U.S.C. § 103 in
`
`47-48, 50, 52 and 55
`
`view of White
`
`1, 3-4, 6-7, 10-11, 13, 42, 44-
`
`Obvious under 35 U.S.C. § 103 in
`
`45, 47-50, 52 and 55
`
`view of Logan and Lipscomb
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3)) and Effective Filing
`Date
`1.
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`Claim Construction
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`Each of independent claims 1 and 42 recites “playlist,” and respectively
`
`recites a “playlist assigned to the electronic device”. In IPR2013-00594 (Ex.
`
`1014), the Board construed “playlist” and a “playlist assigned to the electronic
`
`device” to respectively mean “a list of audio files or URLs of where the audio files
`
`were retrieved from” and “a list of audio files or URLs of where the audio files
`
`were retrieved from directed to a particular device selected by a user.” Ex. 1014,
`
`- 5 -
`
`

`

`Docket No. 032449.0032-US08
`
`pp. 11-13. Petitioner submits that, for the reasons provided by the Board in
`
`IPR2013-00594, these constructions should apply to the meaning of these terms in
`
`the present proceeding as well.
`
`Claims 1 and 42 recite “wherein ones of the plurality of songs are not stored
`
`on the electronic device.” In IPR2013-00594, the Board construed this phrase to
`
`mean “wherein at least one of the plurality of songs is not stored on the electronic
`
`device.” Ex. 1014, pp. 13-14. Petitioner submits that, for the reasons provided by
`
`the Board in IPR2013-00594, this construction should apply to the meaning of this
`
`term in the present proceeding as well.
`
`Effective Filing Date
`
`2.
`The ‘652 Patent resulted from a chain of applications beginning in 1998 with
`
`U.S. Provisional Application No. 60/072,127 (filed on January 22, 1998) (“the
`
`‘127 app.”), and U.S. Patent Application No. 09/096,703 (filed on June 12, 1998)
`
`(“the ‘703 app.”). The ‘652 Patent also claims priority to U.S. Provisional
`
`Application No. 60/246,842 (filed on November 8, 2000) (“the ‘842 app.”) and
`
`U.S. Patent Application No. 09/805,470 (filed on March 12, 2001) (“the ‘470
`
`app.”). The ‘652 Patent issued from U.S. Patent Application No. 11/563,232 (filed
`
`on November 27, 2006), which is a continuation of the ‘470 application and claims
`
`priority to the ‘470 and ‘703 applications, as well as the ‘127 and ‘842 applications.
`
`The ‘652 Patent is not, however, entitled to claim priority to each of these
`
`- 6 -
`
`

`

`Docket No. 032449.0032-US08
`
`applications. Each of the independent claims of the ‘652 Patent recites a “playlist
`
`identifying a plurality of songs.” Playlists identifying a plurality of songs were not
`
`disclosed in the chain of applications leading to the ‘652 Patent until the ‘842
`
`application, which was filed on November 8, 2000. For that reason, the earliest
`
`possible priority date of the claims of the ‘652 Patent is November 8, 2000.
`
`Person of Ordinary Skill in the Art
`
`E.
`A person of ordinary skill in the art of the ‘652 Patent at the time of the
`
`
`
`alleged invention (“POSA”) would typically have had at least a B.S. degree in
`
`electrical engineering, computer engineering or computer
`
`science and
`
`approximately two years of professional experience with computer networking and
`
`multimedia technologies, or the equivalent. Jeffay Dec. ¶ 4.
`
`F. Unpatentability of the Construed Claims (37 C.F.R.
`§ 42.104(b)(4))
`
`
`
`Section V, below, provides an explanation of how claims 1, 3-4, 6-7, 10-11,
`
`13, 42, 44-45, 47-50, 52 and 55 of the ‘652 Patent are unpatentable under the
`
`statutory ground(s) identified above.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`G.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`
`
`challenge, and the relevance of the evidence to the challenge raised (including
`
`identifying specific portions of the evidence that support the challenge) are
`
`provided below in the form of explanatory text and claim charts. An Exhibit List
`
`- 7 -
`
`

`

`Docket No. 032449.0032-US08
`
`with the exhibit numbers and a brief description of each exhibit is set forth above.
`
`IV. SUMMARY OF THE ‘652 PATENT
`A. Overview of the ‘652 Patent
`The ‘652 Patent discloses a network-enabled audio device or player for
`
`listening to a variety of audio sources. Ex. 1001, 2:16-19. In an Internet radio
`
`mode, the player receives and plays a broadcast from an Internet radio station. Id.
`
`10:3-12, 10:49-57. The player can include Internet Personal Audio Network
`
`(“IPAN”) client software, and a PC client that is in communication with the
`
`network-enabled audio device may be used to add songs or URLs corresponding to
`
`songs to a playlist on the network-enabled audio device. Id. 16:29-37; 21:40-65;
`
`22:9-29 and Figs. 15, 19B. Further, the user can access IPAN software running on
`
`a server to assign playlists to the user’s different network-enabled audio devices.
`
`Id. 22:36-48.
`
`Additionally, the IPAN software can identify and check whether certain
`
`songs on the playlist of the network-enabled audio device are missing on that
`
`device. Ex. 1001, 28:20-30. If the IPAN software determines that another device
`
`accessible to the user has one or more of the missing songs, then the software
`
`provides the URLs where the songs are located to the network-enabled audio
`
`device. Id. 28:31-34. The network-enabled audio device downloads these missing
`
`songs from the URLs provided by the server. Id. 28:35-38.
`
`- 8 -
`
`

`

`Docket No. 032449.0032-US08
`
`
`
`
`
`Figure 15 of the ‘652 Patent, provided above, is a block diagram of the
`
`configuration between network-enabled audio devices and a stereo website. Ex.
`
`1001, 6:4-6. Figure 15 illustrates two network-enabled audio devices (1510 and
`
`1520) connected to IPAN server site 1104. Id. 21:40-43. Storage spaces (1512
`
`and 1522) of network-enabled audio devices (1510 and 1520) are used to store
`
`IPAN software 1526, playlist (1528 or 1530), and associated URLs and songs
`
`within the playlist. Id. 21:43-57. Server site 1104 includes IPAN software 1433
`
`and playlists (1528 and 1530). Id. 21:52-57.
`
`
`
`Figure 19B of the ‘652 Patent, provided below, shows the process for
`
`assigning a playlist to a device. Ex. 1001, 6:60-61. At step 1906, a user assigns a
`
`playlist to a first device 1510. Id. 28:14-16. The system determines whether all of
`
`the songs on the playlist are stored on the hard drive of the first device 1510. Id.
`
`28:20-22. If any (or all) of the songs are missing from the first device 1510, IPAN
`
`- 9 -
`
`

`

`Docket No. 032449.0032-US08
`
`
`
`1433 forms a list of the remaining songs and checks the hard drive of second
`
`device 1520 to determine if any of the remaining songs may be found on that
`
`device. Id. 28:24-30. If any of the remaining songs are found on second device
`
`1520, then IPAN 1433 will provide first device 1510 with URLs for those songs,
`
`and first device 1510 will attempt to download the songs from second device 1520.
`
`Id. 28:30-43.
`
`Prosecution History Summary of the ‘652 Patent
`
`B.
`The ‘652 Patent was filed on November 27, 2006, as application number
`
`11/563,232, and resulted from a chain of applications as discussed above.
`
`- 10 -
`
`

`

`Docket No. 032449.0032-US08
`
`Petitioner summarizes here the actions most relevant to the grounds of
`
`unpatentability set forth in the present Petition.
`
`In the Office Action dated May 23, 2011, all of the claims were
`
`provisionally rejected for double patenting. Ex. 1002, pp. 221-27. Claims 1-5, 7-9,
`
`11-16, and 18-20 were also rejected under 35 U.S.C. § 102(e) as being anticipated
`
`by U.S. Patent No. 5,949,492 to Mankovitz. Id. Claims 6, 10, and 17 were
`
`objected to, with the Examiner indicating that they contained allowable subject
`
`matter. Id. Each of these claims included limitations regarding receiving a playlist
`
`assigned to an electronic device from a central system, with the playlist identifying
`
`a plurality of songs, wherein ones of the songs are not stored on the electronic
`
`device. Id. pp. 62-67. The Applicants amended the independent claims by adding
`
`the limitations of claims 6, 10, and 17, and also filed a terminal disclaimer. Id. pp.
`
`274-90. The application was then allowed. Id. 298-304.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONER WILL PREVAIL WITH RESPECT TO AT
`LEAST ONE CLAIM OF THE ‘652 PATENT
`
`The subject matter of claims 1, 3-4, 6-7, 10-11, 13, 42, 44-45, 47-50, 52 and
`
`55 of the ‘652 Patent is disclosed and taught in the prior art as explained below.
`
`As set forth in § V.A.-V.C., the references and combinations utilized in Ground I
`
`and Ground II render obvious each of claims 1, 3-4, 6-7, 10-11, 13, 42, 44-45, 47-
`
`50, 52 and 55 pursuant to 35 U.S.C. § 103, and provide a reasonable likelihood that
`
`- 11 -
`
`

`

`Docket No. 032449.0032-US08
`
`the Petitioner will prevail on at least one claim. 35 U.S.C. § 314(a).
`
`Prior Art
`
`A.
`Paragraphs 18 to 25 of the Jeffay Declaration, Ex. 1015, describe the state of
`
`the art regarding online and mobile audio services in the 1999-2000 time frame.
`
`The concept of using a “playlist” to represent a list of songs or audio files so that
`
`users could select, play, and manipulate various songs was well known in the art by
`
`the mid to late 1990s. In the early 1990s, companies such as Microsoft, Apple, and
`
`Borland, among others, were designing graphical user interfaces (GUIs) to allow
`
`users to select and play music transmitted, for example, from a central database in a
`
`network, and consumer products and applications with playlist functionality had
`
`become common by the year 2000.
`
`For example, Ex. 1017 (“Culbertson”) shows that in the context of radio
`
`broadcast stations, it was known to compile a scheduled playlist from various music
`
`selections and pre-recorded materials having known durations or runtimes. See, e.g.,
`
`Ex. 1017, 1:15-18. In one embodiment, Culbertson describes using compact disc
`
`players to “sequentially play a predetermined list of musical selections and
`
`commercial or informational messages.” See, e.g., id. 1:50-51. Culbertson also
`
`taught using a display device to display “a portion of the information contained in
`
`the playlist to allow an operator to obtain information about the music . . . being
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`played as well as those selections that will be played subsequently.” See, e.g., id.
`
`Docket No. 032449.0032-US08
`
`2:51-55.
`
`Ex. 1018, U.S. Patent No. 5,616,876 (“Cluts”) describes a system
`
`implemented in an interactive network that would allow consumers to select
`
`“playlists” in the form of a predetermined collection of songs, and thereafter review
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`the contents of the playlists, select songs in the playlist, build and create playlists,
`
`and display general information associated with the currently playing album or
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`song. Ex. 1018, 4:38-54, 11:40-43, 12:55-65, 13:24-27, 13:50-62, 15:14-25.
`
`The implementation and use of playlists through a GUI on a PC to allow
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`users to select and play music transmitted from a database over a network was also
`
`well known before 1999. See, e.g., Ex. 1019 (“Nielsen”), pp. 414-417. Among
`
`other things, in the designs presented by Nielsen a user would be able to select
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`songs, make multiple selections of songs for a particular time interval, (e.g., 45
`
`minutes of music), select random songs in a selected genre (by singer, musician, or
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`style of music), and manipulate the selected songs to pause, fast forward, skip, and
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`rewind. See, e.g., id.
`
`According to Nielsen, the Home Fiber Optic Music System included
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`various features, such as providing a “player view” that mimics a CD player and a
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`“song list view.” See, e.g., Ex. 1019, 416. Music could be played from two types
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`Docket No. 032449.0032-US08
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`of objects: a personal CD object and a Catalog object; and the catalog object
`
`supported “query” and “history lists” in the song list view. See, e.g., id.
`
`Similarly, generally available materials taught the typical user how to use
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`commonly available tools to compile playlists through a GUI on a PC and play music
`
`transmitted over a network. See, e.g., Ex. 1020 (“Hacker”). Hacker explains,
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`“Behind the scenes, a playlist is just a plan text file naming the full paths to the
`
`selected songs. . . . Playlists for players that can handle streaming or broadcast MP3
`
`can also store URL’s to your favorite broadcast sites.” Id. 56.
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`Thus, as of 1999-2000, the concept of implementing playlists on a network-
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`enabled audio device to select, manage, and manipulate audio content such as songs
`
`was well known in the art.
`
`As Professor Jeffay explains, software to listen to Internet radio broadcasts
`
`has existed ever since Internet radio broadcast began. Jeffay Dec. ¶ 25. By the late
`
`1990s, companies existed that marketed software designed to enable real-time
`
`streaming of at least audio. See, e.g., Ex. 1020 at 13-14. Thus, by 2000, installing
`
`freely available software on one’s laptop or PC enabled the device to receive
`
`various kinds of audio content, including Internet radio broadcasts. Jeffay Dec.
`
`¶ 25. Accordingly, as made clear by the above discussion of the state of the art, and
`
`the discussion of the prior art below, by November 2000, the purported inventions
`
`of the ’652 Patent were well known.
`
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`

`Docket No. 032449.0032-US08
`
`U.S. Patent No. 7,187,947 to White et al. (Ex. 1003)
`
`1.
`White was filed in the U.S. on March 28, 2000, and issued on March 6, 2007.
`
`It therefore qualifies as prior art to the ‘652 Patent under 35 U.S.C. § 102(e).
`
`White was cited during prosecution of the ‘652 Patent, but was not used by the
`
`Examiner in any rejections.
`
`White is directed to a system and method for communicating selected
`
`information to an electronic device. Ex. 1003, Abstract. Selected information
`
`includes “audio information such as songs, on-line radio stations, on-line
`
`broadcasts, streaming audio, or other selectable information.” Id. 3:59-61. White
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`discloses “allow[ing] a radio listener to create a personal playlist and to listen to
`
`this playlist in a wireless atmosphere while enjoying CD quality sound.” Id. 2:7-10.
`
`White’s Figure 4 is reproduced below:
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`
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`- 15 -
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`

`Docket No. 032449.0032-US08
`
`Figure 4 shows graphical user interface 400 for displaying selectable audio
`
`information. Ex. 1003, 11:6-15. Interface 400 may be displayed as a web page. Id.
`
`This interface allows users to view radio dial 412 or “a current playlist selected by
`
`the user or the status of [a] wirelessly communicated playlist.” Id. 11:26-33.
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`Program interface 413 is used to specify items to be displayed by radio dial 412. Id.
`
`12:29-30. These items may include Internet and broadcast radio stations or
`
`playlists. Id. 12:30-36.
`
`Figure 8 of White is reproduced below:
`
`Figure 8 depicts a method for providing selected audio information to an
`
`electronic device. Ex. 1003, 3:40-42. At step 800, the user accesses a web page
`
`such as the home page shown in Figure 4. Id. 15:64-67. Then at step 801, the user
`
`
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`- 16 -
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`

`

`Docket No. 032449.0032-US08
`
`selects “a single song, a plurality [of] different songs, an entire album, a broadcast
`
`station, streaming audio, etc. or other selectable audio information.” Id. 16:3-6. A
`
`playlist is created at step 802 reflecting the user’s audio selections. Id. 16:6-9. In
`
`certain embodiments, the playlist may be composed of songs selected by a friend
`
`or group of friends. Id. 17:56-18:19. A list of information is compiled at step 803
`
`including information associated with the playlist, such as network or URL
`
`locations for the selected audio information. Id. 16:12-14. At step 804, the user
`
`then selects a device such as “a[n] automobile audio system, a home stereo system,
`
`a home computer, an electronic device coupled to a home network or computer
`
`system, etc.[,] or other locations or devices operable to receive the selected audio
`
`information.” Id. 16:24-28. The playlist and associated
`
`information are
`
`communicated to the electronic device via a wireless (step 806) or wired (step 813)
`
`connection. Id. 16:35-45. Once the information is communicated to the electronic
`
`device, the user may execute the playlist (steps 812, 814). Id. 17:7-18.
`
`White’s electronic device “may be integrated into an audio component such
`
`as a radio receiver” or “coupled to a home audio system, a portable radio system or
`
`other system thereby providing a versatile electronic device operable to receive
`
`wirelessly communicated selected audio information.” Ex. 1003, 9:53-57; 10:38-42.
`
`In certain embodiments, White’s electronic device may be coupled to an optical
`
`disc player such as a CD player or “storage medium 303 such as a high speed
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`

`Docket No. 032449.0032-US08
`
`buffer, programmable memory, or other devices operable to store information.” Id.
`
`18:46-50, 8:46-52, 8:67-9:5.
`
`White thus discloses at least the following elements of claims 1 and 42 of
`
`the ‘652 Patent: an Internet radio mode of operation (id. 3:59-61 and 2:7-10); a
`
`playlist mode of operation (id. Fig. 8 elements 813, 807, 808, 16:3-4); assigning a
`
`playlist to a player device, where some of the songs are not stored on the player
`
`device (id. 15:62-16:34, Fig. 4, 11:66-12:7, Fig. 8, 17:32-35); a control system for
`
`carrying out the functionality of its player device (id. 8:52-62, 12:38-54, Figs. 3-4);
`
`and receiving information from a central system enabling the player to obtain
`
`missing songs from a remote source (id. 16:11-19).
`
`White further discloses enabling playback from an optical disc, relating to
`
`claims 3 and 44 of the ‘652 Patent (id. 18:46-53); enabling playback from a data
`
`storage device, relating to claims 4 and 45 of the ‘652 Patent (id. 13:18-26, 8:46-
`
`52, 8:67-9:5); displaying a list of Internet radio broadcast stations, relating to
`
`claims 6 and 47 of the ‘652 Patent (id. 12:30-37, Fig. 4, element 412); a wireless
`
`transceiver that is coupled to a control system, relating to claims 7 and 48 of the
`
`‘652 Patent (id. 9:6-14); at least one speaker that is part of White’s system, relating
`
`to claims 10 and 52 of the ‘652 Patent (id. claim 17); and receiving and displaying
`
`a recommended song, relating to claims 13 and 55 of the ‘652 Patent (id. 17:56-
`
`18:19, 15:62-16:6).
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`

`

`Docket No. 032449.0032-US08
`
`U.S. Patent No. 6,199,076 to Logan et al. (Ex. 1004)
`
`2.
`Logan was filed on October 2, 1996, and issued on March 6, 2001. It
`
`therefore qualifies as prior art to the ‘652 Patent under 35 U.S.C. § 102(e). A
`
`family member of Logan, U.S. published patent application No. US 2004/0255340,
`
`was cited during prosecution of the ‘652 Patent, but was not used by the Examiner
`
`as the basis for any rejections.
`
`Logan discloses an information distribution system that allows player
`
`devices to play back audio program segments, such as music. Ex. 1004, 2:6-43,
`
`5:60-65. The audio player plays back the audio program segment files in
`
`accordance with a schedule file, which is created in the first instance by a host
`
`server, which develops and periodically transmits the schedule file to the player.
`
`Id. 2:47-50; 7:1-13. The schedule file consists of a sequence of program segment
`
`identification numbers, which determines the sequence of events that occur during
`
`playback. Id. 7:1-13, 12:3-15, 17:59-61 and Fig. 4. The schedule file is thus a
`
`“playlist.”
`
`Figure 1 of Logan, which presents schematic diagrams of host server 101
`
`and player 103, is provided below.
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`- 19 -
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`

`

`Docket No. 032449.0032-US08
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`
`
`Logan discloses that the player, after obtaining the schedule file, issues
`
`download requests to the host server for program segments which are not already
`
`in the player’s local storage. Ex. 1004, 7:4-13. In embodiments, the player only
`
`requests transfer of program segments not already present in local storage. Id.
`
`19:4-8. The download operation preferably occurs at a time established by the
`
`player. Id. 8:24-29. In the download operation, the player identifies specific
`
`program segments that it wants to download by, for example, designating
`
`filenames or program_id values. Id. 8:20-38.
`
`In particular, the selections made by and uploaded from the subscriber take
`
`the form of a file that designates the specific program segments for download to
`
`the subscriber’s player. Ex. 1004, 7:4-13. This file includes a URL field that
`
`specifies the location of the file containing the specific program segment at an FTP
`
`server of the host server, or potentially at any other accessible location on the
`
`Internet. Id. 17:24-67, 18:60-65 and Fig. 1. The player issues FTP download
`
`- 20 -
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`

`

`Docket No. 032449.0032-US08
`
`requests from the host server by specifying the URLs of the needed files. Id.
`
`19:12-15. Either or both of the host server and another location on the Internet that
`
`contains a desired specific program segment are thus “remote sources.”
`
`The URL specifying the location of the specific program segment for
`
`