By:
`
`
`
`
`
`
`
`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
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2014-00737
`Patent 8,050,652
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,050,652
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`IPR2014-00737
`U.S. Patent 8,050,652
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`Page
`
`Table of Authorities ................................................................................................ iii
`
`Table of Exhibits ...................................................................................................... v
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`THE PETITION FAILS TO IDENTIFY ALL REAL PARTIES IN
`INTEREST ..................................................................................................... 1
`
`III. BACKGROUND OF THE ’652 PATENT .................................................... 7
`
`A.
`
`Summary of the Claimed Subject Matter ........................................... 11
`
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ...... 13
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Legal Standard .................................................................................... 14
`
`A Person Having Ordinary Skill In The Art ...................................... 15
`
`Construction of “Playlist” .................................................................. 17
`
`1.
`
`2.
`
`Plain and Ordinary Meaning of “Playlist” in the Media
`File Sharing Arts ...................................................................... 18
`
`The ’652 Patent Uses “Playlist” Consistent with its Plain
`and Ordinary Meaning ............................................................. 21
`
`Construction of “Assigned to the Electronic Device” ....................... 28
`
`Construction of “Wherein Ones of the Plurality of Songs Are
`Not Stored On The Electronic Device” .............................................. 30
`
`V.
`
`THE PETITION DOES NOT SATISFY THE STATUTORY
`THRESHOLD FOR INSTITUTING INTER PARTES REVIEW ................ 31
`
`A.
`
`There Is No Reasonable Likelihood That White Renders
`Obvious the Challenged Claims (Ground 1) ...................................... 32
`
`1.
`
`Summary of White ................................................................... 32
`
`i
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`IPR2014-00737
`U.S. Patent 8,050,652
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`Page
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`2. White does not render obvious independent claims 1 and
`42 .............................................................................................. 37
`
`B.
`
`There Is No Reasonable Likelihood That Logan and Lipscomb
`Render Obvious The Challenged Claims (Ground 2) ........................ 46
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Logan .................................................................. 47
`
`Summary of Lipscomb ............................................................. 49
`
`Summary of Petitioner’s Arguments ....................................... 50
`
`Logan and Lipscomb do not render obvious independent
`claims 1 and 42 ........................................................................ 51
`
`VI. REDUNDANT GROUNDS PRESENTED IN THE PETITION
`SHOULD BE DISMISSED .......................................................................... 59
`
`VII. CONCLUSION ............................................................................................. 60
`
`
`
`ii
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`

`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
` 694 F.3d 1312 (Fed. Cir. 2012) ......................................................................... 58
`
`Anova Food, LLC v. Leo Sandau and William R. Kowalski,
`IPR2013-00114 (PTAB, June 25, 2013)....................................................... 16, 47
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc.,
`IPR2013-00223 (PTAB, Aug. 15, 2013) ............................................................ 56
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183 (PTAB, July 31, 2013) ............................................................. 55
`
`In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999) ...................................................... 14
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) ..................................... 14
`
`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) ........................................................ 14
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ..................................... 55, 56, 57
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00003 (PTAB, Oct. 25, 2012) .................................................... 54, 59
`
`On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH,
`386 F.3d 1133 (Fed. Cir. 2004) .......................................................................... 30
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 25
`
`RPX Corp. v. VirnetX, Inc., IPR2014-000171 (PTAB, February 20, 2014) ............. 7
`
`Superguide Corp., v. DirectTV Enters, 358 F.3d 870 (Fed. Cir. 2004) ................... 30
`
`Teleflex, Inc. v. Ficosa North America Corp.,
`299 F. 3d 1313 (Fed. Cir. 2002) ......................................................................... 26
`
`
`
`iii
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`IPR2014-00737
`U.S. Patent 8,050,652
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`Pages
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`STATUTES
`
`35 U.S.C. § 312 ................................................................................................ 1, 2, 60
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ........................................................................................................ 31
`
`35 U.S.C. § 316 ........................................................................................................ 31
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.1 ....................................................................................................... 59
`
`37 C.F.R. § 42.8 ..................................................................................................... 1, 2
`
`37 C.F.R. § 42.73 ....................................................................................................... 2
`
`37 C.F.R. § 42.100 ................................................................................................... 14
`
`37 C.F.R. § 42.107 ............................................................................................... 1, 16
`
`77 Fed. Reg. 48612 .................................................................................................... 2
`
`77 Fed. Reg. 48756 .............................................................................................. 5, 14
`
`MPEP § 2111 (9th Ed., March 2014) ................................................................ 14, 25
`
`MPEP § 2141 .......................................................................................................... 16
`
`
`
`iv
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`IPR2014-00737
`U.S. Patent 8,050,652
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`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 Juken 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
`
`v
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`

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`IPR2014-00737
`U.S. Patent 8,050,652
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`PRELIMINARY RESPONSE BY PATENT OWNER
`UNDER 37 C.F.R. § 42.107
`
`Patent Owner Black Hills Media, LLC (“Patent Owner”) submits this
`
`Preliminary Response to the Petition (Paper 1) filed by Samsung Electronics Co.
`
`Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications
`
`America, LLC (“Petitioner” or “Samsung”) seeking inter partes review of U.S.
`
`Patent No. 8,050,652 (the ’652 Patent). This filing is timely under 35 U.S.C. § 313
`
`and 37 C.F.R. § 42.107, as it is being filed within three months of the Notice of
`
`Filing Date Accorded to Petition (Paper 3), mailed May 20, 2014.
`
`I.
`
`INTRODUCTION
`
`A trial should not be instituted in this matter because the Petitioner has failed
`
`to identify all real parties in interest under 35 U.S.C. § 312(a)(2) and 37 C.F.R.
`
`§ 42.8(a)(1).
`
`The Board should also deny the Petition as none of the references relied
`
`upon gives rise to a reasonable likelihood of Samsung prevailing with respect to
`
`any challenged claim of the ’652 Patent.
`
`II. THE PETITION FAILS TO IDENTIFY ALL REAL PARTIES IN
`INTEREST
`
`Samsung’s Petition should be denied because it fails to identify all real
`
`parties in interest as required under 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b).
`
`1
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`

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`At a minimum, it appears that Google Inc. (“Google”) should have been identified
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`IPR2014-00737
`U.S. Patent 8,050,652
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`as a real party in interest in this proceeding.
`
`“A petition filed under section 311 may be considered only if . . . the petition
`
`identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Rules also
`
`require that a petitioner provide certain mandatory notices, including identifying all
`
`real parties in interest. See 37 C.F.R. § 42.8(b). This requirement is not a mere
`
`formality. Rather, a clear identification of the real party in interest is important to
`
`ensure both the proper application of the statutory estoppel provisions of 37 C.F.R.
`
`§ 42.73(d)(1) and the ability of the judges of the PTAB to recuse themselves in
`
`view of any conflict-of-interest. See Rules of Practice for Trials Before the Patent
`
`Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board
`
`Decisions, 77 Fed. Reg. 48612, 48617 (Aug. 14, 2012). A petitioner has the
`
`burden to identify all real parties in interest. Failure to do so frustrates the purpose
`
`of the proceeding.
`
`Patent Owner has recently discovered the existence of a Mobile Application
`
`Distribution Agreement (“Google-Samsung MADA,” Ex. 2001)1 between
`
`
`1The Google-Samsung MADA is a public trial exhibit used in the matter of Oracle
`
`America, Inc. v. Google Inc., Case No. CV 10‐03561 WHA (N.D. Ca.). See Ex.
`
`2
`
`

`
`Samsung and Google that includes indemnification provisions in the event of
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`IPR2014-00737
`U.S. Patent 8,050,652
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`claims of patent infringement against Samsung arising out of any claim that certain
`
`Google Applications infringe any intellectual property right. (Ex. 2001 at Sec. 11).
`
`As noted in its mandatory notices, Patent Owner has made patent
`
`infringement claims against Samsung in proceedings before the U.S. District Court
`
`for the Eastern District of Texas, in a case styled Black Hills Media, LLC v.
`
`Samsung Elecs. Co., Ltd., et al., Civil Case No. 2:13-cv-00379-JRG (E.D. Tex.),
`
`and before the International Trade Commission in Proceeding No. 337-TA-882
`
`(the “ITC Action”). (Paper 5, pp. 2-3). These proceedings concern Samsung’s
`
`Android devices that employ Google’s products and services, consistent with those
`
`covered by the Google-Samsung MADA produced in the matter of Oracle
`
`America, Inc. v. Google Inc., Case No. CV 10‐03561 WHA (N.D. Ca.).
`
`The Google-Samsung MADA explicitly states that, once notified of an
`
`indemnification claim covered by the Google-Samsung MADA, Google “will
`
`defend, or at its option settle, any third party lawsuit or proceeding brought
`
`against [Samsung]” arising out of any claim that the Google Applications infringe
`
`any patent. (Ex. 2001 at 11.1). Furthermore, under the Google-Samsung MADA,
`
`2002, Joint Submission of Corrected Exhibit List, Doc. 293 filed on 4/15/2012,
`
`referencing MADA as Ex. 2775 at p. 107 and noting no limitations on its use.
`
`3
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`

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`Google has “full control and authority over the defense.” (Ex. 2001 at 11.3).
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`IPR2014-00737
`U.S. Patent 8,050,652
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`Thus, under the Google-Samsung MADA, Google has full control of the defense
`
`and settlement of any third-party infringement action implicating Google’s
`
`products and services.
`
`Consistent with its indemnity obligations under the Google-Samsung
`
`MADA, Google filed a motion to intervene in the ITC Action one month after the
`
`ITC Action commenced. (See Ex. 2003). Google’s motion was granted by the
`
`presiding administrative law judge. (See Ex. 2004).
`
`In its motion, Google said that it has a right to intervene because Patent
`
`Owner’s complaint named certain Google and YouTube products and services as
`
`infringing patent claims: “The claim charts that accompanied the Complaint
`
`specifically identify certain proprietary Google and YouTube products and
`
`services operating on Android devices manufactured by each of the respondents
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`as allegedly infringing or allegedly providing a portion of the infringing
`
`functionality of various patent claims.” (Ex. 2003, pp. 2-3). As an example,
`
`Google’s Google Play Music applications operating on Android devices
`
`manufactured by Samsung were implicated in Patent Owner’s claim charts that
`
`accompanied the complaint in the ITC Action as allegedly providing infringing
`
`functionality of claims 1 and 42 of the ’652 Patent, which are challenged by
`
`Samsung in this proceeding. (See Ex. 2005, pp. 2, 3, 11, 15, 18, 22, 26, 27, 30, 35,
`
`4
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`

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`38, 42). See also Ex. 2006, which is a redacted version of claim charts supplied
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`IPR2014-00737
`U.S. Patent 8,050,652
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`during the ITC Action and which references Google Play Music as it relates to all
`
`claims challenged in this proceeding.
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`In support of its motion to intervene, Google further stated that (1) “Google
`
`has a compelling interest in this investigation as a result of complainant’s assertion
`
`that the alleged infringement is based, in part, on respondents’ devices and their
`
`use of proprietary Google products and services, including Google Play Music,
`
`Google Maps/Latitude and YouTube” and that (2) “Google also has a business
`
`interest in the continued importation and sale of Respondents’ accused products
`
`that utilize Google proprietary products and services. Google has invested
`
`substantial resources in developing and supporting these products and services and
`
`has a strong interest in assuring that Respondents can continue to utilize these
`
`products and services by importing their products into the United States.” (Ex.
`
`2003, pp. 5-6 (emphasis added)).
`
`Whether a non-party is a real party in interest or privy for the purposes of an
`
`inter partes review proceeding is a “highly fact-dependent question.” Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756 (August 14, 2012). Factors to
`
`consider in determining whether a party is a real party in interest may include
`
`whether a non-party exercises control over a petitioner’s participation in a
`
`proceeding. Id. at 48759. Other factors may include whether a non-party is
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`5
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`IPR2014-00737
`U.S. Patent 8,050,652
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`funding the proceeding or directing the proceeding. Id. at 48759-60. To determine
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`whether a party is a real party in interest, the USPTO applies traditional common
`
`law principles. Id.
`
`In addition to the indemnitee-indemnitor relationship between Samsung and
`
`Google and Google’s indemnification obligations under MADA, the intervention
`
`of Google in the ITC Action creates a presumption of a common-interest or joint-
`
`defense relationship between these two parties – and that this Petition was filed at
`
`the behest, control, and authority of Google.
`
`As admitted by Google in its motion to intervene, Google has “a business
`
`interest in the continued importation and sale of [Samsung’s] accused products that
`
`utilize Google’s proprietary products and services . . . and has a strong interest in
`
`assuring that [Samsung] can continue to utilize these products and services by
`
`importing their products into the United States.” (Ex. 2003, p. 6). Google’s ability
`
`in ensuring Samsung’s continued ability to utilize Google’s products and services
`
`depends, in part, on its ability to establish that the patent claims at issue in this
`
`proceeding are invalid.
`
`Besides Google’s interest in ensuring Samsung’s continued ability to utilize
`
`its products and services, Google has an additional interest in the outcome of this
`
`proceeding. For example, if the ’652 Patent’s validity is confirmed, Google could
`
`be liable for any damages imposed in the related district court litigations. Google
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`6
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`

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`has chosen not to file a petition requesting an inter partes review of the ’652
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`IPR2014-00737
`U.S. Patent 8,050,652
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`Patent, presumably for strategic reasons such as, for example, to avoid any
`
`estoppel with regard to the references cited in the present Petition and to have
`
`multiple bites at the apple. Instead, Google appears to rely on its indemnitee-
`
`customer, Samsung, to challenge the validity of the ’652 Patent and pursue their
`
`common interests in the present proceeding for them.
`
`For these reasons, the Board should dismiss this Petition on the grounds that
`
`Petitioner has failed to identify the real parties in interest. Should the Board
`
`decline to deny the Petition at this time, Patent Owner submits that discovery is
`
`warranted to determine the additional details concerning the relationship between
`
`Petitioner and Google and the extent to which Google has participated in the
`
`preparation and funding of the Petition. The Board has allowed such additional
`
`discovery when it is in the interests of justice to determine which party or parties
`
`are the real parties in interest. See, e.g., RPX Corp. v. VirnetX, Inc., IPR2014-
`
`000171 (Paper 25, February 20, 2014).
`
`III. BACKGROUND OF THE ’652 PATENT
`The ’652 Patent was filed on November 27, 2006, as U.S. Application No.
`
`11/563,232, and was 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,
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`7
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`which in part claims priority to U.S. Provisional Application No. 60/246,842, filed
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`IPR2014-00737
`U.S. Patent 8,050,652
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`on Nov. 8, 2000.
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`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). One of the
`
`more significant innovations described and claimed in the ’652 Patent is the role of
`
`the playlist in the management of audio content (as opposed to the audio content
`
`itself). 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 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).
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`8
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`A copy of the playlist can then be transmitted from the server to the device,
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`IPR2014-00737
`U.S. Patent 8,050,652
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`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).
`
`The ’652 Patent describes various computing environments that enable the
`
`network-enabled audio devices to store files, play standard audio CDs and MP3
`
`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).
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`9
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`IPR2014-00737
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`The electronic devices (e.g., device A (1108) and device B (1110)) are
`
`assigned, and can receive, playlists and playlist content over a network (e.g., the
`
`Internet or otherwise). (Ex. 1001, 2:37-39 and 22:47-48). For example, when the
`
`network is a “home network,” an electronic device within the network “does not
`
`need to connect to the Internet and can retrieve the necessary file through the
`
`network connection.” (Ex. 1001, 30:19-26). “Optionally, a Local Area Network
`
`can be configured in place of, or in addition to, the Internet connection to facilitate
`
`assignments of playlists and other features.” (Ex. 1001, 2:66-3:1).
`
`In some aspects, the ’652 Patent provides that a user can select between
`
`various modes of operation. For example, in addition to selection of the playlist
`
`mode of operation described above, the ’652 Patent additionally discloses that the
`
`network-enabled device can enable a user to select an “Internet radio” mode such
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`10
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`
`that the device receives and plays Internet radio broadcasts including, for example,
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`IPR2014-00737
`U.S. Patent 8,050,652
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`the content of “AM/FM broadcasts” streamed over the web. (See Ex. 1001, 3:10-
`
`14; 7:28-8:57; and FIG. 18A (option “1814”)).
`
` Summary of the Claimed Subject Matter
`
`A.
`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 (see 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.”). The ’652 Patent thus
`
`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). 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),
`
`the ’652 Patent also describes embodiments in which the information enabling the
`
`11
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`electronic device to obtain the song is received together with the information
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`IPR2014-00737
`U.S. Patent 8,050,652
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`identifying the songs (see, e.g., Ex. 1001, 21:62-65 and 22:48-50).
`
`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
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`device to obtain the ones of the plurality of songs from at least one remote
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`source;
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`obtain the ones of the plurality of songs from the at least one remote
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`source; and
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`play the audio content indicated by the playlist.”
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`Each of challenged claims 3, 4, 6, 7, 10, 11, and 13 depends from
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`independent claim 1 and recites additional limitations of the device of claim 1.
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`Independent claim 42 recites a method of operation for an electronic device
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`that comprises, inter alia, “enabling a user of the electronic device to select a
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`desired mode of operation from a plurality of modes of operation comprising… a
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`playlist mode of operation,” and “when the desired mode of operation is the
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`playlist mode of operation:
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`i) receiving a playlist assigned to the electronic device via a central
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`system, the playlist identifying a plurality of songs, wherein ones of the
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`plurality of songs are not stored on the electronic device;
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`ii) receiving information from the central system enabling the
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`electronic device to obtain the ones of the plurality of songs from at least
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`one remote source;
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` iii) obtaining the ones of the plurality of songs from the at least one
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`remote source; and
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`iv) playing audio content indicated by the playlist.”
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`Each of challenged claims 44, 45, 47-50, 52, and 55 depends from
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`independent claim 42 and recites additional limitations of the method of claim 42.
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`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`Each of independent claims 1 and 42 recites a method or device involving a
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`“playlist assigned to the electronic device.” As discussed in detail below, Patent
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`Owner submits that the proper construction for the term “playlist” is “a list
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`referencing media items arranged to be played in a sequence,” and the proper
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`construction for a “playlist assigned to the electronic device” is a “playlist directed
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`to the electronic device.”
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`The Patent Owner’s constructions are consistent with the understanding that
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`one of ordinary skill in the art at the time of the invention of the ’652 Patent would
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`have had in light of the plain language of the claims and the intrinsic evidence
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`provided by the specification.
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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. at 48,766. “The broadest reasonable interpretation of
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`the claims must also be consistent with the interpretation that those skilled in the
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`art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468
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`(Fed. Cir. 1999). . . . [T]he focus of the inquiry regarding the meaning of a claim
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`should be what would be reasonable from the perspective of one of ordinary skill
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`in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re
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`Buszard, 504 F.3d 1364 (Fed. Cir. 2007).” MPEP § 2111 (9th Ed., March 2014).
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`B. A Person Having Ordinary Skill In The Art
`The Petitioner alleges that a person of ordinary skill in the art would have
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`had “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 at
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`7; Ex. 1015, ¶8 (emphasis added)).
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`Patent Owner objects to this open-ended definition because it includes
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`persons who are overqualified to be considered those of “ordinary skill in the art.”
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`For example, by Petitioner’s definition, a person with a Ph.D. in electrical
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`engineering, computer engineering, or computer science would also be someone of
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`“ordinary” skill in the art. Patent Owner submits that the Petitioner’s definition
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`should be constrained to exclude those of “extraordinary” skill and proposes
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`instead that the Board adopt a close-ended definition as follows: “a Bachelor’s
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`degree in computer science or electrical engineering or its equivalent and 1-2
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`years of practical experience with media file sharing.”
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`Patent Owner’s proposed definition is supported by the declaration of Ivan
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`Zatkovich (the “Zatkovich ’594 Declaration”) submitted with the Patent Owner’s
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`Response filed on June 13, 2014 (Paper 27) as Exhibit 2011 in the inter partes
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`proceeding IPR2013-00594 of the ’652 Patent. The Zatkovich ’594 Declaration is
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`submitted herewith as Exhibit 2007.2
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`While the Petitioner and its declarant provide no rationale for the Petition’s
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`proffered definition, the Zatkovich ’594 Declaration takes into account various
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`factors to be considered in determining the hypothetical person of ordinary skill in
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`the art in accordance with MPEP §2141.03(I), 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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`2 Submission of the Zatkovich ’594 Declaration is not prohibited by 37 C.F.R.
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`§ 42.107(c), which excludes the presentation of “new testimony evidence beyond
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`that already of record . . . .” In Anova Food, LLC v. Leo Sandau and William R.
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`Kowalski (IPR2013-00114), the Board determined that a declaration previously
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`filed in district court litigation and submitted with the patent owner’s preliminary
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`response was not “new” testimonial evidence and “appropriately submitted with
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`the response.” (Paper 11, p. 3). The Board explained that the prohibition against
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`new testimony under § 42.107(c) “applies only to ‘new’ testimony that was taken
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`specifically for the purpose of the inter partes review proceeding at issue, as
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`supported by the discussion and the comments that accompanied the rule.” (Id.)
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`As the Zatkovich ’594 Declaration was not prepared for the purpose of the instant
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`inter partes proceeding, it is thus entitled to be submitted with this response.
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`technology, and the education level and professional capabilities of active workers
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`in the field to conclude that “the ordinary level of skill in the art is a Bachelor’s
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`degree in computer science or electrical engineering or its equivalent and 1-2 years
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`of experience with media file sharing.” (Ex. 2007, ¶¶26-27).
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`Should a trial be instituted, Patent Owner reserves the right to present
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`additional evidence as to the education and skill level of the hypothetical person
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`having ordinary skill in the art at the time of the invention of the ’652 Patent.
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`C. Construction of “Playlist”
`With regard to the recitation of “playlist,” the Petition merely ci