Trials@uspto.gov
`571-272-7822
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`Paper 7
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`Entered: November 4, 2014
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`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`
`
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`
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`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 7
`
`Entered: November 4, 2014
`
`
`
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
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`IPR2014-00737
`Patent 8,050,652 B2
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`
`I. INTRODUCTION
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`Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.;
`
`and Samsung Telecommunications America, LLC (collectively “Petitioner”)
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`filed a Petition (“Pet.”) on May 8, 2014, requesting an inter partes review of
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`claims 1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45, 47–50, 52, and 55 (“the
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`challenged claims”) of U.S. Patent No. 8,050,652 B2 (“the ’652 patent”).
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`Paper 1. Patent Owner Black Hills Media, LLC filed a Preliminary
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`Response (“Prelim. Resp.”) to the Petition. Paper 6.
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may be authorized only if “the information presented in
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`the petition . . . and any [preliminary] response . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
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`[one] of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Pursuant to 35 U.S.C. § 314, we conclude there is a reasonable
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`likelihood that Petitioner would prevail with respect to claims 1, 3, 4, 6, 7,
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`10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of the ’652 patent. We deny the
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`Petition as to claims 11 and 49.
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`A. Related Proceedings
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`We instituted an inter partes review of claims 1–4, 6–8, 10, 11, 13,
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`21, 22, 24–29, 31, 32, 34, 42–45, 47–50, 52, and 53 of the ’652 patent in
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`IPR2013-00594, Yamaha Corp. of America v. Black Hills Media, LLC,
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`which is currently pending. Ex. 1014. Additionally, the ’652 patent is
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`involved in district court proceedings in the U.S. District Court of the
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`Eastern District of Texas, the District of Delaware, and the Central District
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`of California, including the action captioned Black Hills Media, LLC v.
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`Samsung Electronics Co., No. 2:13-cv-00379 (E.D. Tex.) (“Texas Case”).
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`2
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`IPR2014-00737
`Patent 8,050,652 B2
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`Pet. 1. The ’652 patent was also the subject of a proceeding before the U.S.
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`International Trade Commission (“ITC”), In re Certain Digital Media
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`Devices, Including Televisions, Blu-Ray Disc Players, Home Theater
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`Systems, Tablets and Mobile Phones, Components Thereof and Associated
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`Software, Inv. No. 337-TA-882 (“the ITC Investigation”). Id. at 2. In that
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`proceeding, the ITC issued its initial determination on August 7, 2014. Ex.
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`2011.
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`Related U.S. Patent No. 8,045,952 B2 (“the ’952 patent”) is the
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`subject of inter partes review IPR2013-00593 instituted on March 20, 2014,
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`Yamaha Corp. v. Black Hills Media, LLC, Case IPR2013-00593 (PTAB
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`Mar. 20, 2014) (Paper 17), and a petition requesting inter partes review in
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`IPR2014-00740 for the same parties in the instant proceeding.
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`B. Real Party-in-Interest
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`Patent Owner requests that the Petition be dismissed for
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`noncompliance with 35 U.S.C. § 312(a) and 37 C.F.R. § 42.8(b) because
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`Petitioner fails to identify Google, Inc. (“Google”) as a real party-in-interest
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`in the Petition. Prelim. Resp. 1–7. Patent Owner asserts that a recently
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`discovered agreement, titled Mobile Application Distribution Agreement
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`(“MADA”), requires Google to “defend, or at its option settle, any third
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`party lawsuit or proceeding brought against [Petitioner]” and arising out of
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`any claim that Google products and services used in Petitioner’s products
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`infringe any patent. Id. at 3. Patent Owner states that “under the MADA,
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`Google has full control of the defense and settlement of any third-party
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`infringement action implicating Google’s products and services, including
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`any proceeding, such as this Petition.” Id. at 4. Although the Petition is not
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`an infringement action, Patent Owner appears to argue that the Petition arose
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`3
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`IPR2014-00737
`Patent 8,050,652 B2
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`from the infringement claims in the Texas Case and the ITC Investigation
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`discussed above. Id. at 45. Patent Owner further asserts that Google
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`sought to intervene in the ITC Investigation and that Google’s motion to
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`intervene asserted “a compelling interest” in the investigation. Id. at 5.
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`On this record, we are not persuaded Google is a real party-in-interest
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`in this matter. A determination as to whether a non-party to an inter partes
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`review is a real party-in-interest is a “highly fact-dependent question,” based
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`on whether the non-party “exercised or could have exercised control over a
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`party’s participation in a proceeding” and the degree to which a non-party
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`funds, directs, and controls the proceeding. Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Thus, the issue is
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`whether there is a non-party “at whose behest the petition has been filed” or
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`a relationship “sufficient to justify applying conventional principles of
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`estoppel and preclusion.” Id.
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`The MADA and the Google motion to intervene in the ITC
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`Investigation, are not persuasive evidence that Google is in position to
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`exercise control over Petitioner’s involvement in this proceeding. Google’s
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`indemnification of Petitioner for infringement claims brought by third
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`parties, such as that in the MADA, does not, by itself, mean that Google may
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`exercise control over Petitioner’s actions in this proceeding. In addition,
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`Google’s expression of an interest in the ITC proceeding does not mean it
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`has the same interests as those of Petitioner. We, therefore, do not deny the
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`Petition for failure to comply with 35 U.S.C. § 312(a) and 37 C.F.R.
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`§ 42.8(b)(1).
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`The Patent Owner Preliminary Response includes an informal request
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`for discovery concerning Google’s role in this proceeding. Prelim. Resp. 7.
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`4
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`IPR2014-00737
`Patent 8,050,652 B2
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`The Preliminary Response is not a vehicle for requesting additional
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`discovery. 37 C.F. R. § 42.107; see also, 37 C.F.R. § 42.51. In IPR 2014-
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`00717 (Paper 17) and IPR 2014-00735 (Paper 17), we granted in part Patent
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`Owner’s authorized motion for additional discovery in those proceedings.
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`C. The ’652 Patent
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`The ’652 patent is directed to methods and apparatuses that allow
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`users to receive and play audio from various sources and to assign playlists
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`over a network to a network-enabled audio device. Ex. 1001, Abstract. The
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`Specification lists several problems with prior art systems such as the cost
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`and technical complexity associated with listening to streaming audio over
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`the Internet and playing songs on a PC. Id. at 1:52–2:12. The invention of
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`the ’652 patent was intended to alleviate such issues “by providing a
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`network-enabled audio device for listening to a variety of audio sources with
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`substantially equal convenience.” Id. at 2:15–19.
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`In Internet radio mode, the device described in the ’652 patent
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`receives and plays a broadcast from an Internet radio station. Ex. 1001,
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`10:3–12, 10:49–57. The device also may work in conjunction with a
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`computer. Id. at 16:3235. In that embodiment, software may be used to
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`assign a playlist of songs to a network-enabled audio device. Id. at 3236.
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`This embodiment is illustrated in Figures 15 and 19B of the ’652 patent.
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`IPR2014-00737
`Patent 8,050,652 B2
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`Figure 15 is reproduced below:
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`
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`
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`Figure 15 is a block diagram illustrating the configuration between network-
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`enabled audio devices and a stereo web site. Ex. 1001, 6:4–6. Figure 15
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`illustrates two network-enabled audio devices (1510 and 1520) connected to
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`Internet Personal Audio Network (“IPAN”) server site 1104. Id. at 21:40–
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`43. Storage spaces (1512 and 1522) of network-enabled audio devices
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`(1510 and 1520) are used to store IPAN software 1526, playlist (1528 or
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`1530), and associated URLs and songs within the playlist. Id. at 21:43–57.
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`Additionally, server site 1104 includes IPAN software 1433 and
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`playlists (1528 and 1530). Ex. 1001, 21:52–57. The user accesses server
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`site IPAN software 1433 through a network connection to server site IPAN
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`1104, and from server site IPAN software 1433, the user can assign playlists
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`to different devices such as network-enabled audio devices 1510, 1520, or
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`client PC 1508. Id. at 22:39–41. The user composes the playlists from
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`server site IPAN software 1433, but typically only stores the title of the song
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`and the URL from which the song came. Id. at 22:41–44.
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`6
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`IPR2014-00737
`Patent 8,050,652 B2
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`Figure 19B of the ’652 Patent is reproduced below:
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`
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`Figure 19B shows the process for assigning a playlist to a device. Ex. 1001,
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`6:60–61. At step 1906, a user assigns a playlist to first device 1510. Id. at
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`28:14–16. The system then determines whether all of the songs on the
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`playlist are stored on the hard drive of first device 1510. Id. at 28:20–22. If
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`any of the songs are missing from first device 1510, IPAN 1433 forms a list
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`IPR2014-00737
`Patent 8,050,652 B2
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`of remaining songs and checks the hard drive of second device 1520 to
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`determine whether any of the remaining songs may be found on that device.
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`Id. at 28:24–30. If any of the songs are found on second device 1520, then
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`IPAN 1433 will provide first device 1510 with URLs for those songs, and
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`first device 1510 will attempt to download the songs from second device
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`1520. Id. at 28:30–40.
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`D. Illustrative Claim
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`Of the challenged claims, claims 1 and 42 are independent. Claim 1
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`reproduced below is illustrative of the subject matter of the ’652 patent:
`
`1. An electronic device comprising:
`a) a network interface enabling the electronic device to receive an
`Internet radio broadcast and being further adapted to
`communicatively couple the electronic device to a central system;
`b) a system enabling playback of audio content from a playlist
`assigned to the electronic device via the central system; and
`c) a control system associated with the network interface and the
`system enabling playback of the audio content indicated by the
`playlist, and adapted to:
`i) enable a user of the electronic device to select a desired mode
`of operation from a plurality of modes of operation comprising
`an Internet radio mode of operation and a playlist mode of
`operation;
`ii) receive and play the Internet radio broadcast when the
`desired mode of operation is the Internet radio mode of
`operation; and
`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;
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`8
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`IPR2014-00737
`Patent 8,050,652 B2
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`obtain the ones of the plurality of songs from the at least
`one remote source; and
`play the audio content indicated by the playlist.
`
`Ex. 1001, 34:635.
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`E. The Asserted Grounds
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`Petitioner asserts that the challenged claims are unpatentable over the
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`following grounds.
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`Reference(s)
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`Basis
`
`Claims Challenged
`
`White1
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`§ 103
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`Logan2 and Lipscomb3 § 103
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`
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`1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48,
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`50, 52, and 55
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`1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45,
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`47–50, 52, and 55
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`A. Claim Construction
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`II. ANALYSIS
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`In an inter partes review, claim terms in an unexpired patent are given
`
`their “broadest reasonable construction in light of the specification of the
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`patent in which [they] appear[].” See 37 C.F.R. § 42.100(b); see also Office
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`Patent Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the “broadest
`
`reasonable construction” standard, 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. See In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Philllips v. AWH Corp., 415
`
`
`1 U.S. Patent No. 7,187,947 B1, issued Mar. 6, 2007 (Ex. 1003, “White”).
`2 U.S. Patent No. 6,199,076 B1, issued Mar. 6, 2001 (Ex. 1004, “Logan”).
`3 U.S. Patent No. 7,020,704 B1, issued Mar. 28, 2006 (Ex. 1005,
`“Lipscomb”).
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`
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`9
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`IPR2014-00737
`Patent 8,050,652 B2
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`F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). Any special definition for a
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`claim term must be set forth with “reasonable clarity, deliberateness, and
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Petitioner and Patent Owner propose constructions for the claim terms
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`“playlist,” “playlist assigned to the electronic device,” and “wherein ones of
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`the plurality of songs are not stored on the electronic device.” Pet. 5–6;
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`Prelim. Resp. 17–31.
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`1. playlist (claims 1 and 42)
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`Petitioner submits that the “broadest reasonable construction” of
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`“playlist” is “a list of audio files or URLs of where the audio files were
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`retrieved from.” Pet. 5. Patent Owner proposes “a list referencing media
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`items arranged to be played in a sequence.” Prelim. Resp. 19 (emphasis and
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`citation omitted). Patent Owner adds that contemporaneous publications
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`indicate one of ordinary skill in the art would understand the term “list”
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`refers to a list of songs and the term “play” means the items are “arranged to
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`be played in a sequence.” Id. at 20 (citing Exs. 2008 and 2010). Patent
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`Owner adds its proposal is consistent with the Specification of the ’652
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`patent, and further relies on the testimony of Mr. Ivan Zatkovich (Ex. 2007)
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`for support.4 Prelim. Resp. 21–28.
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`Based on the current record, we are not persuaded by Patent Owner’s
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`argument that the “broadest reasonable construction” of “playlist” requires
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`arrangement of items “to be played in a sequence.” Specifically, Patent
`
`4 In IPR2013-00594, the Zatkovich declaration was filed as Exhibit 2011.
`Patent Owner asserts this evidence complies with 37 C.F.R. § 42.107(c) and
`does not constitute new testimony evidence in a preliminary response
`because the testimony was already of record in IPR2013-00594. Prelim.
`Resp. 19 n.4.
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`10
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`IPR2014-00737
`Patent 8,050,652 B2
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`Owner relies on a portion of the Specification that discusses audio player
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`window 1792, which includes shuffle button 1796 and repeat button 1798.
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`Prelim. Resp. 27 (citing Ex. 1001, 24:31–43). The buttons may be used to
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`vary the order of songs played and play repeatedly the songs indicated by the
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`playlist. Ex. 1001, 24:31–43. Nonetheless, the Specification describes
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`“playlist 1528” as “a list of audio files and associated URL’s of where the
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`audio files were retrieved from.” Id. at 21:62–65. We are not persuaded the
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`disclosed audio player window 1792 narrows the Specification’s description
`
`of playlist 1528. Indeed, as Patent Owner acknowledged, the Specification’s
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`description of playlist 1528 does not require a sequence or arrangement of
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`playlist contents. See Prelim. Resp. 26 (“This particular passage, however,
`
`speaks to the contents of one particular playlist (i.e., playlist (1528)), and not
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`to the arrangement of the contents of the playlist.”). Thus, we construe
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`“playlist” as not requiring items arranged to be played in a sequence.
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`Moreover, for the purposes of this decision, we construe “playlist” to mean
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`“a list of audio files.” This construction is consistent with the Specification,
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`which describes a playlist as a list of songs that may or may not include
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`URLs. Ex. 1001, 4:50–67, 28:9–43. Any other aspects of “playlist” need
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`not be construed expressly for purposes of this decision.
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`2. “wherein ones of the plurality of songs are not stored on the
`electronic device” (claims 1 and 42)
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`Patent Owner and Petitioner agree that the “broadest reasonable
`
`construction” of “wherein ones of the plurality of songs are not stored on the
`
`electronic device” is “wherein at least one of the plurality of songs is not
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`stored on the electronic device.” Pet. 6; Prelim. Resp. 30–31. Additionally,
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`the parties’ construction was adopted previously by the Board in IPR2013-
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`11
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`IPR2014-00737
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`00594. Ex. 1014, 14. Based on the current record, we agree with the
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`parties’ proposal and adopt this construction for the purposes of this
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`decision. Thus, the “broadest reasonable construction” of the claim phrase
`
`“wherein ones of the plurality of songs are not stored on the electronic
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`device” is “wherein at least one of the plurality of songs is not stored on the
`
`electronic device.”
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`3. Remaining Terms
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`We determine that, for purposes of this decision, none of the other
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`terms in the challenged claims requires express construction at this time and
`
`should be given their ordinary and customary meaning.
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`B. Claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 –
`Obviousness over White (Ex. 1003)
`
`We have considered the arguments and evidence presented, and are
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`persuaded that there is a reasonable likelihood that Petitioner would prevail
`
`on its assertion that claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and
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`55 are unpatentable over White.
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`1. Summary of White (Ex. 1003)
`
`White is directed to “a system and method for communicating
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`selected information to an electronic device.” Ex. 1003, Abstract. “[A] user
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`may interact with the Internet to select information, such as audio
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`information, and wirelessly communicate the selected information to an
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`electronic device.” Id. at 3:52–55. Selected information includes “audio
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`information such a[s] songs, on-line radio stations, on-line broadcasts,
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`streaming audio, or other selectable information.” Id. at 3:59–61. White
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`also discloses “allow[ing] a radio listener to create a personal playlist and to
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`listen to this playlist in a wireless atmosphere while enjoying CD quality
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`sound.” Id. at 2:7–10.
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`White’s Figure 4 is reproduced below:
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`
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`
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`Figure 4 shows Graphical User Interface (GUI) 400 for displaying selectable
`
`audio information. Ex. 1003, 11:6–15. “The GUI may be operable with a
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`computer system, cellular device, [Personal Digital Assistant (PDA)], or
`
`other electronic devices or systems operable to display the GUI . . .” Id. at
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`11:8–10. 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. at 11:26–33.
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`Programming interface 413 is used to specify items to be displayed by radio
`
`dial 412. Id. at 12:29–30. These items may include Internet and broadcast
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`radio stations or playlists. Id. at 12:30–36. Radio dial 412 may also be
`
`displayed as a separate user interface on an electronic device such as on a
`
`PDA, cellular phones, etc., having a display that graphically presents radio
`
`dial 412 to a user. Id. at 12:38–54.
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`13
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`IPR2014-00737
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`
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`White’s Figure 8 is reproduced below:
`
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`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
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`page such as the home page shown in Figure 4. Id. at 15:64–67. Then at
`
`step 801, the user selects “a single song, a plurality [of] different songs, an
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`entire album, a broadcast station, streaming audio, etc. or other selectable
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`audio information.” Id. at 16:3–6. A playlist is created at step 802 reflecting
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`the user’s audio selections. Id. at 16:6–9. In certain embodiments, the
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`playlist may be composed of songs selected by a friend or group of friends.
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`Id. at 17:56–18:19. A list of information is compiled at step 803 including
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`information associated with the playlist, such as network or URL locations
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`for the selected audio information. Id. at 16:1214. At step 804, the user
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`then selects a device such as “a[n] automobile audio system, a home stereo
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`system, a home computer, an electronic device coupled to a home network
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`or computer system, etc.[,] or other locations or devices operable to receive
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`the selected audio information.” Id. at 16:24–28. The playlist and
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`associated information are communicated to the electronic device via a
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`wired or wireless connection. Id. at 16:35–45. Once the information is
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`communicated to the electronic device, the user may execute the playlist. Id.
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`at 17:7–18.
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`2. Analysis
`
`Petitioner contends that White discloses all the limitations of claims 1,
`
`3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55. Pet. 29–41 (claim
`
`chart). Below we discuss independent claim 1, which is illustrative of
`
`claims 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55.
`
`Claim 1 recites an electronic device that includes “a network interface
`
`enabling the electronic device to receive an Internet radio broadcast and
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`being further adapted to communicatively couple the electronic device to a
`
`central system” and “a system enabling playback of audio content from a
`
`playlist assigned to the electronic device via the central system.”
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`Petitioner asserts White’s electronic device 300 meets these
`
`limitations because electronic device 300 includes a communication module
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`(e.g., a transceiver) and “a user interface operable to communicate with an
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`Internet website operable to display selectable audio information.” Pet. 30
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`(citing Ex. 1003, 8:46–62, 10:20–26) (emphasis omitted). Petitioner adds
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`White’s “Internet website” is a central system that “may be configured . . .
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`[to display] selected audio information, Internet broadcast selections,
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`streaming audio selections, etc.” Id. Petitioner further asserts that electronic
`
`device 300 is able to playback audio content from a playlist assigned to the
`
`device. Id. (citing Ex. 1003, 9:15–57, 10:2042, Figs. 4 and 8). Based on
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`the current record, Petitioner’s arguments are persuasive.
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`15
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`IPR2014-00737
`Patent 8,050,652 B2
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`Claim 1 also recites “a control system associated with the network
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`interface and the system enabling playback of the audio content indicated by
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`the playlist.” Petitioner asserts White’s processor 302 discloses the recited
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`“control system” because processor 302 is operably associated with
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`communication module 301 of electronic device 300, and processes
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`wirelessly communicated information, which includes MP3 files that are
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`played by electronic device 300. Pet. 31 (citations omitted). On the current
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`record, Petitioner’s arguments are persuasive.
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`Claim 1 further requires the control system be adapted to “enable a
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`user of the electronic device to select a desired mode of operation from a
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`plurality of modes of operation comprising an Internet radio mode of
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`operation and a playlist mode of operation” and “receive and play the
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`Internet radio broadcast when the desired mode of operation is the Internet
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`radio mode of operation.”
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`Petitioner asserts that White teaches the Internet radio mode because
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`“a user may select an on-line broadcast or radio station as all or a part of the
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`selected audio information.” Pet. 31 (citing Ex. 1003, 17:26–31). Petitioner
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`refers to radio dial 412 (Pet. 32), shown in Figure 4, which White describes
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`as including preset stations such as user selected playlists, internet broadcast
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`stations, on-line radio station, and conventional radio stations (Ex. 1003,
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`12:29–33). For a playlist mode of operation, Petitioner refers to step 802,
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`shown in Figure 8, at which a playlist may be created that represents the
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`user’s selected audio, and step 803 where information associated with the
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`playlist is obtained. Pet. 3132 (citing Ex. 1003, 16:6–19). Based on the
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`current record, we are persuaded White teaches these limitations.
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`16
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`IPR2014-00737
`Patent 8,050,652 B2
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`In the playlist mode of operation, claim 1 further requires that the
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`control system is adapted to
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`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; [and]
`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.
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`Petitioner asserts White teaches a playlist created from user selected audio
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`information that is transmitted by a web site to an electronic device selected
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`by the user. Pet. 32–33 (citing Ex. 1003, 16:7–9, Fig. 8). Petitioner also
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`points to column 16 and lines 3–4, which indicates that a user may select a
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`single song or plurality of different songs. Id. In addition, Petitioner asserts
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`that audio information for the songs “may be obtained from many different
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`sources such as URLs, network addresses, hard drives, databases comprised
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`of audio information, etc.” Id. (quoting Ex. 1003, 16:15–19).
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`In response, Patent Owner asserts “[n]o electronic device of White
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`that plays a song receives information from a central system enabling the
`
`electronic device to obtain a song.” Prelim. Resp. 38 (emphasis omitted).
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`Specifically, Patent Owner asserts White does not teach or suggest “that
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`URLs or any other information enabling an electronic device of White to
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`obtain the songs are received by the electronic device.” Prelim. Resp. 39–40
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`(citation omitted). Patent Owner adds that White’s server obtains and
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`maintains URLs on the server and transmits the audio content (not the
`
`URLs) to the playback device. Id. at 41. Additionally, Patent Owner asserts
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`no electronic device of White receives a playlist because White’s server
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`transmits audio content and not the playlist. Id. at 42–45.
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`17
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`We are not persuaded by Patent Owner’s arguments. Figure 8 shows
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`at step 803 that White’s server “[o]btain[s] information associated with
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`playlist.” Subsequently, the server may format this information for
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`wireless communication (step 805) and wirelessly communicate this
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`information to a selected electronic device (step 807). Id. at 16:52–54.
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`Alternatively, White’s server may transmit “playlist data” to the user via
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`wire line at step 813. Id. at Fig. 8. On this record, we are not persuaded by
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`Patent Owner that White’s server only transmits actual audio content to the
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`exclusion of a playlist. Thus, Petitioner has shown sufficiently that White
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`discloses these limitations.
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`Claim 1 further requires that the control system is adapted to “obtain
`
`the ones of the plurality of songs from the at least one remote source” and
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`“play the audio content indicated by the playlist.” Petitioner asserts steps
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`807 and 814 (“[e]xecute playlist”) satisfy these limitations. Pet. 33. We are
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`persuaded by Petitioner’s assertions.
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`Petitioner has demonstrated a reasonable likelihood that it would
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`prevail in its assertion that claim 1 would have been rendered obvious by
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`White. Additionally, Petitioner provides detailed explanations of how each
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`limitation of claims 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 is
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`taught or suggested by White. Pet. 33–41. On the current record, we are
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`persuaded Petitioner’s interpretation of White’s disclosure is reasonable.
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`Accordingly, we are persuaded that there is a reasonable likelihood that
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`Petitioner would prevail in showing that claims 3, 4, 6, 7, 10, 13, 42, 44, 45,
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`47, 48, 50, 52, and 55 also would been have been rendered obvious by
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`White.
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`
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`18
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`C. Claims 1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45, 47–50, 52, and 55 –
`Obviousness over Logan (Ex. 1004) and Lipscomb (Ex. 1005)
`
`Petitioner also asserts that claims 1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45,
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`47–50, 52, and 55 would have been obvious over Logan and Lipscomb. Pet.
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`41–59. For the reasons discussed below, we are not persuaded that there is a
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`reasonable likelihood Petitioner would prevail on this ground.
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`1. Summary of Logan (Ex. 1004)
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`Logan discloses an information distribution system in which a host
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`system organizes and transmits program segments to client subscriber
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`locations. Ex. 1004, Abstract.
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`Logan’s Figure 1 is reproduced below.
`
`
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`Figure 1 depicts a block schematic diagram of an electronic program and
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`advertising distribution system of the invention. Ex. 1004, 3:6567. Figure
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`1 depicts host computer 101 connected to audio player device 103 through
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`internet 123. Ex. 1004, 4:28–31. Audio player device 103 may be
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`implemented by a laptop or desktop personal computer including a processor
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`(e.g., CPU 105). Id. at 4:33–35. Host server 101 stores and maintains a
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`plurality of data files including program data library 130 having compressed
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`
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`19
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`IPR2014-00737
`Patent 8,050,652 B2
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`audio program segments 131. Id. at 5:53–56. The compressed audio
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`segments include audio voice and music files. Id. at 5:60–61. Host server
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`101 periodically transmits download compilation file 145 upon receiving a
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`request from audio player device 103. Id. at 6:51–53. Compilation file 145
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`is placed in a predetermined FTP download file directory and at a time
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`determined by audio player device 103, a connection is established and
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`download compilation file 145 is transferred to program data store 107 in
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`audio device player 103. Id. at 6:51–59. Compilation file 145 includes a
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`session schedule file with a recommended order for playing program
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`segments. Id. at 7:5–9. The schedule file contains program identifiers of the
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`program segments. Id. at 7:5–10.
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`Generally, user’s usage data stored in store 109 is uploaded prior to
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`the download of file 145 to allow host server 101 to identify program
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`segments desired by the user, which are appended to file 145. Ex. 1004,
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`7:14–24. Once the user has downloaded file 145, the user may alter the
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`program selections and sequence established as a default. Id. at 8:45–58.
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`Based on these selections, a selection file is produced for the user. Id. at
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`8:54–57. Program segment identification numbers are used to compile the
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`selections file. Id. at 12:6–10. The audio device player obtains information
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`from the selections file, which identifies the individual program segments to
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`be fetched from mass storage and played for the user. Id. at 12:10–13.
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`2. Summary of Lipscomb (Ex. 1005)
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`Lipscomb discloses a system for distributing digital media assets from
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`a variety of sources to a variety of player devices through a portal.
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`Ex. 1005, 2:9–13, Fig. 1. A portal is a “computer server or group of servers
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`that functions to allow for the storage, stream and download of media assets
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`
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`20
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`IPR2014-00737
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`to a media player.” Id. at 3:17–19. The digital media assets distributed by
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`Lipscomb’s system include audio such as music. Id. at 3:35–36. For
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`example, the portal may provide connections to streaming Internet radio
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`providers. Id. at 3:19–21. Additionally, a user can edit the list of streaming
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`radio channels or files on the media player device. Id. at 8:41–45.
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`3. Analysis
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`Petitioner asserts a person of ordinary skill in the art would have
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`modified the player device of Logan by adding Lipscomb’s (1) Internet radio
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`capability; (2) optical disk playback capability; (3) requesting, obtaining and
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`presenting to the user supplemental information relating to a song; (4)
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`receiving and displaying a recommended song; and (5) wireless remote
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`control for navigating a playlist. Pet. 43. Further, Petitioner asserts that
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`“[t]he substantial overlap in functionality and intended use of the devices of
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`these references would motivate a POSA to combine useful features
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`disclosed in Lipscomb with the useful features disclosed in Logan to obtain
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`an improved device.”
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