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 REQUEST FOR REHEARING
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`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 REQUEST FOR REHEARING
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`Page
`
`Table of Authorities .................................................................................................. ii
`
`Table of Exhibits ...................................................................................................... iii
`
`INTRODUCTION .......................................................................................... 1
`I.
`LEGAL STANDARDS .................................................................................. 1
`II.
`III. ARGUMENT .................................................................................................. 2
`Because Patentee Did Not Act As Its Own Lexicographer
`A.
`“Playlist” Should Be Construed According To Its Ordinary And
`Customary Meaning ............................................................................. 3
`The Board Overlooked Substantial Evidence Of Plain And
`Ordinary Meaning Of “Playlist” .......................................................... 5
`Patent Owner Did Not Acknowledge That Playlist 1528 Is Not
`Arranged To Be Played In A Sequence ............................................. 10
`IV. CONCLUSION ............................................................................................. 15
`
`B.
`
`C.
`
`
`
`i
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`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`
`CASES
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................... 4
`
`Page(s)
`
`Endo Pharmaceutical, Inc. v. Depomed, Inc.,
`IPR2014-00656 (Paper 12, September 29, 2014) ................................................ 4
`
`Gose v. United States Postal Service, 451 F.3d 831 (Fed. Cir. 2006) .................. 2, 5
`
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ............................................................ 4
`
`O'Keefe v. U.S. Postal Service, 318 F.3d 1310 (Fed. Cir. 2002) .......................... 2, 5
`
`Teleflex, Inc. v. Ficosa North America Corp., 299 F. 3d 1313
`(Fed. Cir. 2002) ................................................................................................... 11
`
`Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362 (Fed. Cir. 2012) ........ 4
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00152 (Paper 8, Aug. 19, 2013) ............................................................ 4
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 7
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`37 C.F.R. § 42.71(c) ................................................................................................... 1
`
`
`
`
`
`ii
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`
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`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`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
`
`iii
`
`2001
`
`2002
`
`2003
`
`2004
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`2005
`
`2006
`
`2007
`
`2008
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`2009
`
`2010
`
`2011
`
`2012
`
`
`
`PATENT OWNER REQUEST FOR REHEARING
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`Pursuant to 37 C.F.R. § 42.71(d), Black Hills Media, LLC (“Patent Owner”)
`
`hereby submits this Request for Rehearing in response to the Decision, Institution
`
`of Inter Partes Review of U.S. Patent No. 8,050,652 (Paper No. 7, “Decision”).
`
`I.
`
`INTRODUCTION
`
`In the Decision, the Board granted review of claims 1, 3, 4, 6, 7, 10, 13, 42,
`
`44, 45, 47, 48, 50 ,52, and 55 of U.S. Patent No. 8,050,652 (the ’652 Patent) as
`
`being obvious over U.S. Patent No. 7,187,947 of White et al. (Ex. 1003, “White”)
`
`in light of the Decision’s construction of the claim limitation “playlist.”
`
`The Board construed the term “playlist” to mean “a list of audio files.”
`
`Paper 6 at 11. It is respectfully submitted that the Board reached an erroneous
`
`conclusion of law and overlooked the substantial evidence of record as to the
`
`ordinary and customary meaning of the term “playlist.” As a result, the Board
`
`issued a construction that is broader than the ordinary and customary meaning.
`
`Patent Owner respectfully requests that the Board reconsider its decision
`
`with regard to claim construction.
`
`II. LEGAL STANDARDS
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” “An abuse of discretion
`
`occurs where the decision is based on an erroneous interpretation of the law, on
`
`1
`
`
`
`factual findings that are not supported by substantial evidence, or represents an
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
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`unreasonable judgment in weighing relevant factors.” Gose v. United States Postal
`
`Service, 451 F.3d 831, 836 (Fed. Cir. 2006) (internal quotations omitted); see also
`
`O'Keefe v. U.S. Postal Service, 318 F.3d 1310, 1314 (Fed. Cir. 2002) (“The Board
`
`necessarily abuses its discretion when it rests its decision on factual findings
`
`unsupported by substantial evidence.”) (internal quotations omitted).
`
`III. ARGUMENT
`Patent Owner respectfully submits that the Board applied an erroneous legal
`
`standard as to claim construction and overlooked substantial evidence of record as
`
`to the ordinary and customary meaning of the term “playlist” to enlarge the scope
`
`of the term beyond the ordinary and customary meaning. The Board improperly
`
`focused on the ’652 Patent’s description of one aspect of “playlist 1528” as
`
`providing a comprehensive definition of the term “playlist,” while substantially
`
`ignoring the extensive evidence proffered by Patent Owner as to the “ordinary and
`
`customary” meaning of the term to a person having ordinary skill in the art at the
`
`time of the invention. Moreover, the Board misapprehended Patent Owner’s
`
`arguments and improperly relied upon Patent Owner’s purported
`
`“acknowledgement” that the’652 Patent describes an embodiment in which the
`
`playlist does not require that the items are arranged to be played in a sequence.
`
`2
`
`
`
`A. Because Patentee Did Not Act As Its Own Lexicographer
`“Playlist” Should Be Construed According To Its Ordinary
`And Customary Meaning
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`Though the Decision indicated that “[u]nder the broadest reasonable
`
`construction standard, claim terms are given their ordinary and customary meaning
`
`in light of the specification in which they appear,” Paper 7 at 9, this was not the
`
`standard applied by the Board in interpreting the meaning of the term “playlist.”
`
`Despite Patent Owner’s arguments asserting that the plain and ordinary
`
`meaning should control (Paper 6 at pp. 17-28), the Board did not scrutinize the
`
`ordinary and customary meaning of the term as required under the applicable claim
`
`construction standard. Rather, the Board improperly focused on only one aspect of
`
`the playlists described in the ’652 Patent to provide a definition of the term.
`
`Indeed, the Board erroneously concluded that, other than construing the term to
`
`mean “a list of audio files” that “may or may not include URLs,” it was not
`
`required to address the full scope of the meaning of the term to a person having
`
`ordinary skill in the art: “[a]ny other aspects of ‘playlist’ need not be construed
`
`expressly for purposes of this decision.” Paper 7 at 11.
`
`Absent a “special definition” provided by a patentee, limiting claim
`
`construction analysis to only certain “aspects” of a claim term described in the
`
`specification is erroneous as a matter of law. Indeed, the Board has previously
`
`held that “[t]here is a ‘heavy presumption’ that a claim term carries its ordinary
`
`3
`
`
`
`and customary meaning.” Universal Remote Control, Inc. v. Universal
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`Electronics, Inc., IPR2013-00152 (Paper 8, Aug. 19, 2013) (quoting CCS Fitness,
`
`Inc. v. Brunswick Corp., 288 F.3d 1359, 1366. (Fed. Cir. 2002)). “[T]here are only
`
`two exceptions to this general rule: 1) when a patentee sets out a definition and acts
`
`as his own lexicographer, or 2) when the patentee disavows the full scope of a
`
`claim term either in the specification or during prosecution.” Thorner v. Sony
`
`Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Moreover,
`
`“[a]ny special definitions for claim terms must be set forth with reasonable clarity,
`
`deliberateness, and precision.” Endo Pharmaceutical, Inc. v. Depomed, Inc.,
`
`IPR2014-00656 (Paper 12 at 6, September 29, 2014) (citing In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994)).
`
`There is no indication in the Decision that the Board determined that the
`
`cited passage of the ’652 Patent defined the term “playlist” with sufficient “clarity,
`
`deliberateness, and precision” to overcome the heavy presumption that this term
`
`receive its ordinary and customary meaning. As such, the Board’s determination
`
`that its construction of “playlist” is “consistent with” certain aspects of the
`
`specification and that “[a]ny other aspects of ‘playlist’ need not be construed
`
`expressly for purposes of this decision” is based on an erroneous legal standard.
`
`Rather, Patent Owner respectfully submits that the term “playlist” should be
`
`construed according to its ordinary and customary meaning to mean a list of media
`
`4
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`
`
`items arranged to be played in a sequence (i.e., as a group, without having to
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`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`select individual songs for playback), as supported by the substantial weight of the
`
`evidence of record.
`
`B.
`
`The Board Overlooked Substantial Evidence Of Plain And
`Ordinary Meaning Of “Playlist”
`
`“An abuse of discretion occurs where the decision is based on . . . factual
`
`findings that are not supported by substantial evidence . . . .” Gose, 451 F.3d at
`
`836 (internal quotations omitted). See also O'Keefe, 318 F.3d at 1314.
`
`In this proceeding, the Board erred in concluding that “[b]ased on the
`
`current record, we are not persuaded by Patent Owner’s argument that the
`
`‘broadest reasonable construction’ of ‘playlist’ requires arrangement of items ‘to
`
`be played in a sequence.’” Paper 6 at 10 (emphasis added). Patent Owner did not
`
`rely on attorney argument alone, but instead submitted expert testimony and
`
`contemporaneous publications that evidence the ordinary and customary meaning
`
`of the term “playlist” to a person having ordinary skill in the art. Accordingly,
`
`Patent Owner respectfully requests rehearing of the construction of “playlist”
`
`adopted in the Decision at least because the construction is contrary to the
`
`extensive evidence proffered by the Patent Owner.
`
`Moreover, the Board’s construction of the term “playlist” is unsupported by
`
`any substantial evidence as to the “ordinary and customary” meaning of the term to
`
`a person having ordinary skill in the art. Indeed, the Board did not scrutinize the
`
`5
`
`
`
`ordinary and customary meaning and instead focused on only one aspect of the
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`IPR2014-00737
`U.S. Patent 8,050,652
`
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`term as used in the ’652 Patent to provide an allegedly comprehensive definition of
`
`the term “playlist.” See supra III(A) and infra III(C). Petitioner provided no
`
`evidence as to the ordinary and customary meaning of the term “playlist.” Simply,
`
`Patent Owner is the only party that has produced any substantial evidence as to the
`
`ordinary and customary meaning of “playlist.”
`
`As stated in Patent Owner’s Preliminary Response (see Paper 6 at pp. 17-
`
`18), beyond the correction to the previous preliminary decision’s choice of verb
`
`tense, neither the Petition nor the Petitioner’s declarant provides any substantive
`
`analysis or evidence as to the ordinary and customary meaning of the term
`
`“playlist” to a person having ordinary skill in the art, let alone confirm or deny one
`
`whether Petitioner or Petitioner’s declarant otherwise believes that the preliminary
`
`construction in IPR2013-00594 is correct. See Paper 6 at 17-18 (“Tellingly, the
`
`Petitioner’s declarant avoids confirming his agreement with the Board’s
`
`preliminary construction in IPR2013-00594, and also does not provide any analysis
`
`as to how a person of ordinary skill in the art would understand the term ‘playlist’
`
`based on the remainder of the specification of the ’652 Patent.”); see also Ex. 1015
`
`at ¶¶31-32. Rather, Petitioner’s proffered construction of the term “playlist” was
`
`based upon the preliminary findings by the Board in IPR2013-00594. Paper 1 at 6
`
`(“Petitioner submits that, for the reasons provided by the Board in IPR2013-00594,
`
`6
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`
`
`these constructions should apply to the meaning of these terms in the current
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
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`Petition, as well including URLs of where the audio files can be retrieved from
`
`within the scope of the type of items in a ‘playlist.’” (emphasis original)). 1
`
`Moreover, the preliminary construction of “playlist” in IPR2013-00594 was
`
`made without the benefit of any testimonial evidence presented on behalf of the
`
`Patent Owner. However, in the present proceeding, Patent Owner’s Preliminary
`
`Response and the exhibits cited therein provide substantial evidence on this issue.
`
`See Paper 6, pp. 18-28, the Zatkovich Declaration (Ex. 2007, see e.g., ¶¶ 73-78),
`
`the TerraTec M3PO High Quality Audio Decoder Manual dated May 18, 2000
`
`(Ex. 2008), the SIREN™ Jukebox operator’s manual published in 2000 (Ex. 2009),
`
`and the Microsoft Windows Media™ Player 7 Handbook, published October 4,
`
`2000 (Ex. 2010), which all support the conclusion that a person of ordinary skill in
`
`the art at the time of the invention would have understood the plain and ordinary
`
`
`1 Even if the statement that “Petitioner submits that, for the reasons provided by the
`
`Board in IPR2013-00594, these constructions should apply to the meaning of these
`
`terms in the current Petition” could be interpreted as Petitioner’s assertion that the
`
`Board’s previous preliminary construction was correct, the rules of inter partes
`
`review prohibit Petitioner from incorporating by reference any of the reasoning
`
`provided in the previous decision. See 37 C.F.R. § 42.6(a)(3).
`
`7
`
`
`
`meaning of “playlist” to denote a list referencing media items arranged to be
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`played in a sequence.
`
`Although Petitioner’s declarant did not speak substantively as to the
`
`propriety of the Board’s preliminary construction in IPR2013-00594, Dr. Jeffay
`
`does provide testimony regarding the state of the art that fully supports Patent
`
`Owner’s contention that a person of ordinary skill in the art would have understood
`
`that items of a playlist are arranged to be played in a sequence (i.e., as a group,
`
`without having to select individual songs for playback). For example, Dr. Jeffay
`
`cites to U.S. Patent No. 5,168,481 of Culbertson et al. (Ex. 1017) and notes:
`
`Culbertson shows that in the context of radio broadcast stations, it was
`known to compile a scheduled playlist from various music selections
`and pre-recorded materials having known durations or runtimes. See,
`e.g., Ex. 1017, 1:15-18. Culbertson sought to provide “an automated
`digital broadcast system which is capable of reliable operation for
`long periods of time without human assistance.” See, e.g., id. 1:44-51.
`In one embodiment, Culbertson describes using compact disc players
`to “sequentially play a predetermined list of musical selections and
`commercial or informational messages.” See, e.g., id. 1:50-51...
`Culbertson further disclosed that audio playback of the musical
`selections from the playlist could be started and stopped according to
`a schedule. See id. 1:53-60.
`Ex. 1015 at ¶19 (emphasis added).
`
`That the passages of Ex. 1017 that are relied upon by Dr. Jeffay fully
`
`8
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`
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`IPR2014-00737
`U.S. Patent 8,050,652
`
`support Patent Owner’s construction is made clear when compared to the extensive
`
`evidence presented by the Patent Owner in its Preliminary Response (see e.g.,
`
`Paper 6 at 18-21(citing Ex. 2007 at ¶¶56-61,73; Ex. 2008 at pp. 10, 20; Ex. 2009 at
`
`pp. 41, 43, 45; Ex. 2010 at pp. 40,49). For example, in its Preliminary Response,
`
`Patent Owner cited to various portions of an exemplary contemporaneous
`
`publication (Ex. 2008), which describes a “playlist” in a nearly identical manner
`
`relative to the playlist described in Ex. 1017 that is cited by Dr. Jeffay:
`
`Additionally, the TerraTec M3PO High Quality Audio Decoder
`Manual dated May 18, 2000 (“TerraTec Manual”), provides that
`“[t]he playlist is a pre-selected sequence of titles you wish the m3po to
`play.” (Ex. 2008, p. 10). “In DJ mode, you can pre-select titles, which
`will then be played in the sequence you selected them, basically, it is a
`mini-playlist (up to 10 titles), i.e. in case you need to go and get some
`more drinks, or are involved in a chit-chat you wish would never
`end.... Playback of the selected song starts automatically after the
`current one.” (Ex. 2008, p. 20 (emphasis added)).
`Paper 6 at 18-19 (underlining added).
`
`Thus, in one example, the passage of Ex. 1017 relied upon by Dr. Jeffay
`
`discloses an “automated digital broadcast system which is capable of reliable
`
`operation for long periods of time without human assistance,” whereas Ex. 2008
`
`indicates that pre-selected titles “will then be played in the sequence you selected
`
`9
`
`
`
`them, basically, it is a mini-playlist (up to 10 titles), i.e. in case you need to go and
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`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`get some more drinks, or are involved in a chit-chat you wish would never end . . .”
`
`Each of these references and the remainder of the evidence in this
`
`proceeding support the notion that items of a playlist are arranged to be played in a
`
`sequence (i.e., sequentially as a group, one after another, without having to select
`
`individual songs for playback), with no argument or evidence from the Petitioner
`
`to the contrary. Accordingly, Patent Owner respectfully requests rehearing of the
`
`construction of “playlist” that was adopted in the Decision because the Board’s
`
`construction is both unsupported by substantial evidence, and contrary to the
`
`evidence before the Board.
`
`C.
`
`Patent Owner Did Not Acknowledge That Playlist 1528 Is
`Not Arranged To Be Played In A Sequence
`
`The Decision misapprehends Patent Owner’s argument with respect to
`
`playlist 1528. The Decision states:
`
`Indeed, as Patent Owner acknowledged,
`the Specification’s
`description of playlist 1528 does not require a sequence or
`arrangement of the playlist contents. See Prelim. Resp. 26. (“This
`particular passage, however, speaks to the contents of one particular
`playlist (i.e., playlist 1528)), and not to the arrangement of the
`contents of the playlist.”) Thus, we construe “playlist” as not
`requiring items arranged to be played in a sequence.
`
`Paper 7 at 11 (emphasis added).
`
`10
`
`
`
`Patent Owner submits that any perceived “acknowledgement” of the notion
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`IPR2014-00737
`U.S. Patent 8,050,652
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`that playlist 1528 is not arranged to be played in a sequence is based on a
`
`misunderstanding of Patent Owner’s argument. At pages 26-27 of the Preliminary
`
`Response (Paper 6, emphasis original), Patent Owner asserted:
`
`The passage relied upon by the Board describes only a single aspect of
`one embodiment of a “playlist” in accordance with the ’652 Patent.
`This particular passage, however, speaks to the contents of one
`particular playlist (i.e., playlist (1528)), and not to the arrangement of
`the contents of the playlist. Nor does the passage relied upon by the
`Board suggest any express intent by the inventor to diverge from the
`customary definition of playlist as being a list of media items
`“arranged to be played in a sequence.” See Teleflex, Inc. v. Ficosa
`North America Corp., 299 F. 3d 1313,1325 (Fed. Cir. 2002) (“In the
`absence of an express intent to impart a novel meaning to claim terms,
`an inventor's claim terms take on their ordinary meaning.”). . . The
`’652 Patent uses the term “playlist” to refer to a list referencing media
`items arranged to be played in a sequence consistent with its plain
`and ordinary meaning.
`
`
`
`The first and second sentences of the passage of the Preliminary Response
`
`reproduced above do not concede that playlist 1528 is not arranged to be played in
`
`a sequence. Rather, Patent Owner’s unambiguous argument was that the passage
`
`of the ’652 Patent relied upon by the Board in IPR2013-00594 describes only one
`
`aspect of the playlist 1528. That is, the cited passage of the ’652 Patent does not
`
`11
`
`
`
`attempt to provide a comprehensive definition of a playlist, and certainly does not
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`IPR2014-00737
`U.S. Patent 8,050,652
`
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`negate the fundamental characteristic that playlist 1528 is arranged to be played in
`
`a sequence. Indeed, the third and fourth sentences from the Patent Owner’s
`
`Preliminary Response reproduced directly above (as well as the other evidence
`
`proffered by the Patent Owner) make clear that one of ordinary skill in the art
`
`would understand that a playlist is arranged to be played in a sequence.
`
`Specifically, the ’652 Patent states:
`
`FIG. 17B illustrates the display of an audio player window 1792....
`The user can click the shuffle button 1796 to “randomize” the playlist
`as opposed to playing the playlist in the same order. Further, the user
`can press the repeat button 1798 in order to have continuous play as
`opposed to the playlist stopping when it runs out of songs to play. The
`playlists will typically start from the beginning.
`
`Ex. 1001, col. 24, lines 31-43.
`
`The cited passage of the ’652 Patent makes it clear that playlists will either
`
`stop when they run out of songs or continuously loop if “continuous play” is
`
`chosen. “That is, playing of items in a playlist occurs in a sequence and does not
`
`require a user to manually select the next song to play when the current song
`
`ends.” Paper 6 at 27. Further, though playlists “typically start from the
`
`beginning,” a “shuffle button” permits a user to “randomize” the playlist, and one
`
`having ordinary skill in the art would appreciate that these features would have no
`
`12
`
`
`
`purpose unless the playlist has an original order of play. See Ex. 2007, ¶¶62-64.
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`IPR2014-00737
`U.S. Patent 8,050,652
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`Patent Owner additionally submits that the Board misapprehends Patent
`
`Owner’s statements regarding the playlist being a list of media items “arranged to
`
`be played in a sequence” in concluding that “the Specification’s description of
`
`playlist 1528 does not require a sequence or arrangement of the playlist contents.”
`
`As made clear throughout the Preliminary Response, the phrase “played in a
`
`sequence” refers to the fundamental characteristic that items of a playlist are
`
`played as a group (i.e., in succession one after another). That this is both Patent
`
`Owner’s construction and the ordinary and customary meaning to a person having
`
`ordinary skill in the art is made clear in the Preliminary Response and the exhibits,
`
`including in Zatkovich Declaration originally submitted in IPR2013-00594 (Ex.
`
`2007). See, e.g., Paper 6 at 20 (“These exemplary publications indicate that the
`
`term ‘playlist’ denotes that the media items (e.g., songs) are arranged to be played
`
`in a sequence (i.e., as a group, without having to select individual songs for
`
`playback).” (italics original, underline added)); Paper 6 at 26 (Construction of “the
`
`term without any indication that the items are to be played sequentially...is
`
`inconsistent with the customary meaning of the term ‘playlist’ and with the
`
`specification of the ’652 Patent, as a whole.”); Ex. 2007 at ¶57 (“Based upon my
`
`relevant experience in industry, ‘playlist’ is a term that is generally recognized in
`
`the media file sharing arts to mean a list referencing media items that is arranged
`
`13
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`
`
`to be played in a sequence, i.e., a list of media items that has been created to be
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`played sequentially, one after another” (underline added)); Ex. 2007 at ¶59
`
`(“Moreover, each of the above exemplary references is consistent with the
`
`understanding by a person having ordinary skill in the art in 2000 that the term
`
`‘playlist’ denoted that the media items were to be played in a sequence one after
`
`another (i.e., as a group, without having to select individual songs for playback)”
`
`(underline added)); Ex. 2007 at ¶60 (“In common parlance at the time of the ‘652
`
`Patent, the term ‘playlist’ denoted a list of media items (e.g., songs) to be played in
`
`a sequence, one after another as a group, without having to select individual songs
`
`for playback. Indeed, the two parts of the word itself make the meaning of the
`
`term self-evident: ‘play’ and ‘list.’ In all cases, the operative function is ‘play,’
`
`which means the songs will be played as a group, not individually.” (underline
`
`added)).
`
`Thus, far from acknowledging that playlists are merely “lists of audio files,”
`
`the specification itself, expert testimony, contemporaneous references, and the
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`Patent Owner’s Preliminary Response all support the conclusion that the term
`
`“playlist” as used in the ’652 Patent had a plain and ordinary meaning, namely “a
`
`list of media files arranged to be played in a sequence.”
`
`14
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`
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`IV. CONCLUSION
`For the reasons stated above, Patent Owner respectfully requests that the
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
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`Board construe “playlist” as “a list referencing media items arranged to be played
`
`in a sequence.”
`
`Dated: November 18, 2014
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`15
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`
`
`CERTIFICATE OF SERVICE
`
`IPR2014-00737
`U.S. Patent 8,050,652
`
`
`
`
`
`areister@cov.com
`gdischer@cov.com
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
` I
`
`
`
` hereby certify that on November 18, 2014, a true and accurate copy of this paper,
`PATENT OWNER’S REQUEST FOR REHEARING and its Exhibits, were served on the
`following counsel for Petitioner via email:
`
`Andrea G. Reister
`Gregory S. Discher
`Covington & Burling LLP
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004
`Tel. (202) 662-5141
`
`Dated: November 18, 2014
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