Patent No. 8,214,873
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Yamaha Corporation of America
`Petitioner
`
`v.
`
`Black Hills Media, LLC
`Patent Owner
`
`Patent No. 8,214,873 (Claims 4, 5, 33 and 34)
`Issue Date: July 3, 2012
`Title: METHOD, SYSTEM, AND COMPUTER-
`READABLE MEDIUM FOR EMPLOYING A FIRST DEVICE TO
`DIRECT A NETWORKED AUDIO DEVICE TO RENDER A PLAYLIST
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 2
`
`III. CO-PENDING LITIGATIONS ...................................................................... 5
`
`A.
`
`B.
`
`IPR2013-00598 .................................................................................... 5
`
`Prior And Pending Litigation Against Petitioner ................................. 6
`
`1.
`
`2.
`
`Black Hills’ Prior Litigation Against Petitioner And
`Others Was Dismissed Without Prejudice And Was A
`Legal Nullity .............................................................................. 7
`
`The Dismissed Prior Lawsuit Against Petitioner Does
`Not Constitute A Bar To The Present Petition .......................... 8
`
`C.
`
`Other Co-Pending Litigation On The '873 Patent .............................. 13
`
`IV. CLAIM CONSTRUCTION ......................................................................... 14
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`V.
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`IDENTIFICATION OF CHALLENGE ....................................................... 15
`
`A.
`
`Statutory Grounds For The Challenge Of Each Claim ...................... 15
`
`1.
`
`2.
`
`Grounds Based On Primary Reference US2002/0087996
`A1 To Bi et al. .......................................................................... 15
`
`Ground Based On Primary Reference U.S. Patent No.
`6,502,194 To Berman et al. ..................................................... 16
`
`VI. GROUNDS BASED ON BI ......................................................................... 17
`
`A. Ground 1 – Obviousness Of Claims 5 And 34 Based On Bi In
`View Of Erekson And Further In View Of Ausems .......................... 17
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Base Independent Claims 1 And 30 Are Being Reviewed
`In IPR2013-00598 Based On The Combination Of Bi
`And Erekson ............................................................................. 17
`
`The Disclosure Of Bi ............................................................... 18
`
`The Disclosure Of Erekson ...................................................... 21
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`The Combined Disclosure Of Bi And Erekson ....................... 23
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`Combination Of Bi And Erekson With Ausems ...................... 26
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`TABLE OF CONTENTS
`(continued)
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`Page
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`B.
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`C.
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`Ground 2 – Obviousness Of Claims 5 And 34 Based On Bi In
`View Of Yumoto ................................................................................ 30
`
`Ground 3 – Obviousness Of Claims 4 And 33 Based On Bi In
`View Of Erekson And Further In View Of Safadi ............................. 37
`
`VII. GROUND BASED ON BERMAN .............................................................. 39
`
`A. Ground 4 – Obviousness Of Claims 5 And 34 Based On
`Berman In View Of Yumoto .............................................................. 39
`
`1.
`
`2.
`
`Base Independent Claims 1 And 30 Are Obvious Based
`On The Combination Of Berman And Yumoto ...................... 39
`
`Claims 5 And 34 Are Obvious Based On The
`Combination Of Berman And Yumoto .................................... 44
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`VIII. CONCLUSION ............................................................................................. 46
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`Attorney Docket No.: 393032805501
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`Exhibit List for Inter Partes Review of U.S. Patent No. 8,214,873
`
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 8,214,873 to Weel
`
`Declaration of Dr. V. Michael Bove, Jr.
`
`Decision Instituting Inter Partes Review of '873 Patent in IPR2013-
`00598 dated March 20, 2014 (Paper No. 19)
`Dismissal Order in Black Hills Media, LLC v. Yamaha Corp. of
`America, Case No. 2:13-cv-06054 (C.D. Cal.) dated January 14, 2014
`Decision Instituting Inter Partes Review in IPR2013-00175 dated July
`3, 2013 (Paper No. 15)
`Decision Instituting Inter Partes Review in IPR2012-00004 dated
`January 24, 2013 (Paper No. 18)
`Decision Denying Patent Owner’s Request for Rehearing in IPR2013-
`00312 dated December 18, 2013 (Paper No. 40)
`Order Staying Black Hills Media, LLC v. Yamaha Corp. of America,
`Case No. 8:14-cv-00101 (C.D. Cal.) dated May 8, 2014
`U.S. Patent Publication No. US2002/0087996 A1 to Bi et al.
`
`U.S. Patent No. 6,622,018 to Erekson
`
`1001
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`1002
`
`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`U.S. Patent Publication No. US2001/0044321 A1 to Ausems et al.
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`1011
`
`U.S. Patent Publication No. US2003/0080874 A1 to Yumoto et al.
`
`1012
`
`U.S. Patent Publication No. US2002/0173339 A1 to Safadi
`
`U.S. Patent No. 6,502,194 to Berman et al.
`
`Petition for Inter Partes Review of '873 Patent in IPR2013-00598
`dated September 19, 2013 (Paper No. 1)
`
`
`1013
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`1014
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`1015
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`Attorney Docket No.: 393032805501
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`Petitioner Yamaha Corporation of America (“Petitioner”) respectfully
`
`petitions for inter partes review of claims 4, 5, 33 and 34 of U.S. Patent
`
`No. 8,214,873 (“the '873 patent” (Ex. 1001)) in accordance with 35 U.S.C. §§ 311-
`
`319 and 37 C.F.R. § 42.100 et seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies Yamaha Corporation
`
`of America as the real party-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the related matters in
`
`Section III.
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel (and a power of attorney accompanies this Petition):
`
`Lead Counsel
`
`Backup Counsel
`
`David L. Fehrman
`
`Mehran Arjomand
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`dfehrman@mofo.com
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`marjomand@mofo.com
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`Registration No.: 28,600
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`Registration No.: 48,231
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`MORRISON & FOERSTER LLP
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`MORRISON & FOERSTER LLP
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`707 Wilshire Blvd., Suite 6000
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`707 Wilshire Blvd., Suite 6000
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`Los Angeles, California 90017-3543
`
`Los Angeles, California 90017-3543
`
`Tel: (213) 892-5601
`
`Tel: (213) 892-5630
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`Fax: (213) 892-5454
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`Fax: (323) 210-1329
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`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
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`counsel is provided above.
`
`Pursuant to 37 C.F.R. § 42.104(a), and as more fully discussed below in
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`Section III.B, Petitioner certifies that the '873 patent is available for inter partes
`
`review and that Petitioner is not barred or estopped from requesting an inter partes
`
`review challenging claims 4, 5, 33 and 34 of the '873 patent on the grounds
`
`identified in this Petition. The complaint that determines the one-year period under
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`35 U.S.C. § 315(b) was filed and served on January 21, 2014.
`
`II.
`
`INTRODUCTION
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`The '873 patent is directed to a system and method for using a first device to
`
`provide remote control of the playing of multimedia items on a second device such
`
`as a media player. A device identifier is displayed on the first device to allow
`
`selection of the second device. A playlist, e.g., a list of songs, is received and
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`displayed on the first device. The user selects one or more songs from the playlist,
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`and the first device directs the media player to play the selected songs without user
`
`input via the media player.
`
`As discussed more fully herein (see, e.g., Section III.A), a number of claims
`
`of the '873 patent are currently being reviewed in Case IPR2013-00598, which was
`
`instituted on March 20, 2014 based on this same Petitioner’s request. The present
`
`Petition is directed to dependent claims 4, 5, 33 and 34 of the '873 patent, which
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`were the only four previously challenged claims of the '873 patent for which inter
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`partes review was not instituted in IPR2013-00598.
`
`Each of the challenged claims in this Petition depends directly from an
`
`independent claim (i.e., claim 1 or claim 30) that is being reviewed in pending
`
`IPR2013-00598. Specifically, challenged claims 4 and 5 depend directly from
`
`independent claim 1 of the '873 patent and recite as follows:
`
`4.
`
`The method as recited in claim 1, wherein the first device
`
`comprises an MP3 player.
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`5.
`
`The method as recited in claim 1, wherein the first device
`
`comprises a mobile phone.
`
`Challenged claims 33 and 34 depend directly from independent claim 30 of the
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`'873 patent and recite as follows:
`
`33. The device as recited in claim 30, wherein the device
`
`comprises an MP3 player.
`
`34. The device as recited in claim 30, wherein the device
`
`comprises a mobile phone.
`
`Independent claims 1 and 30 are parallel method and device claims that are
`
`being reviewed in IPR2013-00598 “as obvious over Bi and Erekson.” As set forth
`
`above, the challenged claims respectively add “an MP3 player” or “a mobile
`
`phone” limitation to the recited method of claim 1 and the claimed device of claim
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`30. As discussed in detail below, additional prior art references relied upon in this
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`Petition (i.e., Ausems, Yumoto, and Safadi) disclose use of a mobile phone and/or
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`an MP3 player as a remote control and render the challenged claims obvious in
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`combination with either Bi and Erekson or with Bi alone (i.e., Grounds 1-3). One
`
`of these references (Yumoto) is alternatively combined with Berman (which was
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`part of a proposed combination in the first Petition that was not instituted based
`
`upon redundancy) to render claims 5 and 34 obvious (i.e., Ground 4).
`
`Section III of this Petition summarizes co-pending litigations on the '873
`
`patent, including Case IPR2013-00598 and recently stayed district court litigation
`
`against Petitioner and others, as well as additional district court litigation and a
`
`related ITC investigation not involving Petitioner. Section IV addresses the claim
`
`construction issue. Section V identifies the grounds for invalidity of challenged
`
`claims 4, 5, 33 and 34, and Sections VI and VII discuss those grounds in detail
`
`with claim charts showing where each element of each challenged claim is
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`disclosed in the prior art relied upon in this Petition. This showing of invalidity of
`
`the challenged claims is accompanied by the Declaration of Dr. V. Michael Bove,
`
`Jr. (“Bove Decl.,” Ex. 1002), who also submitted a declaration in support of
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`Petitioner’s prior request to review the '873 patent.
`
`Petitioner respectfully requests a Decision to institute inter partes review of
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`claims 4, 5, 33 and 34 of the '873 patent.
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`III. CO-PENDING LITIGATIONS
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`As summarized below, a number of claims of the '873 patent are currently
`
`being reviewed by the Board in Case IPR2013-00598, and the '873 patent has been
`
`asserted in co-pending district court litigation against Petitioner and others (which
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`was recently stayed), as well as in other district court cases and an ongoing ITC
`
`investigation not involving Petitioner.
`
`A.
`
`IPR2013-00598
`
`This is the second petition for inter partes review of the '873 patent filed by
`
`Petitioner. On September 19, 2013, Petitioner requested review of claims 1, 2, 4-
`
`13, 15-31, 33-42, and 44-46 of this patent. In a March 20, 2014 Decision in now-
`
`pending IPR2013-00598 (Paper No. 19; Ex. 1003), the Board granted review of
`
`claims 1, 2, 6-13, 15-31, 35-42 and 44-46 based on the following grounds:
`
`• “Claims 1, 2, 6-12, 15-31, 35-41, and 44-46 … as obvious over Bi
`
`and Erekson” (i.e., Ground 5)
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`• “Claims 13 and 42 … as obvious over Bi, Erekson, and Janik '955”
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`(i.e., Ground 7)
`
`(Ex. 1003 at 24.) The Board declined to institute review of dependent claims 4, 5,
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`33 and 34 based on the combination of Bi and Erekson with the Sony Ericsson
`
`White Paper (Ground 6), stating that Petitioner had not provided sufficient
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`evidentiary support as to why a person of ordinary skill in the art would combine
`
`Bi, Erekson, and the Sony Ericsson White Paper. (Ex. 1003 at 21.)
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`In the first Petition, Yamaha also proposed that claims 1, 2, 6-13, 15-31, 33,
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`35-42, and 44-46 were obvious based on U.S. Patent 6,502,194 to Berman in view
`
`of U.S. Patent No. 6,127,194 to Van Ryzin (Ground 8). The Board decided not to
`
`institute review on Ground 8, concluding that it was redundant in light of Ground
`
`5, for which inter partes review of many of those same claims was instituted (see
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`Ex. 1003 at 23); the claims for which review was not instituted based on
`
`redundancy with respect to Ground 8 included independent claims 1 and 30 from
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`which the challenged claims on this Petition depend.
`
`B.
`
`Prior And Pending Litigation Against Petitioner
`
`On January 21, 2014, the Patent Owner Black Hills Media, LLC (“Black
`
`Hills”) filed suit against Petitioner Yamaha Corporation of America in the U.S.
`
`District Court for the Central District of California alleging infringement of seven
`
`patents, including the '873 patent. See Black Hills Media, LLC v. Yamaha Corp. of
`
`America, Case No. 8:14-cv-00101 (C.D. Cal.). The Complaint in this recently
`
`filed case was served on the same day. As discussed below, Black Hills previously
`
`filed a lawsuit against Petitioner alleging infringement of the '873 patent; however,
`
`Black Hills did not have standing to file the prior lawsuit, which was dismissed
`
`without prejudice for lack of subject matter jurisdiction in a January 14, 2014
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`Order (Ex. 1004) and was thus a legal “nullity.”
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`1.
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`Black Hills’ Prior Litigation Against Petitioner And Others
`Was Dismissed Without Prejudice And Was A Legal Nullity
`
`On May 22, 2012, Black Hills filed suit against Petitioner in the U.S.
`
`District Court for the District of Delaware alleging infringement of three patents.
`
`See Black Hills Media, LLC v. Yamaha Corp. of America, No. 1:12-cv-00635-
`
`RGA (D. Del.). On that same day, Black Hills filed related cases in the District of
`
`Delaware against Pioneer (2:13-cv-05980), Logitech (2:13-cv-06055), and Sonos
`
`(2:13-cv-06062). As it later turned out, Black Hills did not then own the patents in
`
`suit, contrary to its allegations that it did.
`
`Black Hills never served the original Complaints in the Delaware cases.
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`Instead, on September 12, 2012, it filed First Amended Complaints against
`
`Yamaha, Pioneer, Logitech, and Sonos alleging, inter alia, infringement of the '873
`
`patent for the first time. The First Amended Complaint was served on Yamaha on
`
`September 19, 2012. Because Black Hills did not have standing to file the prior
`
`lawsuits on May 22, 2012, the First Amended Complaint filed on September 12,
`
`2012 was jurisdictionally improper as discussed below.
`
`On August 5, 2013, the Delaware Court transferred the previously-filed
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`lawsuit against Yamaha to the Central District of California (along with the three
`
`related lawsuits against Pioneer, Logitech, and Sonos). The Yamaha case was
`
`opened as C.D. Cal. Case No. 2:13-cv-06054, and was later coordinated by the
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`California Court with the transferred cases against Pioneer (2:13-cv-05980), Sonos
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`(2:13-cv-06062), and Logitech (2:13-cv-06055) (later dismissed).
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`The California Court ordered Black Hills to submit “chain of title”
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`documents evidencing ownership of the asserted patents. It then became apparent
`
`that Black Hills did not, in fact, own the patents in suit when it filed its original
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`Complaint in Delaware on May 22, 2012. Remaining Defendants Yamaha,
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`Pioneer, and Sonos therefore moved to dismiss the previously-filed lawsuits for
`
`lack of subject matter jurisdiction. In an Order dated January 14, 2014 (Ex. 1004),
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`the California Court granted Defendants’ motion and dismissed the cases based on
`
`the previously-filed complaints without prejudice; in its Order, the Court stated
`
`that it “does not wish to reward parties who aggressively seek to vindicate rights
`
`not yet theirs.” (Id. at 7.) Black Hills subsequently filed and served a new
`
`Complaint to institute a new lawsuit on January 21, 2014.
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`2.
`
`The Dismissed Prior Lawsuit Against Petitioner Does Not
`Constitute A Bar To The Present Petition
`
`This Petition has been filed within one year of Petitioner being served with a
`
`jurisdictionally-proper complaint alleging infringement of the '873 patent, i.e., the
`
`Complaint served on January 21, 2014 in pending Case No. 8:14-cv-00101. 35
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`U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Because Patent Owner Black Hills may
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`argue that the September 12, 2012 First Amended Complaint filed in the dismissed
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`lawsuit against Yamaha (which was served on September 19, 2012) constitutes a
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`statutory bar under § 315(b), Petitioner addresses that issue here.
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`In at least three unrelated IPR proceedings, the Board has rejected similarly-
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`themed § 315(b) challenges to Petitions for IPR that were filed more than one year
`
`after service of a complaint that had been dismissed without prejudice. In each
`
`case, the Board has found that a dismissal without prejudice restarts the one-year
`
`clock under § 315(b). As the Court here dismissed the previously-filed cases based
`
`on the May 22, 2012 Complaint and the September 12, 2012 First Amended
`
`Complaint without prejudice, the one-year clock was restarted.
`
`1.
`
`In a July 3, 2013 Decision of Institution of Inter Partes Review in
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`BAE Systems Information and Electronic Systems Integration, Inc. v. Cheetah
`
`Omni, LLC, Case IPR2013-00175 (Paper No. 15) (Ex. 1005), the Board found that
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`alleged infringer BAE’s “petition was timely filed” (id. at 6) and rejected patent
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`owner Cheetah’s arguments that BAE’s petition was time-barred under § 315(b):
`
`Cheetah first alleges that BAE Systems’ petition was filed over two
`
`years after BAE Systems was served with a complaint in the Texas
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`action. [Citation omitted.] However, Cheetah voluntarily dismissed
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`that action pursuant to Fed. R. Civ. P. 41(a) before any of the named
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`defendants were required to answer. [Citation omitted.] As BAE
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`Systems correctly states, a voluntary dismissal of an infringement
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`action nullifies the effect of the alleged service of the complaint on the
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`petitioner. See, e.g., Graves v. Principi, 294 F.3d 1350, 1356 (Fed.
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`Cir. 2002) (“The dismissal of an action without prejudice leaves the
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`parties as though the action had never been brought”); see also
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`IPR2012-00004 (Macauto U.S.A. v. BOS GMBH & KG at 15-16
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`(Paper 18, [citation omitted])). Thus, the dismissal of the earlier
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`Texas action against BAE Systems nullifies the effect of the alleged
`
`service of the complaint and did not trigger the § 315(b) one-year
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`statutory bar.
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`(IPR2013-00175 Paper No. 15 at 3-4; Ex. 1005.)
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`2.
`
`In the above-cited January 24, 2013 Decision of Institution of Inter
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`Partes Review in Macauto U.S.A. v. BOS GmbH & KG, Case IPR2012-00004
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`(Paper No. 18) (Ex. 1006), the Board similarly determined that a prior dismissal
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`without prejudice restarts the one-year statutory clock under § 315(b):
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`As to the requirement of service, the Board notes that the infringement
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`suit against Macauto Taiwan was voluntarily dismissed without
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`prejudice under Fed.R.Civ.P. 41(a), pursuant to a joint stipulation.
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`[Citation omitted.] The Federal Circuit has consistently interpreted
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`the effect of such dismissals as leaving the parties as though the action
`
`had never been brought. Graves v. Principi, 294 F.3d 1350, 1356
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`(Fed. Cir. 2002) (“The dismissal of an action without prejudice leaves
`
`the parties as though the action had never been brought”); Bonneville
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`Associates, Ltd. Partnership v. Baram, 165 F.3d 1360, 1364 (Fed. Cir.
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`1999) (“The rule in the federal courts is that ‘[t]he effect of a
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`voluntary dismissal without prejudice pursuant to Rule 41(a) is to
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`render the proceedings a nullity and leave the parties as if the action
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`had never been brought.’”) (Citations and internal quotes omitted.)
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`Accord, Wright, Miller, Kane, and Marcus, 9 Federal Prac. & Proc.
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`Civ. § 2367 (3d. ed.) (“[A]s numerous federal courts have made clear,
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`a voluntary dismissal without prejudice under Rule 41(a) leaves the
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`situation as if the action never had been filed.”) (footnote omitted).
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`Accordingly, the dismissal of the earlier action against Macauto
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`Taiwan nullifies the effect of the alleged service of the complaint on
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`Petitioner.
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`(IPR2012-00004 Paper No. 18 at 15-16; Ex. 1006.)
`
`3.
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`The Board recently reaffirmed its above interpretations of § 315(b) in
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`denying a Patent Owner’s Request for Rehearing in a December 18, 2013 Decision
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`in Oracle Corp et al. v. Click-to-Call Technologies LP, Case IPR 2013-00312
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`(Paper No. 40) (Ex. 1007). In that Decision, the Board reiterated the “position that
`
`both the Federal Rules of Civil Procedure and Federal Circuit precedent treat a
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`dismissal without prejudice as something that, de jure, never existed.” (Id. at 4.)
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`Citing the above-referenced Federal Circuit opinions in Graves and Bonneville, the
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`Board stated:
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`We have determined that, because that patent infringement suit was
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`dismissed without prejudice, Federal Circuit precedent interprets such
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`a dismissal as leaving the parties in the same legal position as if the
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`underlying complaint had never been served.
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`(Id.; Ex. 1007.)
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`As the Federal Circuit held in the opinions cited by the Board in the above-
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`quoted IPR Decisions, “[t]he dismissal of an action without prejudice leaves the
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`parties as though the action had never been brought[.]” Graves, 294 F.3d at 1356.
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`In view of the California Court’s dismissal without prejudice of the Patent Owner’s
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`prior lawsuit in the January 14, 2014 Order (Ex. 1004), the prior action was a legal
`
`“nullity” that “leaves the parties as if [that] action had never been brought.”
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`Bonneville, 165 F.3d at 1364.
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`Accordingly, as in the above-discussed BAE, Macauto, and Oracle IPR
`
`cases, the California Court’s dismissal without prejudice of the Patent Owner’s
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`earlier action based on the May 22, 2012 Complaint and the September 12, 2012
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`First Amended Complaint against Petitioner nullified the effect of both filing and
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`service of the jurisdictionally-defective complaints. Whether or not the Patent
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`Owner owned the '873 patent when it served the First or Second Amended
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`Complaints in the dismissed lawsuit is immaterial because the entire prior lawsuit
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`was “DISMISSE[D] without prejudice” (Ex. 1004 at 7), and thus the action,
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`including allegations based on the '873 patent, “never existed” for purposes of
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`determining compliance with § 315(b).
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`Thus, this Petition has been filed within one year of Petitioner being served
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`with a jurisdictionally-proper complaint alleging infringement of the '873 patent on
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`January 21, 2014. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
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`C. Other Co-Pending Litigation On The '873 Patent
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`In addition to filing suit against Petitioner Yamaha on January 21, 2014 in
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`the Central District of California (as discussed above in Section III.B), Black Hills
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`filed new C.D. Cal. lawsuits against Pioneer and Sonos that same day alleging
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`infringement of the '873 patent. The newly-filed Pioneer (2:14-cv-00471) and
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`Sonos (2:14-cv-00483) cases were subsequently coordinated with the Yamaha case
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`(8:14-cv-00101). On May 8, 2014, the Court stayed the coordinated cases as to the
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`‘873 patent as well as six other Black Hills patents (i.e., U.S. Patent Nos.
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`6,108,686, 6,985,694, 8,045,952, 8,050,652, 8,230,099, and 8,458,356) “pending
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`completion of the IPR Proceedings for the '952, '652, '099, '873, and '356 Patents”
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`(respectively, IPR2013-00593, IPR2013-00594, IPR2013-00597, IPR2013-00598,
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`and IPR2014-00733). (Ex. 1008 at 9.) The Yamaha and Pioneer cases have been
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`stayed “in their entirety” (id.) pending the completion of the aforementioned IPR
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`proceedings (while the Sonos case will proceed with respect to certain patents that
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`were not asserted against Yamaha or Pioneer).
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`In addition to the above-described litigation against Yamaha, Pioneer,
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`Sonos, and Logitech, Black Hills filed district court lawsuits alleging infringement
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`of the '873 patent on May 6, 2013 against LG (1:13-cv-00803), Sharp (1:13-cv-
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`00804), Toshiba (1:13-cv-00805), and Panasonic (1:13-cv-00806) in the District of
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`Delaware, and against Samsung (2:13-cv-00379) in the Eastern District of Texas.
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`With the exception of the Sharp case (which was dismissed in a September 27,
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`2013 Order), the LG, Toshiba, Panasonic, and Samsung cases have each been
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`stayed pending completion of the below-discussed ITC investigation.
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`On May 13, 2013, Black Hills filed a Section 337 action in the U.S.
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`International Trade Commission against Respondents LG, Sharp, Toshiba,
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`Panasonic, and Samsung alleging, inter alia, infringement of the '873 patent. See
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`Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players,
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`Home Theater Systems, Tablets and Mobile Phones, Components Thereof and
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`Associated Software, Inv. No. 337-TA-882 (USITC).
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`Finally, on May 1, 2014, Samsung petitioned for inter partes review of
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`claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37, and 44-46 of the '873 patent
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`(and has recently filed IPR Petitions on other Black Hills patents). The recently-
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`filed Samsung Petition on the '873 patent has been assigned Case IPR2014-00723.
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`IV. CLAIM CONSTRUCTION
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`Petitioner notes that a claim is given its “broadest reasonable construction in
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`light of the specification” in inter partes review. See 37 C.F.R. § 42.100(b). In
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`IPR2013-00598, Petitioner submitted four terms for construction, including terms
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`in independent claims 1 and 30. In its March 20, 2014 Decision in IPR2013-00598
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`(Ex. 1003), the Board determined that the submitted terms and, indeed, all terms of
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`the claims should be given their ordinary and customary meaning (see Ex. 1003 at
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`9-10). Therefore, with respect to this Petition, the claims should be given their
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`ordinary and customary meaning.
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`V.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. § 42.104(b), Petitioner respectfully requests the
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`cancellation of claims 4, 5, 33 and 34 of the '873 patent.
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`A.
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`Statutory Grounds For The Challenge Of Each Claim
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`The statutory grounds for the challenge of each claim are set forth below.
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`All the statutory citations are pre-AIA.
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`1. Grounds Based On Primary Reference US2002/0087996 A1
`To Bi et al.
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`Ground 1 – Obviousness under 35 U.S.C. § 103(a) of claims 5 and 34 based on
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`U.S. Patent App. Pub US2002/0087996 A1 to Bi et al. (“Bi,” Ex. 1009) in view of
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`U.S. Patent No. 6,622,018 to Erekson (“Erekson,” Ex. 1010) and further in view of
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`U.S. Patent App. Pub US2001/0044321 A1 to Ausems et al. (“Ausems,” Ex.
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`1011).
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`Ground 2 – Obviousness under 35 U.S.C. § 103(a) of claims 5 and 34 based on Bi
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`in view of U.S. Patent App. Pub US2003/0080874 A1 to Yumoto et al.
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`(“Yumoto,” Ex. 1012).
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`Ground 3 – Obviousness under 35 U.S.C. § 103(a) of claims 4 and 33 based on Bi
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`in view of Erekson and further in view of U.S. Patent App. Pub US2002/0173339
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`A1 to Safadi (“Safadi,” Ex. 1013).
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`2. Ground Based On Primary Reference U.S. Patent No.
`6,502,194 To Berman et al.
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`Ground 4 – Obviousness under 35 U.S.C. § 103(a) of claims 5 and 34 based on
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`U.S. Patent No. 6,502,194 to Berman et al. (“Berman,” Ex. 1014) in view of
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`Yumoto.
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`* * * * *
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`Set forth below is a discussion of how the challenged claims of the '873
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`patent are unpatentable under the statutory grounds raised. Given that the
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`challenged claims are dependent claims, the detailed analysis of unpatentability
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`necessarily includes independent claims 1 and 30 from which the challenged
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`claims depend. Specifically, the below sections include claim charts specifying
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`where each element of dependent claims 4 and 5 (which includes each element of
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`independent claim 1 from which they respectively depend) and where each element
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`of dependent claims 33 and 34 (which includes each element of independent claim
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`30 from which they respectively depend) is met by the prior art. 37 C.F.R.
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`§ 42.104(b)(4).
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`The showing in the below sections establishes a reasonable likelihood of
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`prevailing as to each ground of invalidity with respect to the challenged claims as
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`to that ground. This showing is accompanied by the Declaration of Dr. V. Michael
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`Bove, Jr. (Ex. 1002) as noted above.
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`VI. GROUNDS BASED ON BI
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`A. Ground 1 – Obviousness Of Claims 5 And 34 Based On Bi In
`View Of Erekson And Further In View Of Ausems
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`1.
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`Base Independent Claims 1 And 30 Are Being Reviewed In
`IPR2013-00598 Based On The Combination Of Bi And
`Erekson
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`As a result of Yamaha’s first Petition for inter partes review of the '873
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`patent (i.e., pending IPR2013-00598), the Board has already granted review of
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`independent claims 1 and 30 based on Bi in view of Erekson (see id., Ground 5).
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`Thus, the Board has already determined that Petitioner has made an adequate
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`showing under 35 U.S.C. § 314(a) that there is a reasonable likelihood that
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`Petitioner will prevail and the Board will find that the combination of Bi and
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`Erekson renders claims 1 and 30 obvious. (Ex. 1003 at 19.) The analysis upon
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`which the Board instituted review of claims 1 and 30 based on Bi and Erekson is
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`set forth below, followed by analysis of the combination of Bi and Erekson with
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`Ausems.
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`2.
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`The Disclosure Of Bi
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`U.S. Patent App. Pub US2002/0087996 A1 to Bi et al. (Ex. 1009) was
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`published on July 4, 2002, and thus qualifies as prior art to the '873 patent under 35
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`U.S.C. § 102(b) as it was published more than one year before May 5, 2004, which
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`is the earliest possible effective filing date of the '873 patent. The Bi published
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`application, which is entitled “Interactive Remote Control of Audio or Video
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`Playback and Selections,” was not cited during prosecution of the '873 patent.
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`Bi is directed to a system for an interactive remote control, which may be
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`wired or wireless, of an audio or playback application running on a personal
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`computer or other computing platform. FIG. 2 of Bi, which is reproduced below,
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`illustrates one embodiment:
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`In FIG. 2, digital audio or video data is provided from a data server 102 via
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`the internet or other computer network 101 to a computing platform 100. Digital
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`audio or video data can also be read from local storage 112 if available. A wireless
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`remote control 260, referred to as a “navigator,” is provided to facilitate selection
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`of audio or video to be played. The navigator 260 communicates with the
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`computing platform 100 to control selection.
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`As noted in Paragraph [0007] of Bi, the interactive remote control provides
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`various functions “such as playback of current digital audio or video content;
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`selection of new audio or video content; and providing lists of content for
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`playback.” In this same paragraph, it is stated:
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`An important aspect of this invention is that the digital content can be
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`controlled from a location away from the computing platform running
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`the digital content playback application.
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`[0007].
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`As discussed at the beginning of Paragraph [0028], the navigator 260 (which
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`is illustrated in more detail in FIG. 5 of Bi) acts as a remote