IPR2013-00598 /U.S. PATENT 8,214,873
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`YAMAHA CORPORATION OF AMERICA
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`PETITIONER
`
`v.
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`BLACK HILLS MEDIA, LLC
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`PATENT OWNER
`
`___________________
`
`CASE NO. IPR2013-00598
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`U.S. PATENT 8,214,873
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`___________________
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`
`
`DECLARATION OF GARETH LOY, D.M.A.
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
`
`
`
`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
`
`___________________
`
`CASE NO. IPR2013-00598
`
`U.S. PATENT 8,214,873
`
`___________________
`
`
`
`DECLARATION OF GARETH LOY, D.M.A.
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
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`
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`IPR2013-00598 /U.S. PATENT 8,214,873
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION AND QUALIFICATIONS .............................................. 1
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`RELEVANT LEGAL STANDARDS ............................................................ 5
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`III. BACKGROUND OF THE PROCEEDING ................................................... 8
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`IV. DEFINITION OF THE PERSON OF SKILL IN THE ART ......................... 9
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`V.
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`THE STATE OF THE PRIOR ART ............................................................ 10
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`VI. THE ‘873 PATENT ...................................................................................... 16
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`VII. OPINION ON CLAIM CONSTRUCTION OF THE TERM
`“PLAYLIST” OF THE ‘873 PATENT ........................................................ 22
`
`VIII. THE PRIOR ART OF THE INSTITUTED GROUNDS ............................. 26
`A. United States Patent Application 2002/0087996 to Bi ...................... 26
`B.
`United States Patent 6,622,018 to Erekson ........................................ 35
`C.
`United States Patent Application 2003/0045955 to Janik .................. 42
`
`B.
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`C.
`
`D.
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`IX. THE PRIOR ART COMBINATIONS DO NOT RENDER THE ‘873
`CLAIMS OBVIOUS .................................................................................... 43
`A.
`There Is No Motivation To Combine Bi and Erekson, and Bi,
`Erekson and Janik ............................................................................... 44
`The Combination Of Bi In View Of Erekson Would Yield an
`Inoperable System, and, Therefore Does Not Render the ‘873
`Patent Obvious ................................................................................... 49
`The Combination of Bi and Erekson Fails To Disclose Material
`Limitations of the ‘873 Patent Claims ............................................... 62
`The Combination of Bi, Erekson and Janik Does Not Render
`Claims 13 and 42 Obvious ................................................................. 68
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`I.
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`INTRODUCTION AND QUALIFICATIONS
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`1.
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`I have been retained by counsel for Patent Owner, Black Hills Media,
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`LLC (“Patentee”) to provide opinions in connection with Inter Partes Review No.
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`IPR2013-00598 of U.S. Patent No. 8,214,873 to Martin Weel (Ex. 1001, “the ‘873
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`patent”). Specifically, I have been asked to render an opinion of whether the
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`grounds on which a trial was instituted in this proceeding render the claims at issue
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`invalid. A current copy of my curriculum vitae is attached hereto as Exhibit A.
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`2.
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`I am the President of Gareth, Inc., which provides software
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`engineering, consulting, and litigation support to high-technology companies
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`internationally. Gareth Inc. provides research and development services including
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`product development, coding and documentation. Gareth Inc. also provides a wide
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`variety of software engineering services including embedded systems, real-time
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`systems, operating systems support and development, file systems, compilers,
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`parallel processing systems, and digital signal processing (DSP) systems.
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`3.
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`Gareth Inc. has prepared and provided compilers, interpreters and
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`assemblers, enterprise software systems, chip architectures, software architectures,
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`realtime operating systems, home entertainment systems, embedded systems,
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`instruction set architectures, datasheets, databooks, user guides, and custom
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`automated documentation systems. Technology clients have included Infineon,
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`Philips Semiconductor, Trimedia Technologies, Equator Technologies, Pixim, Inc.,
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`Palm, Inc., Sonic Solutions, Sony Corporation of America, Chromatic Research,
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`Raza Microelectronics, Cradle Technologies, Siemens Microelectronics, Zoran
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`Corporation, Dolby Laboratories, and C-Cube Microsystems.
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`4.
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`I have over 37 years of academic and professional experience in
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`computer science, software development, embedded systems, networking,
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`enterprise software systems, digital audio signal processing, and music technology.
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`I received my doctorate from Stanford University in 1980, where I studied under
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`John Chowning at the Center for Computer Research in Music and Acoustics,
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`which was a center within the Stanford Artificial Intelligence Laboratory directed
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`by John McCarthy at the time.
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`5.
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`I was an early Apple Computer employee, having been hired there in
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`1979 full time while still in graduate school. I worked for Jef Raskin who reported
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`directly to Steve Jobs, founder and CEO of Apple Computer. I left Apple in 1980
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`to teach at UCSD where I taught, for a decade, graduate and undergraduate courses
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`in computer science and digital audio, and cofounded the Computer Audio
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`Research Laboratory there.
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`6.
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`I have published widely in various peer-reviewed journals, and have
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`authored three books with the MIT Press, including Musimathics, a two-volume
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`introduction and reference to the mathematics of music.
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`7.
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`I have been a Software Architect for multiple consumer and
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`professional products for large international electronics companies and have
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`sustained a long and successful career at the cutting edge of software development
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`and multimedia computing.
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`8.
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`I am experienced in a variety of computer science domains, ranging
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`from embedded systems, digital home entertainment systems, graphical user
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`interfaces, real-time operating systems, parallel processing systems, signal
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`processing computers, device drivers, and software for film, music, and audio. I
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`have extensive experience in use of multiprocessor/multicore architectures to solve
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`problems in digital audio signal processing. I have also provided expertise in
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`compiler design, file systems, operating systems, handheld networked Personal
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`Information Management (PIM) devices, network audio streaming systems,
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`wireless remote control systems, digital loudspeaker systems, digital home
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`entertainment systems, enterprise email systems, software for factory automation
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`systems, interactive databases, enterprise software for managing of music libraries,
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`MPEG audio compression, on-line gaming, composition systems, digital camera
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`hardware and software, digital audio hardware and software technologies, and
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`more.
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`9.
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`I also have over seventeen years of experience as an expert witness on
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`numerous cases. Most recently, I testified at an International Trade Commission
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`Investigation No. 337-TA-882 hearing involving the Weel ‘873 and ‘099 patents. I
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`have also testified before a jury under oath, have provided Markman claim
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`construction testimony, and have presented exhibits and Markman tutorials in
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`federal court in trademark infringement, inequitable conduct, and patent
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`technology litigation. I have been retained as an expert witness in such areas as
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`software for handheld networked Personal Information Management (PIM)
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`devices, digital music player software, enterprise email systems, software for
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`factory automation systems, digital camera hardware and software, internet
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`customer tracking systems, SAP billing systems, interactive databases, software for
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`management of music libraries, Digital Audio Recording Devices (DARD), MPEG
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`audio compression, on-line gaming, human interface design, music composition
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`systems, MIDI systems, network audio streaming systems, rendering of 3D digital
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`audio, and digital audio hardware and software technologies.
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`10.
`
`In connection with forming my opinions, I reviewed the documents
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`listed in Exhibit B. Particularly, I analyzed the ‘873 patent and the art on which
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`the trial was instituted. I also reviewed the September 19, 2013, Declaration of V.
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`Michael Bove, Jr. (“Bove Declaration”) and the Institution Decision dated March
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`20, 2013 (“the Institution Decision”) as they relate to the grounds instituted by the
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`Board. In addition, I also attended Dr. Bove’s May 29, 2014, deposition. My
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`opinions are set forth below. I make these statements based upon facts and matters
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`within my own knowledge or on information provided to me by others. All such
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`facts and matters are true to the best of my knowledge and belief.
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`II. RELEVANT LEGAL STANDARDS
`I understand from counsel that in the inter partes review proceeding,
`11.
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`such as this one, the claims of a patent are construed from the perspective of one of
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`ordinary skill in the art at the time of the claimed invention and are given their
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`broadest reasonable construction consistent with the specification.
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`12.
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`I understand that the ‘873 patent stems from an application filed on
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`May 5, 2004. Therefore, the relevant time for both claim construction and any
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`invalidity analysis is May 5, 2004. Based on my education, qualifications and
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`experience, I believe that I am qualified to provide opinions about how one of
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`ordinary skill in the art in May 2004 would have understood the prior art and the
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`‘873 patent.
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`13.
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`It is my understanding that an invention is unpatentable if the
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`differences between the invention and the prior art are such that the subject matter
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`as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art. I further understand that obviousness is
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`determined by evaluating: (1) the scope and content of the prior art, (2) the
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`differences between the prior art and the claim, (3) the level of ordinary skill in the
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`art, and (4) secondary considerations of non-obviousness. To establish
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`obviousness based on a combination of the elements disclosed in the prior art, it is
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`my understanding that a petitioner must identify a specific combination that
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`teaches all limitations and establish that a person of ordinary skill in the art at the
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`time of the claimed invention would have found it obvious to make that
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`combination.
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`14. To guard against hindsight and an unwarranted finding of
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`obviousness, I understand that an important component of any obviousness inquiry
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`is whether the petitioner has identified any teaching, suggestion or motivation that
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`would have prompted a person of ordinary skill in the art to make the claimed
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`combination and have a reasonable expectation of success in doing so. I
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`understand that this test should not be rigidly applied, but can be an important tool
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`to avoid the use of hindsight in the determination of obviousness.
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`15.
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`I further understand that the teaching, suggestion, or motivation may
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`be found explicitly or implicitly: (1) in the prior art; (2) in the knowledge of those
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`of ordinary skill in the art that certain references, or disclosures in those references,
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`are of special interest or importance in the field; or (3) from the nature of the
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`problem to be solved. Additionally, I understand that the legal determination of
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`the motivation to combine references allows recourse to logic, judgment, and
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`common sense. In order to resist the temptation to read into prior art the teachings
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`of the invention in issue, however, it should be apparent that the expert is not
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`conflating “common sense” and what appears obvious in hindsight.
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`16.
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`I understand that if the teachings of a prior art reference would lead a
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`person of ordinary skill in the art to make a modification that would render another
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`prior art device inoperable, then such a modification would generally not be
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`obvious. I also understand that if a proposed modification would render the prior
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`art invention being modified unsatisfactory for its intended purpose, then there is
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`no suggestion or motivation to make the proposed modification.
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`17.
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`I understand that it is improper to combine references where the
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`references teach away from their combination. I understand that a reference may
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`be said to teach away when a person of ordinary skill in the relevant art, upon
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`reading the reference, would be discouraged from following the path set out in the
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`reference, or would be led in a direction divergent from the path that was taken by
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`the applicant. In general, a reference will teach away if it suggests that the line of
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`development flowing from the reference’s disclosure is unlikely to be productive
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`of the result sought by the patentee. I understand that a reference teaches away, for
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`example, if (1) the combination would produce a seemingly inoperative device, or
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`(2) the references leave the impression that the product would not have the
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`property sought by the patentee. I also understand, however, that a reference does
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`not teach away if it merely expresses a general preference for an alternative
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`invention but does not criticize, discredit, or otherwise discourage investigation
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`into the invention claimed. Finally, I understand that dependent claims contain all
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`of the limitations of the claims from which they depend.
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`III. BACKGROUND OF THE PROCEEDING
`I understand that Yamaha Corporation of America (“Petitioner”) filed
`18.
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`a petition requesting an inter partes review of claims 1, 2, 4-13, 15-31, 33-42, and
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`44-46 of the 873 patent. I understand that the Patent Trial and Appeals Board (the
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`“Board”) instituted this proceeding on two grounds of obviousness as indicated in
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`the table below.
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`References
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`Basis
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`Challenged Claims
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`Bi and Erekson
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`§ 103(a)
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`1, 2, 6-12, 15-31, 35-41, and 44-46
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`Bi, Erekson, and Janik
`‘955
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`§ 103(a)
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`13 and 42
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`19.
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`I also understand that Petitioner submitted proposed constructions for
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`four claim terms: “identifier,” “directing the second device to receive a media
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`item,” “download”, and “stream.” Pet. at 6-9. The Patent Owner responded to
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`Petitioner’s proposed constructions and proposed alternative constructions for the
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`terms. Prelim. Resp. at 8-12.
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`20.
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`I further understand that the Board did not adopt the claim
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`constructions as proposed by Petitioner and Petitioner’s expert, Dr. Bove, or as
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`proposed by the Patentee in its preliminary response. Instead, the Board
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`determined that “identifier” and “directing the second device to receive a media
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`item” are apparent in the context of the claims, and that “download” and “stream”
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`have well-established ordinary meanings. The Board decided that these claim
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`terms, and all other terms in the challenged claims, are to be given their ordinary
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`and customary meaning. Inst. Decision at 9-10.
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`IV. DEFINITION OF THE PERSON OF SKILL IN THE ART
`I understand that the Patentee proposed a definition of a person of
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`ordinary skill in the art as having a bachelor’s degree in computer science or
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`electrical engineering and one year of practical experience with networked media.
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`I also understand that the Petitioner, on the other hand, proposed that a person of
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`ordinary skill in the art would have at least a bachelor’s degree in computer
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`science or electrical engineering and at least one year of practical experience. It is
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`my opinion that the Petitioner’s definition is not correct because it is open-ended
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`and overly expansive, and would include persons who are over qualified to be
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`considered to have “ordinary skill in the art.” The Patentee’s definition, on the
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`other hand, is closed-ended and more accurately reflects the qualifications and
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`experience that a typical person of skill in the art would have had in 2004.
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`V. THE STATE OF THE PRIOR ART
`I understand that the invalidity analysis starts at the relevant date of
`22.
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`the technology at issue. As stated above, the relevant date for purposes of the ‘873
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`patent is the filing date of the earliest priority application, which is May 5, 2004.
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`23. The ‘873 patent is generally directed to accessing a playlist by a first
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`device, for example, from a central server, and directing from the first device a
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`second device to play selected media items off of the playlist.
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`24.
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`In 2004, the primary mode of consumer digital audio media
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`distribution was by compact discs (“CDs”), as well as by digital video disks
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`(“DVDs”) for digital video media. (Bove Tr., Ex. 2012 at 120:5-121:19) In the
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`early 2000’s, the availability of technology that allowed for compression of digital
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`music and video files, for example, MPEG technology, such as MP3 for
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`compression of audio files, began to allow convenient storage of multiple media
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`files on a hard drive of a personal computer. Media compression provided by, for
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`example, MPEG and MP3 standards allowed the data load on networks, storage
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`systems, and microprocessors to be accommodated, enabling the delivery of audio
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`and video media across networks to personal computers. Users could then
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`download media from personal computers to handheld media players such as MP3
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`players. The media players could then be detached and carried portably, typically
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`playing music via headphones.
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`25. At the time of invention of the ‘873 patent, the ability of consumers to
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`share media files compressed via MP3 compression technology was being
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`challenged by copyright holders. Copyright owners were concerned that, because
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`digital media did not degrade on being copied the way analog media previously
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`had, that copyright protections were being undermined by Internet media sharing
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`services such as Napster. These legal battles discouraged consumer adoption of
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`networked digital media generally, and discouraged persons of ordinary skill in the
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`art from developing these technologies.
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`(See http://en.wikipedia.org/wiki/A%26M_Records,_Inc._v._Napster,_Inc. (site
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`last visited on 6/6/2014); Ex. M1, A&M Records, Inc. v. Napster, Inc. –
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`Wikipedia.pdf, see especially the discussion of “Criticism and Impact”)
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`26. Nonetheless, since the early 2000’s, advances in networking speed
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`made file sharing more feasible. With regard to audio files, MP3 technology was
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`utilized, for example, to copy media from a CD (i.e., “to rip the CD”) and store the
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`media on a computer for later playback by the computer that was equipped with a
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`sound card. For example, the Windows Media Player application available from
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`Microsoft in 2004 could rip CDs from the CD-ROM drive of a personal computer.
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`See, e.g., Ex. C, “Windows Media Player 9 Series, Copying music from CDs, ©
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`1 Ex. A-N are the exhibits referenced in and appended to this Declaration of
`Gareth Loy, D.M.A.
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`2000-2002 Microsoft Corporation”) MP3 technology also facilitated downloading
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`of media from servers on the Internet onto a computer, although the download
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`speed was limited by network bandwidth available in those times.
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`27. Though the MP3 standard was published in 1983, it was not until the
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`early 2000’s that MP3 began to be widely used by consumers. (Bove Tr., Ex. 2012
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`at 120:21-24) For example, Napster, an independent peer-to-peer file sharing
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`service that operated between June 1999 and July 2001, allowed users to easily
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`share their MP3 files. Portable MP3 players began to be available in the late
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`1990’s and early 2000’s. For example, the iPod from Apple computer was
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`released on October 23, 2001.
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`(http://www.ilounge.com/index.php/articles/comments/instant-expert-a-
`brief-history-of-ipod/#2004 (site last visited on 6/6/2014); Ex. E, “A Brief
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`History of iPod.pdf,” see, e.g., p. 1 “Key Milestones in the Life of the iPod 2001”).
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`MP3 media ripped from a CD or purchased online could be stored on a computer,
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`and from there could be downloaded onto a portable MP3 player such as the iPod.
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`These portable devices depended upon the services of a general-purpose computer
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`such as a desktop or laptop personal computer to provide networking, computation,
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`input/output ports, and bulk storage. The usage paradigm for an MP3 player, for
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`example, was to tether it via a cable to a computer, run an application on the
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`computer such as Microsoft Windows Media Player or Apple iTunes that accessed
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`a web site containing media content, and use that application to download media
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`and playlists to the computer, and then, from the computer, to download a subset of
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`the media to the MP3 player (limited because of the size of then-current memory
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`technologies), which could then be detached and used portably.
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`28.
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`In 2004, remote control of player devices was effected by the use of
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`conventional optical infrared (CIR) technology, where a simple handheld device
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`such as a dedicated remote control for a television or CD player was made up of
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`simple circuits responsive to buttons a user would press; an infrared transmitter on
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`the remote control would then direct a modulated infrared light beam to an infrared
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`sensor on an associated player device communicating a simple code to control the
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`transport mechanism or adjust the volume level of the player device.
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`(http://www.phidgets.com/docs/IR_Remote_Control_Primer (site last visited
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`on 6/6/2014); Ex. G, “IR Remote Control Primer - Phidgets Support.pdf”)
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`Importantly, these simple dedicated remote controls were not provisioned to
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`receive anything other than button presses by the person using the remote.
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`Specifically, they were not designed to connect to the Internet, display a device
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`identifier, allow a user to select a displayed device, receive and display a playlist or
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`a list of playlists, receive a media item, play a media item over speakers on the
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`remote, and allow the user to direct the selected device to play the selected media
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`item by retrieving that item from a content server such that no user input was
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`required at the player device.
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`29. CIR technology, introduced, as Dr. Bove points out (Bove Decl., ¶14)
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`in the 1980’s, was only designed for unidirectional transmission of individual low-
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`bandwidth control codes from a handheld remote control to a consumer electronics
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`device such as a TV or CD player. (http://www.howstuffworks.com/inside-
`rc.htm/printable (site last visited on 6/6/14); Ex. H, “HowStuffWorks Inside a
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`TV Remote Control.pdf”) CIR remote controls are still ubiquitous even today
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`because of their simplicity and low cost, and because the typical usage paradigm of
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`most media players is that the user must be in line-of-sight with (typically in the
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`same room as) the controlled system. Optical technologies such as IrDA (Infrared
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`Data Association) have been developed to improve data throughput and reliability
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`(e.g., for communications between a personal computer and an IrDA mouse or
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`keyboard), but IrDA has even shorter range than standard CIR systems (IrDA
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`range is one meter) and are subject to the same line-of-sight restrictions as CIR
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`devices. (http://www.irda.org (site last visited on 6/6/2014); Ex. I, “Welcome to
`IrDA.pdf”; http://en.wikipedia.org/wiki/Infrared_Data_Association (site last
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`visited on 6/6/2014); Ex. J, “Infrared Data Association - Wikipedia, the free
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`encyclopedia.pdf”)
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`30. Although in 2004, a handful of networked and cellular-enabled
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`portable devices with general purpose processors such as the Pocket PC
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`Ex. K, “Pocket PC 2002 - Wikipedia, the free encyclopedia.pdf”) and the
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`(http://en.wikipedia.org/wiki/Pocket_PC_2002 (site last visited on 6/6/2014);
`Smartphone (http://en.wikipedia.org/wiki/Smartphone (site last visited on
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`6/6/2014); Ex. L, “Smartphone - Wikipedia, the free encyclopedia.pdf”) were
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`available, in the time frame of the ‘873 patent, wireless handheld remote control
`
`systems did not allow a mobile device to display a device identifier, allow a user to
`
`select a displayed device, receive and display a playlist, and allow the user to direct
`
`the selected device to play the selected media item by retrieving that item from a
`
`content server, or perform other capabilities of the Weel ‘873 remote. These
`
`capabilities would eventually evolve in subsequent years as the utility of such
`
`advanced mobile devices was further developed.
`
`31.
`
`Indeed, Dr. Bove testified that he was not aware of anyone in 2004
`
`selling a PDA (e.g., a pocket PC) that would be able to control a playback device
`
`to play a media item obtained from a content server. (Bove Tr., Ex. 2012, at
`
`129:7-130:1. Dr. Bove was also not aware of any infrared remote (CIR) controls
`
`in 2004 that had bidirectional communication with player devices. (Bove Tr., Ex.
`
`2012, at 130:7-12).
`
`-15-
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
`
`
`
`IPR2013-00598 /U.S. PATENT 8,214,873
`
`VI. THE ‘873 PATENT
`In comparison to the prior art systems described above as well as
`32.
`
`those brought forward by Petitioner, Weel’s inventions, as described in the ‘873
`
`patent, dramatically changed the way users control, direct, and experience media.
`
`For example, with Weel’s system, one could receive a playlist on a wireless
`
`handheld remote control directly from a playlist server via a network (Fig. 1; Bove
`
`Tr. Ex. 2012, at 138:9-17; 145:22-146:4; 163:11-164:3), and play it either directly
`
`through loudspeakers on the remote or through one’s home sound system by
`
`directing the sound system to retrieve the content from a content server (Bove Tr.
`
`Ex. 2012, at 168:9-24), and one could then carry the remote (either with the
`
`received playlist in its memory, or received again at the destination) to a friend’s
`
`house across town and direct the friend’s sound system to play the same (or other)
`
`content from the same (or other) content server. There was no capability similar to
`
`this in May 2004.
`
`33. Weel further envisioned an embodiment where a user need not even
`
`be within miles of the player device in order to control it if the remote control were
`
`a cell phone. (‘873 at 14:25-48 and Fig. 8) In this way, the user could, for
`
`example, control playback on any system to which the user had access from any
`
`location reachable by cell phone service by utilizing a server to bridge between the
`
`cell phone network and the player system’s network (‘873 at 14:25-48 and Fig. 8).
`
`-16-
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
`
`
`
`IPR2013-00598 /U.S. PATENT 8,214,873
`
`For example, the user could control his/her home system or the distant friend’s
`
`system, or any other to which he/she had access, from a remote third location such
`
`as an office or a car or a mountain top, so long as there is cellular service, and the
`
`cellular remote user’s credentials allow access to the players. Weel’s invention
`
`also provides lengthy disclosure of device discovery, user ID, and password
`
`protection that would be appropriate for such a powerful system. (‘873 at 13:34-
`
`15:5) Thus, Weel invented a digital entertainment network that is “a fully
`
`integrated plug and play technology platform that delivers secure anytime,
`
`anywhere, on-demand multimedia content for digital home systems.” (‘873 at
`
`7:12-15) There was no capability similar to this in May 2004.
`
`34.
`
`Integral to Weel’s entertainment network is an independent, adaptable
`
`remote control that could be used with various player devices to play various,
`
`specified media content. For example, a remote control of Weel could be used in
`
`different locations with different player devices via a network to receive playlists,
`
`select media items for playback, receive media from a content server, and play the
`
`media on the player device that the user selected. The remote control “controls a
`
`plurality of second devices, such as a television, a DVD player, and a stereo
`
`system.” (‘873 at 9:34-36; Bove Tr. Ex. 2012, at 172:9-14, Petitioner’s expert Dr.
`
`Bove agreeing that one of ordinary skill in the art would understand that the first
`
`device in the ‘873 patent directs the second device to play a selected media item.)
`
`-17-
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
`
`
`
`IPR2013-00598 /U.S. PATENT 8,214,873
`
`35. Furthermore, Weel’s invention solved the problem of the prior art
`
`where users had “little or no control over which music selections are played.”
`
`(‘873 at 2:37-43)
`
`36. Weel replaced prior art conventional content agnostic remotes (which
`
`were limited to basic operations such as selecting a previous track or next track,
`
`without specifying which particular media is referenced) with an intelligent
`
`networked remote that was capable of displaying and receiving user input with
`
`respect to player device selection as well as media item selection, and directing the
`
`player device to receive a media item identified from a content server (e.g., the
`
`Internet). Ways in which Weel’s wireless handheld remote control was uniquely
`
`forward-looking additionally include at least the following features: “playlists can
`
`be requested by the remote control and downloaded from the playlist server via the
`
`Internet” (‘873 at 15:32); “songs may be downloaded to the remote control” (‘873
`
`at 15:34; Bove Tr., Ex. 2012, at 165:24-166:4); “songs may be played on the
`
`remote control” (‘873 at 15:35; Bove Tr., Ex. 2012, at 168:9-24); and “listening
`
`may be via one or more speakers built into the remote control” (‘873 at 15:41;
`
`Bove Tr., Ex. 2012, at 168:9-24). There was no capability similar to this in May
`
`2004.
`
`37. Weel’s invention provides for maximal efficiency and power in user
`
`experience and control of media content. It has revolutionized the user’s ability to
`
`-18-
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
`
`
`
`IPR2013-00598 /U.S. PATENT 8,214,873
`
`use and interact with the media by enabling the user to control the device on which
`
`to play the media and to select a specific media item to be played from a playlist.
`
`38. Weel gave users the power to select player devices, select playlists,
`
`and select specific media items from those playlists providing “secure anytime,
`
`anywhere, on-demand multimedia content for digital home systems.” (‘873 at
`
`15:32-41) The result is a dramatic increase in the power provided to users to
`
`control their media experience.
`
`
`39. As shown in Fig. 1 of the ‘873 patent, the architecture of the Weel
`
`inventions describes a first device 13 which acts as a controller (‘873 at 8:57-58;
`
`9:27-29), a second device 14 which typically acts as a player device (‘873 at 9:29-
`
`32), which the first device can select with a user first input (‘873 at 11:60-67), and
`
`-19-
`
`BHM Ex. 2001 (previously filed in IPR2013-00598 as Ex. 2011)
`
`
`
`IPR2013-00598 /U.S. PATENT 8,214,873
`
`a playlist server/content server device which is in bi-directional communication
`
`with the Internet 11 as well as with the first device 13 and second device 14 (‘873
`
`at 8:65-9:7). According to one embodiment of the invention, the first device 13 is
`
`capable of directing the second device 14 to communicate w
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