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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`Petitioner,
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`v.
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`BLACK HILLS MEDIA, LLC
`Patent Owner.
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`
`IPR2015-00334
`Patent No. 8,050,652
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`8,050,652 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
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`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1)) ............................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .............................................. 1
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ......................................................... 1
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ...................................... 3
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ................................................. 3
`
`II.
`
`FEES (37 C.F.R. § 42.103) ........................................................................................... 3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ............................................................................................................... 4
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) .............................................. 4
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Citation of Prior Art .......................................................................................... 4
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1)& (b)(2)) .......... 5
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) and Effective Filing
`Date ...................................................................................................................... 6
`
`1.
`
`2.
`
`Claim Construction ................................................................................ 6
`
`Effective Filing Date ............................................................................. 7
`
`Person of Ordinary Skill in the Art ................................................................. 7
`
`Unpatentability of the Construed Claims (37 C.F.R. §
`42.104(b)(4)) ........................................................................................................ 8
`
`G.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ........................................... 8
`
`IV.
`
`SUMMARY OF THE ‘652 PATENT ....................................................................... 8
`
`A. Overview of the ‘652 Patent ............................................................................ 8
`
`B.
`
`Prosecution History Summary of the ‘652 Patent ...................................... 11
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`
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`THE ‘652 PATENT ................................................................................................... 11
`
`A.
`
`Prior Art ............................................................................................................ 12
`
`1.
`
`2.
`
`3.
`
`U.S. Patent No. 7,187,947 to White et al. (Ex. 1003) ...................... 14
`
`U.S. Patent No. 6,199,076 to Logan et al. (Ex. 1004) ..................... 18
`
`U.S. Patent No. 7,020,704 to Lipscomb et al. (Ex. 1005) ............... 23
`
`B.
`
`Ground I: White Renders Obvious Each Of Claims 1, 3-4, 6-7,
`10, 13, 42, 44-45, 47-48, 50, 52 and 55 Under 35 U.S.C. § 103 ................ 28
`
`C. Ground II: The Combination of Logan and Lipscomb Renders
`Each of Claims 1,3-4, 6-7,10-11,13, 42, 44-45, 47-50, 52 and 55
`Obvious Under 35 U.S.C. § 103 .................................................................... 40
`
`VI. CONCLUSION........................................................................................................... 58
`
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`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
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`Ex. 1013
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`Ex. 1014
`
`Ex. 1015
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
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`Ex. 1020
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`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,050,652
`File History for U.S. Patent No. 8,050,652
`U.S. Patent No. 7,187,947 to White et al. (“White”).
`U.S. Patent No. 6,199,076 to Logan et al. (“Logan”)
`U.S. Patent No. 7,020,704 to Lipscomb et al. (“Lipscomb”)
`U.S. Provisional Patent Application No. 60/157,736 (“the ‘736
`application” or “the ‘736 app”）
`U.S. Provisional Patent Application No. 60/176,829 (“the ‘829
`application” or “the ‘829 app.”)
`U.S. Provisional Patent Application No. 60/176,830 (“the ‘830
`application” or “the ‘830 app.”)
`U.S. Provisional Patent Application No. 60/176,833 (“the ‘833
`application” or “the ‘833 app.”)
`U.S. Provisional Patent Application No. 60/177,063 (“the ‘063
`application” or the “063 app.”)
`U.S. Provisional Patent Application No. 60/177,783 (“the ‘783
`application” or “the ‘783 app.”)
`U.S. Provisional Patent Application No. 60/177,867 (“the ‘867
`application” or “the ‘867 app.”)
`U.S. Provisional Patent Application No. 60/177,884 (“the ‘884
`application” or “the ‘884 app.”)
`Decision on Institution of Inter Partes Review Pursuant to 37 C.F.R. §
`42.108 in Yamaha Corp. of America v. Black Hills Media, LLC, Case
`IPR2013-00594 (March 20, 2014)
`Declaration of Kevin Jeffay, Ph.D.
`Curriculum vitae of Kevin Jeffay, Ph.D.
`U.S. Patent No. 5,168,481 to Culbertson et al. (“Culbertson”)
`U.S. Patent No. 5,616,876 to Cluts (“Cluts”)
`Nielsen, J., Desurvire, H., Kerr, R., Rosenberg, D., Salomon, G.,
`Molich, R., and Stewart, T., “Comparative Design Review: An
`Exercise in Parallel Design,” Proc. ACM INTERCHI’93 Conf. (Apr.
`24-29, 1993) (“Nielsen”)
`Hacker, S. “MP3: The Definitive Guide by Scot Hacker” March, 2000
`(Springer) (“Hacker”)
`
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`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm U.S.A., Inc. (collectively “LG” or “petitioner”) respectfully submit this
`
`petition for inter partes review (IPR) of U.S. Patent No. 8,050,652 (“the ’652 Petition”)
`
`concurrently with a Motion for Joinder under 35 U.S.C. § 315(c) and 37 C.F.R.
`
`§ 42.122(b). Petitioner requests institution of IPR and party joinder with the pending
`
`instituted IPR titled Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-
`
`00737 (“the Samsung IPR”).
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest for this Petition for Inter Partes Review (“IPR”) are
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc. and LG Electronics MobileComm
`
`U.S.A. Inc.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`Black Hills Media, LLC (“Black Hills”) asserted the ’652 Patent against LG and
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`others in Certain Media Devices, including Televisions, Blu-Ray Disc Players, Home Theater
`
`Systems, Tablets and Mobile Phones, Components Thereof and Associated Software, Inv. No.
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`337-TA-882 (U.S.I.T.C., filed May 13, 2013) (“the ITC Investigation”) and Black Hills
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`Media, LLC v. LG Electronics, Inc., 1:13-cv-00803 (filed May 6, 2013) (“the district court
`
`litigation”). The ’652 patent was challenged by Samsung in IPR2014-00737, as noted
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`above. It was also challenged in Yamaha Corp. of Am. V. Black Hills Media LLC,
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`IPR2013-00594 (Sept. 18, 2013).
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`The ’652 Patent has been asserted in the following litigations:
`
`Black Hills Media LLC v. Logitech Inc., et al.
`
`2-13-cv-06055 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Sonos Inc.
`
`2-13-cv-06062 CACD Aug. 19, 2013
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`Black Hills Media LLC v. Pioneer Corp., et al.
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`2-13-cv-05980 CACD Aug. 19, 2013
`
`Black Hills Media, LLC v. LG Elect., Inc.
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`1-13-cv-00803 DED May 6, 2013
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`Black Hills Media, LLC v. Toshiba Corp.
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`1-13-cv-00805 DED May 6, 2013
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`Black Hills Media, LLC v. Samsung Elect. Co.
`
`Ltd.
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`2-13-cv-00379 TXED May 6, 2013
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`Black Hills Media, LLC v. Sharp Corp.
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`1-13-cv-00804 DED May 6, 2013
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`Black Hills Media, LLC v. Panasonic Corp.
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`1-13-cv-00806 DED May 6, 2013
`
`Black Hills Media LLC v. Yamaha Corp. Am.
`
`1-12-cv-00635 DED May 22, 2012
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`Black Hills Media LLC v. Pioneer Corp.
`
`1-12-cv-00634 DED May 22, 2012
`
`Black Hills Media LLC v. Sonos Inc.
`
`1-12-cv-00637 DED May 22, 2012
`
`Black Hills Media LLC v. Logitech Inc.
`
`1-12-cv-00636 DED May 22, 2012
`
`Black Hills Media LLC v. Logitech Inc.
`
`2-13-cv-06055 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Sonos Inc.
`
`2-13-cv-06062 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Logitech Inc.
`
`1-12-cv-00636 DED May 22, 2012
`
`Black Hills Media, LLC v. Yamaha Corp. Am.
`
`2:13-cv-06054 CACD May 22, 2012
`
`Black Hills Media, LLC v. Yamaha Corp. Am.
`
`8:14-cv-00101 CACD Jan. 21, 2014
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`Black Hills Media, LLC v. Pioneer Corp.
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`2:14-cv-00471 CACD Jan. 21, 2014
`
`C.
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`
`Back-up Counsel
`
`Dori Johnson Hines (Reg. No. 34,629)
`
`Jonathan R. Stroud (Reg. No. 72,518)
`
`dori.hines@finnegan.com
`
`jonathan.stroud@finnegan.com
`
`Finnegan, Henderson, Farabow, Garrett
`
`Finnegan, Henderson, Farabow, Garrett
`
`& Dunner, LLP
`
`& Dunner, LLP
`
`901 New York Avenue, N.W.
`
`901 New York Avenue, N.W.
`
`Washington, D.C. 20001-4413
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`Washington, D.C. 20001-4413
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`T: (202) 408-4250; F: (202) 408-4400
`
`T: (202) 408-4469; F: (202) 408-4400
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`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Service information for lead and back-up counsel is provided in the designation
`
`of lead and back-up counsel above. Petitioner consents to electronic service.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`The undersigned authorizes (a) the Office to charge $23,800 ($9,000 request
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`fee; $14,000 post-institution fee and $800 post-institution excess claims fees) to
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`Deposit Account No. 06-0916 for the fees set forth in 37 C.F.R. § 42.15(a) for this
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`Petition; and (b) payment for any additional fees that might be due in connection with
`
`this Petition to be charged to Deposit Account 06-0916.
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`
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘652 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ‘652 Patent on the grounds identified
`
`in the present petition.
`
`B.
`
`Citation of Prior Art
`
`Exhibit Reference
`
`Ex. 1003 U.S. Patent No. 7,187,947 to White et al.
`
`Filing Date Availability as
`Prior Art
`35 U.S.C.
`
`March 28,
`
`(“White”)
`
`2000
`
`§ 102(e)
`
`Ex. 1004 U.S. Patent No. 6,199,076 to Logan et al.
`
`Oct. 2, 1996 35 U.S.C. § 102(e)
`
`(“Logan”)
`
`Ex. 1005 U.S. Patent No. 7,020,704 to Lipscomb et
`
`Oct. 5, 20001 35 U.S.C. § 102(e)
`
`al. (“Lipscomb”)
`
`Ex. 1006 U.S. Provisional Patent Application No.
`
`Oct. 5, 1999 35 U.S.C. § 102(e)
`
`60/157,736 (“the ‘736 app.”)
`
`Ex. 1007 U.S. Provisional Patent Application No.
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`Jan. 19, 2000 35 U.S.C. § 102(e)
`
`
`1 As discussed below in Section V.A.3 below, the priority date of this patent for
`
`Section 102(e) purposes is not later than January 24, 2000.
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`60/176,829 (“the ‘829 app.”)
`
`Ex. 1008 U.S. Provisional Patent Application No.
`
`Jan. 19, 2000 35 U.S.C. § 102(e)
`
`60/176,830 (“the ‘830 app.”)
`
`Ex. 1009 U.S. Provisional Patent Application No.
`
`Jan. 19, 2000 35 U.S.C. § 102(e)
`
`60/176,833 (“the ‘833 app.”)
`
`Ex. 1010 U.S. Provisional Patent Application No.
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`Jan. 19, 2000 35 U.S.C. § 102(e)
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`60/177,063 (“the ‘063 app.”)
`
`Ex. 1011 U.S. Provisional Patent Application No.
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`Jan. 24, 2000 35 U.S.C. § 102(e)
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`60/177,783 (“the ‘783 app.”)
`
`Ex. 1012 U.S. Provisional Patent Application No.
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`Jan. 24, 2000 35 U.S.C. § 102(e)
`
`60/177,867 (“the ‘867 app.”)
`
`Ex. 1013 U.S. Provisional Patent Application No.
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`Jan. 24, 2000 35 U.S.C. § 102(e)
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`60/177,884 (“the ‘884 app.”)
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`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1)& (b)(2))
`
`C.
`The relief requested by Petitioner is that claims 1, 3-4, 6-7, 10-11,13, 42, 44-45,
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`47-50, 52 and 55 of the ‘652 Patent be found unpatentable and cancelled from the
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`‘652 Patent on the following grounds:
`
`Ground Claims
`
`Basis
`
`I
`
`1,3-4, 6-7,10,13, 42, 44-45,
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`Obvious under 35 U.S.C. § 103 in
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`47-48, 50, 52 and 55
`
`view of White
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`
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`II
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`1,3-4, 6-7, 10-11,13, 42, 44-
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`Obvious under 35 U.S.C. § 103 in
`
`45, 47-50, 52 and 55
`
`view of Logan and Lipscomb
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`D. Claim Construction (37 C.F.R. § 42.104(b)(3)) and Effective Filing
`Date
`1.
`A claim subject to IPR is given its “broadest reasonable construction in light of
`
`Claim Construction
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`the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`Each of independent claims 1 and 42 recites “playlist,” and respectively recites
`
`a “playlist assigned to the electronic device”. In IPR2013-00594 (Ex. 1014), the
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`Board construed “playlist” and a “playlist assigned to the electronic device” to
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`respectively mean “a list of audio files or URLs of where the audio files were retrieved
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`from” and “a list of audio files or URLs of where the audio files were retrieved from
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`directed to a particular device selected by a user.” Ex. 1014, pp. 11-13. Petitioner
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`submits that, for the reasons provided by the Board in IPR2013-00594, these
`
`constructions should apply to the meaning of these terms in the present proceeding as
`
`well.
`
`Claims 1 and 42 recite “wherein ones of the plurality of songs are not stored on
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`the electronic device.” In IPR2013-00594, the Board construed this phrase to mean
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`“wherein at least one of the plurality of songs is not stored on the electronic device.”
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`Ex. 1014, pp. 13-14. Petitioner submits that, for the reasons provided by the Board in
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`IPR2013-00594, this construction should apply to the meaning of this term in the
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`present proceeding as well.
`
`2.
`The ‘652 Patent resulted from a chain of applications beginning in 1998 with
`
`Effective Filing Date
`
`U.S. Provisional Application No. 60/072,127 (filed on January 22,1998) (“the ‘127
`
`app.”), and U.S. Patent Application No. 09/096,703 (filed on June 12,1998) (“the ‘703
`
`app.”). The ‘652 Patent also claims priority to U.S. Provisional Application No.
`
`60/246,842 (filed on November 8, 2000) (“the ‘842 app.”) and U.S. Patent
`
`Application No. 09/805,470 (filed on March 12, 2001) (“the ‘470 app.”). The ‘652
`
`Patent issued from U.S. Patent Application No. 11/563,232 (filed on November 27,
`
`2006), which is a continuation of the ‘470 application and claims priority to the ‘470
`
`and ‘703 applications, as well as the ‘127 and ‘842 applications.
`
`The ‘652 Patent is not, however, entitled to claim priority to each of these
`
`applications. Each of the independent claims of the ‘652 Patent recites a “playlist
`
`identifying a plurality of songs.” Playlists identifying a plurality of songs were not
`
`disclosed in the chain of applications leading to the ‘652 Patent until the ‘842
`
`application, which was filed on November 8, 2000. For that reason, the earliest
`
`possible priority date of the claims of the ‘652 Patent is November 8, 2000.
`
`Person of Ordinary Skill in the Art
`
`E.
`A person of ordinary skill in the art of the ‘652 Patent at the time of the alleged
`
`invention (“POSA”) would typically have had at least a B.S. degree in electrical
`
`engineering, computer engineering or computer science and approximately two years
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`
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`of professional experience with computer networking and multimedia technologies, or
`
`the equivalent. Jeffay Dec. ¶ 4.
`
`F. Unpatentability of the Construed Claims (37 C.F.R. § 42.104(b)(4))
`Section V, below, provides an explanation of how claims 1, 3-4, 6-7, 10-11, 13,
`
`42, 44-45, 47-50, 52 and 55 of the ‘652 Patent are unpatentable under the statutory
`
`ground(s) identified above.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`G.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge, and the relevance of the evidence to the challenge raised (including
`
`identifying specific portions of the evidence that support the challenge) are provided
`
`below in the form of explanatory text and claim charts. An Exhibit List with the
`
`exhibit numbers and a brief description of each exhibit is set forth above.
`
`IV. SUMMARY OF THE ‘652 PATENT
`A. Overview of the ‘652 Patent
`The ‘652 Patent discloses a network-enabled audio device or player for listening
`
`to a variety of audio sources. Ex. 1001, 2:16-19. In an Internet radio mode, the
`
`player receives and plays a broadcast from an Internet radio station. Id. 10:3-12,
`
`10:49-57. The player can include Internet Personal Audio Network (“IPAN”) client
`
`software, and a PC client that is in communication with the network-enabled audio
`
`device may be used to add songs or URLs corresponding to songs to a playlist on the
`
`network-enabled audio device. Id. 16:29-37; 21:40-65; 22:9-29 and Figs. 15, 19B.
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`Further, the user can access IPAN software running on a server to assign playlists to
`
`the user’s different network-enabled audio devices. Id. 22:36-48.
`
`Additionally, the IPAN software can identify and check whether certain songs
`
`on the playlist of the network-enabled audio device are missing on that device. Ex.
`
`1001, 28:20-30. If the IPAN software determines that another device accessible to
`
`the user has one or more of the missing songs, then the software provides the URLs
`
`where the songs are located to the network-enabled audio device. Id. 28:31-34. The
`
`network-enabled audio device downloads these missing songs from the URLs
`
`provided by the server. Id. 28:35-38.
`
`
`
`
`
`Figure 15 of the ‘652 Patent, provided above, is a block diagram of the
`
`configuration between network-enabled audio devices and a stereo website. Ex. 1001,
`
`6:4-6. Figure 15 illustrates two network-enabled audio devices (1510 and 1520)
`
`connected to IPAN server site 1104. Id. 21:40-43. Storage spaces (1512 and 1522) of
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`network-enabled audio devices (1510 and 1520) are used to store IPAN software
`
`1526, playlist (1528 or 1530), and associated URLs and songs within the playlist. Id.
`
`21:43-57. Server site 1104 includes IPAN software 1433 and playlists (1528 and
`
`1530). Id. 21:52-57.
`
`Figure 19B of the ‘652 Patent, provided below, shows the process for assigning
`
`a playlist to a device. Ex. 1001, 6:60-61. At step 1906, a user assigns a playlist to a
`
`first device 1510. Id. 28:14-16. The system determines whether all of the songs on
`
`the playlist are stored on the hard drive of the first device 1510. Id. 28:20-22. If any
`
`(or all) of the songs are missing from the first device 1510, IPAN
`
`1433 forms a list of the remaining songs and checks the hard drive of second device
`
`1520 to determine if any of the remaining songs may be found on that device. Id.
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`28:24-30. If any of the remaining songs are found on second device 1520, then IPAN
`
`1433 will provide first device 1510 with URLs for those songs, and first device 1510
`
`will attempt to download the songs from second device 1520. Id. 28:30-43.
`
`Prosecution History Summary of the ‘652 Patent
`
`B.
`The ‘652 Patent was filed on November 27, 2006, as application number
`
`11/563,232, and resulted from a chain of applications as discussed above. Petitioner
`
`summarizes here the actions most relevant to the grounds of unpatentability set forth
`
`in the present Petition.
`
`In the Office Action dated May 23, 2011, all of the claims were provisionally
`
`rejected for double patenting. Ex. 1002, pp. 221-27. Claims 1-5, 7-9, 11-16, and 18-20
`
`were also rejected under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No.
`
`5,949,492 to Mankovitz. Id. Claims 6,10, and 17 were objected to, with the Examiner
`
`indicating that they contained allowable subject matter. Id. Each of these claims
`
`included limitations regarding receiving a playlist assigned to an electronic device from
`
`a central system, with the playlist identifying a plurality of songs, wherein ones of the
`
`songs are not stored on the electronic device. Id. pp. 62-67. The Applicants amended
`
`the independent claims by adding the limitations of claims 6,10, and 17, and also filed
`
`a terminal disclaimer. Id. pp. 274-90. The application was then allowed. Id. 298-304.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONER WILL PREVAIL WITH RESPECT TO AT
`LEAST ONE CLAIM OF THE ‘652 PATENT
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`The subject matter of claims 1, 3-4, 6-7, 10-11,13, 42, 44-45, 47-50, 52 and 55
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`of the ‘652 Patent is disclosed and taught in the prior art as explained below. As set
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`forth in § V.A.-V.C., the references and combinations utilized in Ground I and
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`Ground II render obvious each of claims 1, 3-4, 6-7, 10-11,13, 42, 44-45, 47-50, 52
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`and 55 pursuant to 35 U.S.C. § 103, and provide a reasonable likelihood that the
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`Petitioner will prevail on at least one claim. 35 U.S.C. § 314(a).
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`Prior Art
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`A.
`Paragraphs 18 to 25 of the Jeffay Declaration, Ex. 1015, describe the state of
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`the art regarding online and mobile audio services in the 1999-2000 time frame. The
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`concept of using a “playlist” to represent a list of songs or audio files so that users
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`could select, play, and manipulate various songs was well known in the art by the mid
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`to late 1990s. In the early 1990s, companies such as Microsoft, Apple, and Borland,
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`among others, were designing graphical user interfaces (GUIs) to allow users to select
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`and play music transmitted, for example, from a central database in a network, and
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`consumer products and applications with playlist functionality had become common
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`by the year 2000.
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`For example, Ex. 1017 (“Culbertson”) shows that in the context of radio
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`broadcast stations, it was known to compile a scheduled playlist from various music
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`selections and pre-recorded materials having known durations or runtimes. See e.g.,
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`Ex. 1017, 1:15-18. In one embodiment, Culbertson describes using compact disc
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`players to “sequentially play a predetermined list of musical selections and commercial
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`or informational messages.” See e.g., id. 1:50-51. Culbertson also taught using a display
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`device to display “a portion of the information contained in the playlist to allow an
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`operator to obtain information about the music . . . being played as well as those
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`selections that will be played subsequently.” See e.g., id. 2:51-55.
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`Ex. 1018, U.S. Patent No. 5,616,876 (“Cluts”) describes a system implemented
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`in an interactive network that would allow consumers to select “playlists” in the form
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`of a predetermined collection of songs, and thereafter review the contents of the
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`playlists, select songs in the playlist, build and create playlists, and display general
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`information associated with the currently playing album or song. Ex. 1018, 4:38-54,
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`11:40-43, 12:55-65, 13:24-27, 13:50-62, 15:14-25.
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`The implementation and use of playlists through a GUI on a PC to allow users
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`to select and play music transmitted from a database over a network was also well
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`known before 1999. See e.g., Ex. 1019 (“Nielsen”), pp. 414-417. Among other things,
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`in the designs presented by Nielsen a user would be able to select songs, make
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`multiple selections of songs for a particular time interval, (e.g., 45 minutes of music),
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`select random songs in a selected genre (by singer, musician, or style of music), and
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`manipulate the selected songs to pause, fast forward, skip, and rewind. See e.g., id.
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`According to Nielsen, the Home Fiber Optic Music System included various
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`features, such as providing a “player view” that mimics a CD player and a “song list
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`view.” See e.g., Ex. 1019, 416. Music could be played from two types of objects: a
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`personal CD object and a Catalog object; and the catalog object supported “query”
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`and “history lists” in the song list view. See e.g., id.
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`Similarly, generally available materials taught the typical user how to use
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`commonly available tools to compile playlists through a GUI on a PC and play music
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`transmitted over a network. See e.g., Ex. 1020 (“Hacker”). Hacker explains, “Behind
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`the scenes, a playlist is just a plan text file naming the full paths to the selected songs. .
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`. . Playlists for players that can handle streaming or broadcast MP3 can also store
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`URL’s to your favorite broadcast sites.” Id. 56.
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`Thus, as of 1999-2000, the concept of implementing playlists on a network-
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`enabled audio device to select, manage, and manipulate audio content such as songs
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`was well known in the art.
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`As Professor Jeffay explains, software to listen to Internet radio broadcasts has
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`existed ever since Internet radio broadcast began. Jeffay Dec. ¶ 25. By the late 1990s,
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`companies existed that marketed software designed to enable real-time streaming of at
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`least audio. See e.g., Ex. 1020 at 13-14. Thus, by 2000, installing freely available
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`software on one’s laptop or PC enabled the device to receive various kinds of audio
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`content, including Internet radio broadcasts. Jeffay Dec. ¶ 25. Accordingly, as made
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`clear by the above discussion of the state of the art, and the discussion of the prior art
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`below, by November 2000, the purported inventions of the ’652 Patent were well
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`known.
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`1.
`White was filed in the U.S. on March 28, 2000, and issued on March 6, 2007. It
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`U.S. Patent No. 7,187,947 to White et al. (Ex. 1003)
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`therefore qualifies as prior art to the ‘652 Patent under 35 U.S.C. § 102(e). White was
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`cited during prosecution of the ‘652 Patent, but was not used by the Examiner in any
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`rejections.
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`White is directed to a system and method for communicating selected
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`information to an electronic device. Ex. 1003, Abstract. Selected information
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`includes “audio information such as songs, on-line radio stations, on-line broadcasts,
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`streaming audio, or other selectable information.” Id. 3:59-61. White discloses
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`“allow[ing] a radio listener to create a personal playlist and to listen to this playlist in a
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`wireless atmosphere while enjoying CD quality sound.” Id. 2:7-10.
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`White’s Figure 4 is reproduced below:
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`Figure 4 shows graphical user interface 400 for displaying selectable audio
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`information. Ex. 1003, 11:6-15. Interface 400 may be displayed as a web page. Id.
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`This interface allows users to view radio dial 412 or “a current playlist selected by the
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`user or the status of [a] wirelessly communicated playlist.” Id. 11:26-33. Program
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`interface 413 is used to specify items to be displayed by radio dial 412. Id. 12:29-30.
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`These items may include Internet and broadcast radio stations or playlists. Id. 12:30-
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`36.
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`Figure 8 of White is reproduced below:
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`Figure 8 depicts a method for providing selected audio information to an
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`electronic device. Ex. 1003, 3:40-42. At step 800, the user accesses a web page such
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`as the home page shown in Figure 4. Id. 15:64-67. Then at step 801, the user selects
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`“a single song, a plurality [of] different songs, an entire album, a broadcast station,
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`streaming audio, etc. or other selectable audio information.” Id. 16:3-6. A playlist is
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`created at step 802 reflecting the user’s audio selections. Id. 16:6-9. In certain
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`embodiments, the playlist may be composed of songs selected by a friend or group of
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`friends. Id. 17:56-18:19. A list of information is compiled at step 803 including
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`information associated with the playlist, such as network or URL locations for the
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`selected audio information. Id. 16:12-14. At step 804, the user then selects a device
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`such as “a[n] automobile audio system, a home stereo system, a home computer, an
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`electronic device coupled to a home network or computer system, etc.[,] or other
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`locations or devices operable to receive the selected audio information.” Id. 16:24-28.
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`The playlist and associated information are communicated to the electronic device via
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`a wireless (step 806) or wired (step 813) connection. Id. 16:35-45. Once the
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`information is communicated to the electronic device, the user may execute the
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`playlist (steps 812, 814). Id. 17:7-18.
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`White’s electronic device “may be integrated into an audio component such as
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`a radio receiver” or “coupled to a home audio system, a portable radio system or
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`other system thereby providing a versatile electronic device operable to receive
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`wirelessly communicated selected audio information.” Ex. 1003, 9:53-57; 10:38-42.
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`In certain embodiments, White’s electronic device may be coupled to an optical disc
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`player such as a CD player or “storage medium 303 such as a high speed buffer,
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`programmable memory, or other devices operable to store information.” Id. 18:46-50,
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`8:46-52, 8:67-9:5.
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`White thus discloses at least the following elements of claims 1 and 42 of the
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`‘652 Patent: an Internet radio mode of operation (id. 3:59-61 and 2:7-10); a playlist
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`mode of operation (id. Fig. 8 elements 813, 807, 808, 16:3-4); assigning a playlist to a
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`player device, where some of the songs are not stored on the player device (id. 15:62-
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`16:34, Fig. 4,11:66-12:7, Fig. 8,17:32-35); a control system for carrying out the
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`functionality of its player device (id. 8:52-62, 12:38-54, Figs. 3-4); and receiving
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`information from a central system enabling the player to obtain missing songs from a
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`remote source (id. 16:11-19).
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`White further discloses enabling playback from an optical disc, relating to
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`claims 3 and 44 of the ‘652 Patent (id. 18:46-53); enabling playback from a data
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`storage device, relating to claims 4 and 45 of the ‘652 Patent (id. 13:18-26, 8:46-52,
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`8:67-9:5); displaying a list of Internet radio broadcast stations, relating to claims 6 and
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`47 of the ‘652 Patent (id. 12:30-37, Fig. 4, element 412); a wireless transceiver that is
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`coupled to a control system, relating to claims 7 and 48 of the ‘652 Patent (id. 9:6-14);
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`at least one speaker that is part of White’s system, relating to claims 10 and 52 of the
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`‘652 Patent (id. claim 17); and receiving and displaying a recommended song, relating
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`to claims 13 and 55 of the ‘652 Patent (id. 17:5618:19, 15:62-16:6).
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`2.
`Logan was filed on October 2,1996, and issued on March 6, 2001. It therefore
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`U.S. Patent No. 6,199,076 to Logan et al. (Ex. 1004)
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`qualifies as prior art to the ‘652 Patent under 35 U.S.C. § 102(e). A family member of
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`Logan, U.S. published patent application No. US 2004/0255340, was cited during
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`prosecution of the ‘652 Patent, but was not used by the Examiner as the basis for any
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`rejections.
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`Logan discloses an information distribution system that allows player devices to
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`play back audio program segments, such as music. Ex. 1004, 2:6-43, 5:60-65. The
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`audio player plays back the audio program segment files in accordance with a schedule
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`file, which is created in the first instance by a host server, which develops and
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`periodically transmits the schedule file to the player. Id. 2:47-50; 7:1-13. The schedule
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`file consists of a sequence of program segment identification numbers, which
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`determines the sequence of events that occur during playback. Id. 7:1-13, 12:3-15,
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`17:59-61 and Fig. 4. The schedule file is thus a “playlist”.
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`Figure 1 of Logan, which presents schematic diagrams of host server 101 and
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`player 103, is provided below.
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`Logan discloses that the player, after obtaining the schedule file, issues
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`download requests to the host server for program segments which are not already in
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`the player’s local storage. Ex. 1004, 7:4-13. In embodiments, the player only requests
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`transfer of program segments not already present in local storage. Id. 19:4-8. The
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`download operation preferably occurs at a time established by the player. Id. 8:24-29.
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`In the download operation, the player identifies specific program segments that it
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`wants to download by, for example, designating filenames or program_id values. Id.
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`8:20-38.
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`In particular, the selections made by and uploaded from the subscriber take the
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`form of a file that designates the specific program segments for download to the
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`subscriber’s player. Ex. 1004, 7:4-13. This file includes a URL field that specifies the
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`location of the file containing the specific program segment at an FTP server of the
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`host server, or potentially at any other accessible location on the Internet. Id. 17:24-
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`67, 18:60-65 and Fig. 1. The player issue