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`571-272-7822
`
`‘
`
`Paper 15
`.
`-
`Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YAMAHA CORPORATION OF AMERICA
`
`r
`
`Petitioner
`
`V.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`Case IPR2013-00597
`
`Patent 8,230,099 B2 .
`
`Before BRIAN MCNAMARA, STACEY G. WHITE, and PETER P. CHEN,
`Administrative Patent Judges. .
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Page 1 of 293
`
`LG EXHIBIT 1002
`
`Page 1 of 293
`
`LG EXHIBIT 1002
`
`
`571-272-7822
`
`‘
`
`Paper 15
`.
`-
`Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YAMAHA CORPORATION OF AMERICA
`
`r
`
`Petitioner
`
`V.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`Case IPR2013-00597
`
`Patent 8,230,099 B2 .
`
`Before BRIAN MCNAMARA, STACEY G. WHITE, and PETER P. CHEN,
`Administrative Patent Judges. .
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Page 1 of 293
`
`LG EXHIBIT 1002
`
`Page 1 of 293
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`LG EXHIBIT 1002
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`Case lPR2013-00597
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`Patent 8,230,099 B2
`
`I.
`
`INTRODUCTION
`
`Yamaha Corporation of America (“Petitioner”) filed a Petition requesting an
`
`inter partes review ofclaims. 1, 2, 6, and 9-12 ofU.S. Patent No. 8,230,099 B2
`
`(Ex. 1001, “the ’099 patent”). Paper 1 (“Pet”). Black Hills Media, LLC (“Patent
`
`Owner”) filed a preliminary response on December 26, 2013'. Paper 10 (“Prelim
`Resp”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an interpartes review is set forth in 35 U.S.C.
`§ 314(a), which provides as follows:
`I
`
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that
`the
`
`information-presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we are
`
`persuaded the information presented by Petitioner has shown a reasonable
`
`likelihood that Petitioner would prevail in showing the unpatentability of claims 1,
`2, 6, and 9-12 of the ’099 patent. Accordingly, we grant the Petition and institute
`
`an inter partes review of these claims.
`
`A. Related Proceedings
`
`On May 22, 2012, the Patent Owner filed suit against Petitioner in the US.
`District Court for the District of Delaware, alleging infringement of several
`
`patents. See Black Hills Media, LLC v. Yamaha Corp. ofAm, No. 1:12—cv—00635-
`. RGA (D..Del.). On September 12, 20.12; the'Patent Owner fileda First Amended _
`‘
`: 2
`.
`-
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`Case lPR2013—00597
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`Patent 8,230,099 B2
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`Complaint alleging, inter alia, infringement of the ’099 patent. The First Amended
`
`Complaint was served on September 19, 2012. The Patent Owner also has filed
`lawsuits alleging infringement ofthe ’099 patent against Pioneer (1:12—cv-00634),
`
`Logitech (1:12-cv—00636), Sonos (1:12-cv-00637), LG (1:13—cv—00803), Sharp
`(1:13-cv-00804), Toshiba (1:13-cv-00805), and Panasonic (1 :13-cv-00806) in the
`District of Delaware, and against Samsung (2:13—cv-00379) in the Eastern District
`of Texas. On August 5, 2013, the Delaware Court transferred four of the cases to
`
`the Central District of California, where the Yamaha (2:13-cv-06054), Pioneer
`(2: 13-cv-05980), Logitech (2:13-cv—06055), and Sonos (2:13-cv—06062) cases are
`
`now pending. Pet. 2-3.
`The Patent Owner also initiated a Section 337 action in the US.
`
`International Trade Commission against LG, Sharp, Toshiba, Panasonic, and
`
`Samsung alleging, inter alia, infringement of the ’099 patent. See Certain Digital-
`Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater
`
`Systems, Tablets and Mobile Phones, Components Thereofand Associated
`
`Software, Inv. No. 337-TA-882 (USITC). 1d. at 3.
`
`B. Real Party-in-Interest
`
`Patent Owner asserts that Petitioner fails to identify all real parties—in-
`
`interest and requests the Petition be dismissed for noncompliance with 35 U.S.CZ
`
`§ 312(a) and 37 CPR. § 42.8(b)(1). Prelim. Resp. 8-12. Patent Owner asserts that
`
`Pioneer Corporation and Pioneer Electronics (USA) Inc. (collectively “Pioneer”)
`
`should have been identified in the Petition as real parties in interest. 1d. at 9.
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`Patent Owner and Pioneer currently are engaged in a patent infringement lawsuit in
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`parallel with the patent infringement lawsuit between Patent Owner and Petitioner.
`
`Id. AV receivers, networked Blu-Ray players, and home theater systems from
`
`Pioneer and Petitioner are alleged to infringe claim 1 of the ’099 patent. Id. Thus,
`
`according to Patent Owner, Pioneer and Petitioner are aligned on claim
`construction and invalidity of the claims asserted in the district court litigation. Id.
`
`Patent Owner also argues that Petitioner’s counsel in this proceeding has spoken
`
`on behalf of Petitioner and Pioneer at a district court technology tutorial directed to
`
`the ’099 patent. Id. at 10. Finally, Patent Owner states that Pioneer’s counsel
`
`agreed to be bound by the outcome of this proceeding if the district court would
`
`agree to stay the district court litigation. Id.
`
`On this record, we are not persuaded Pioneer1s a real party in interest in this
`matter. A determination as to whether a non—party to an inter partes review is a
`
`real party-in-interest is a ‘fhighly fact-dependent question,” based On whether the
`
`' non-party “exercised or could have exercised control over a party’s participation in
`a proceeding” and the degree to which a non-party funds, directs, and controls the
`proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759-60
`
`(Aug. 14, 2012). In other words, the question before us is whether there is a non-
`party “at whose behest the petition has been filed” or a relationship “sufficient to
`
`justify applying Conventional principles of estoppel and preclusion.” Id.
`
`We are not persuaded Pioneer is in position to exercise control over
`Petitioner’s involvement in this proceeding.
`It is common for one lawyer to speak
`. on behalf of multiple parties at a technology tutorial in. patent infringement
`
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`Patent 8,230,099 B2
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`litigation. This can occur for efficiency purposes and does not, by itself, signify
`
`control over the decision making of the various entities in the litigation.
`In
`addition, while Pioneer and'Petitioner both may be interested in the patentability of
`
`the ’099 patent claims, this does not mean that the parties have the same interests.
`Litigation alliances may arise for numerous reasons, including, but not limited to,
`
`parties having a similar perspective on one or more issues in a case. However, the
`
`existence of such alliances, alone, generally does not rise to the level that would
`
`require naming the ally/co-defendant as a real party-in-interest. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,760 (Aug. 14, 2012). We, therefore, will not deny
`
`the Petition for failure to comply with 35 U.S.C. § 312(a) and 37 C.F.R.
`
`§42.8(b)(1).
`
`C. The ’099 Patent
`
`The subject matter of the challenged claims of the ’099 patent relates
`
`generally to methods and devices for sharing playlists, and in particular, to a
`
`method for presenting a playlist on a wireless handheld remote control for
`
`selection for playback on a media player device associated with, but separate from,
`
`the remote control. Ex. 1001, col. 1, ll. 25—29, col. 9, ll. 1—8.
`
`Figure 2 of the ’099 patent is reproduced below.
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`Case IPR2013-00597
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`Patent 8,230,099 B2
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`REMOTE
`
`CONTROL
`
`
`
`DEDICATED
`MEDlA PLAYER
`
`
`
`FIG. 2
`
`‘7
`
`Figure 2 depicts an embodiment of the invention with a playlist communicated
`
`from server 11 to remote control 18 via Internet 12. Ex. 1001, col. 9, ll. 1-23.
`
`After the playlist has been communicated to the remote control, the playlist may be
`
`displayed on the remote control and used'to choose which selection is to be played
`
`by dedicated media player 17. Id. at col. 9, ll. 5-8. The playlist may be
`
`communicated further to media player 17. Id. at col. 9, ll. 9-23. ThUs, playlists
`
`'
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`., may be stored in, displayed upon, and used to make selections from either
`
`'-6
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`Case IPR2013-00597
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`Patent 8,230,099 132
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`dedicated media player 17, remote control 18, or both. Idsat col. 9, ll. 21-23. As
`
`summarized by Petitioner, the display of the playlist on the remote control'allows
`
`the user to select a song to be played on the media player without physically
`
`making a selection at the media player. Pet. 5( citing EX. 1001, col. 9, ll. 9-23).
`
`D. Illustrative Claim
`
`Claims 1, 2, 6, and 9-12 are the subject of the Petition. Claims 1 and 10-12
`
`are independent claims. Independent claim 1 is reproduced as follows:
`
`1.
`
`g
`
`.
`A method comprising:
`receiving, at a wireless handheld remote control, a playlist from
`a remote. source; and
`,
`presenting, at the wireless handheld remote control, the playlist
`to a first user associated with the wireless handheld
`remote control such that the first user is enabled to select
`
`at least one item from the playlist for playback by a
`media player device which is associated with and
`separate from the wireless handheld remote control.
`
`E. Prior Art Relied Upon
`
`Petitioner relies. upon the following five prior art references.
`
`Reference
`
`
`7
`
`
`
`
`
`wo 01/17142 A2
`
`
`
` Title
`
`
`US 2002/0087996 A1
`
`
`
`Janik 69,02 .
`.
`
`Janik ’558
`
`
`
`us 2002/0068558 A1
`
`Ex. 1011
`
`US 6,502,194 B1
`
`Ex. 1010
`
`us 2002/0065902A1
`
`Ex. 1.012
`
`’
`
`.
`
`.
`
`p
`
`
`
`
`
`p
`
`g
`
`7
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`Patent 8,230,099 B2
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`F. The Assertea' Grounds
`
`Petitioner contends the challenged claims are unpatentable "based on four
`
`grounds, as follows.
`
`Reference(s)'
`
`
`
`
`
`“ Claims Challenged
`_ §102<b>
`1,2,6,and9-12
`
`
`§102<b>
`1,2,6.9,n,12
`
`Berman
`Janik ’558 and
` 1, 2, 6, and 9-12
`Janik ’902
`§ 103“”
`
`1, 2, 6, 9, 11, 12
`
`§ 103(3)
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim terms
`
`are given their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech, Inc, 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner submits proposed
`constructions for two claim terms (“playlist” and “remote source”), and Patent
`
`Owner submits proposed constructions for two claim terms (“playlist” and “media
`
`player device”).
`
`,
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`Patent 8,230,099 B2
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`Petitioner proposes that “playlist” is “a list of media items from which one
`
`or more selections may be made by a user.” Pet. 7—8. Patent Owner proposes that
`
`“playlist”'is “a list referencing media items arranged to be played in a sequence.”
`
`Prelim. Resp. 6-7. The Specification states, “[a] playlist is a list of a user’s favorite
`
`selections.” Ex. 1001, col. 1, 11. 33-34. We are persuaded that the construction
`
`proposed by Patent Owner is too narrow and would exclude the embodiment
`
`described in the specification. For purposes of this Decision, we determine that the
`broadest reasonable interpretation of the term “playlist” consistent with the
`
`specification is “a list of media selections.”
`
`Patent Owner has not proposed a construction for “remote source,” which is
`
`‘ a term found only in the claims of the ’099 patent, where it is not defined. We
`determine that the Petitioner’s proposed construction (“a source of a playlist that is
`
`separate from a remote control”) is reasonable and adopt that construction as the
`broadest reasonable interpretation for purposes of this Decision.
`-
`
`Finally, Patent Owner has proposed thatf‘media player device” be construed
`
`as “a device capable of playing audio or video or a combination of both, other than
`
`a general purpose computer.” The term “media player device” appears only in the
`
`claims of the ’099 patent, where it is not defined. The term “media player” is used '
`throughout the Specification, and contrary to Patent Owner’s proposal, is described
`
`as a general purpose computer, for example, “the media player 17 may be-a general
`purpose computer,”~(id. at col. 8, 11. 62-63), and, “a general purpose computer may
`
`be used to request playlists that are then communicated from other general purpose
`computers or other dedicated: media players to the user’s player device” (id. :at' col;
`
`'
`
`9
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`3, ll. 29-32). Therefore,ifor purposes ofthis Decision, we determine the broadest
`
`reasonable construction of“media player device” is “a device capable of playing
`
`audio or video or a combination of both.”
`
`3. Claims I, 2, 6, 9-12 —Anticipated by Bi '
`
`Petitioner contends claims 1, 2, 6, and 9-12 are unpatentable under
`
`35 U.S.C. § 102(b) as anticipated by Bi. Pet. 10-20.
`
`Bi (Exhibit 10082
`
`Bi is titled, “Interactive Remote Control of Audio or Video Playback and
`
`Selections.” Petitioner contends Bi discloses a system for an interactive remote
`
`control, which may be wireless, of an audio or playback application running on a
`
`personal computer or other computing platform. Pet. 1 1. Figure 2 of Bi is
`
`reproduced below.
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`Case IPR2013—00597
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`Patent 8,230,099 B2
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`'v
`
`
`
`
`«am
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`:mfimzmfimarzezmm.
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`4‘1“,“
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`
`
`Figure 2
`
`Figure 2 depicts data server 102 that provides digital audio or video data via the
`
`Internet or other network 101 to computing platform 1 10. Navigator 260 is a
`
`wireless remote control that communicates with computing platform 100 to control
`
`selectiOn of audio or video data. Ex‘. 1008 110020.
`
`Analysis
`
`Petitioner contends claims 1, 2, 6, and 9-12 are unpatentable under
`
`35 U.S.C. § 102(a) as anticipated by Bi,
`
`lnsupport of this asserted; ground 01".,
`
`3’11:
`
`_
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`unpatentability, Petitioner provides detailed explanations as to how the subject
`
`matter of each claim is disclosed by Bi. Pet. 14—20. Patent Owner contends the
`
`playlist in Bi does not constitute the claimed playlist recited in independent claims
`
`1, 10, and l 1. We have determined for purposes of this Decision that Patent
`
`Owner’s proposed construction of'playlist is not the broadest reasonable
`
`construction, and that, for purposes of this Decision, a playlist is a list of media
`
`selections. See Section II.A above. On the record currently before us, we are
`
`persuaded that Bi’s “playlist” (Ex. 1008 fil 0032) discloses the “playlist” of the ’099
`patent.
`'
`A
`Patent Owner next contends that as to all four independent claims of the
`
`’099 patent, Bi fails to disclose receiving a playlist from a remote source. Prelim.
`
`Resp. 14-20. According to Petitioner, in Bi, a playlist is received by navigator 260
`
`from computing platform 100, which is a remote source. Ex. 1008 1] 0032
`
`‘
`
`(computing platform 100 sends the results of a local music browse, which can be
`based on playlists, to navigator 260). Patent Owner further contends that as to all
`
`four' independent claims, Bi fails to disclose the user of the wireless handheld
`remote. being enabled to select at least one item from the playlist for playback by a
`
`media player device. Bi, however, discloses “digital content can be controlled
`
`from a location away from the computing platform running the digital content
`
`playback application.” Id. at 1] 0007, Fig. 7. Therefore, we are persuaded on the
`
`present record by Petitioner’s arguments on the disputed limitations. As to the
`remaining limitations ofthe independent claims, we have reviewed Petitioner’s
`
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`supporting evidence and determine that Petitioner has made an adequate showing
`
`under 35 U.S.C. § 314(a).
`
`The Preliminary Response does not respond to Petitioner’s contentions on
`
`dependent claim 6, and reiterates for dependent claims 2 and 9 the arguments
`
`addressed above for the independent claims. For claim 2, we are persuaded by
`
`Petitioner’s argument that Bi discloses the limitation of claim 2 where the playlist
`V further is communicated from the remote source to the media player device.
`
`Pet. 15, citing Ex. 1008 1] 0032. For the remaining dependent claims 6 and 9, we
`
`have reviewed Petitioner’s supporting evidence and determine that Petitioner has '
`
`made an adequate showing under 35 U.S.C. § 314(a).
`Accordingly, on the present record, we are persuaded there is a reasonable
`
`likelihood of Petitioner prevailing in establishing the unpatentability of
`
`independent claims 1, and 10-12, and dependent claims 2, 6, and 9 of the ’099
`
`patent as anticipated by Bi.
`
`C. Claims 1, 2, 6, 9, 1], and I2: Anticipated by Gladwin
`
`Petitioner’contends claims 1, 2, 6, 9,
`
`I l, and 12 are unpatentable under
`
`35 U.S.C. § lO_2(b) as anticipated by Gladwin. Pet. 21-26.
`
`Gladwin (Exhibit 10092
`
`‘Gladwin is titled, “Structure and Method for Selecting, Controlling and
`
`Sending Intemet-Based or Local Digital Audio to an AM/FM Radio or Analog
`
`' Amplifier.” Petitioner contends Gladwin discloses a remote device interfacing
`
`With a personal COmputei‘ that obtains audio from the‘lnternet or other digital audio
`13
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`from any web server. Pet. 21-22 (citing Ex. 1009, col. 3, 11. 1-9). Figure 1 of
`
`Gladwin is reproduced below.
`
`
`
`22
`
`‘
`
`20
`
`2-woy wireless
`connection
`
`
`25
`
`PC Software
`
`Digital audio
`
`
`on any web
`server
`
`
`
`
`
`
`
`filiesimdnaifégi
`
`Analog audio
`
`broadcast over
`disk
`
`
`FM channel
`
`
`0191161 audio
`fl'0"! intemet
`
`
`Internet audio sources
`Internet
`
`
`Connection over
`TCP/IP
`
`Audio 1
`Audio 2
`Audio 3
`
`In Figure], digital audio obtained by host PC 26 via the Internet is selected by
`remote device 22 to be played through a radio or stereo amplifier 28 using PC
`
`adapter 24. Ex. 1009, 3-4. The digital audio data is. organized as a play list. Id. at
`
`4, 11. 13-14. Petitioner contends Gladwin “discloses precisely what was asserted to
`
`be missing from the prior art during the prosecution of the ’099 patent” — a
`
`wireless handheld remote for selecting an item from a playlist for playback on a
`
`separate media player device. Pet. 23-26 (citing Ex. 1009, 3-6, Figs. 1-6).
`
`Analysis
`
`Patent Owner’s two arguments against Gladwin as to the independent claims
`1, 11, and 12 of the ’099 patent both are premised on its proposed claim
`
`constructions for “playlist” and‘‘media device player ” Prelim. Resp. 22-24.
`Patent Owner first contends theplaylist’ in GladwinIS not the‘playlist” of 1ts
`
`I
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`14
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`proposed construction. We have determined that Patent Owner’s proposed
`construction is not the broadest reasonable construction, and that, for purposes of
`
`this Decision, a “playlist” is a list of media selections. See Section ILA above. On
`
`the record currently before us, we are persuaded that Gladwin’s “play list” (Ex.
`
`1009, 4, II. 13-14) discloses the “playlist” of the ’099 patent.
`
`Patent Owner next contends the “media player device” in Gladwin is a
`
`general purpose computer. Patent Owner’s proposed construction of “media player
`device” excludes general purpose computers, but as stated in’ Section ILA above,
`
`we have determined, for purposes of this Decision, that Patent Owner’s proposed
`
`construction is not the broadest reasonable construction, and we construe “media
`
`player device” as a device capable of playing audio or'video or a combination of
`
`both. For purposes of this Decision, we are persuaded that the PC in Gladwin (Ex.
`1009, 3-4) discloses the media player device of the. ’099 patent. Thus, we are not
`
`persuaded by Patent Owner’s arguments against Gladwin based on its proposed
`
`claim construction. As to the remaining limitations of the independent claims, we
`
`have reviewed Petitioner’s supporting evidence and determine that Petitioner has
`
`made an adequate showing under 35 U.S.C. § 314(a).
`
`The Preliminary Response does not respond to Petitioner’s contentions on
`
`dependent claims 6 and 9. For claim 2, Patent Owner contends Gladwin fails to
`
`disclose the remote source sending a playlist to the PC. We are persuaded by
`Petitioner’s citation tothe contrary of Gladwin’s disclosure that “[t]he PC software
`
`_
`
`. gets digital audio datarfrom audio files on the local disk and/or internet -
`. streaming audio data. Thisidata is organized as a play list.” Ex'. 1009, 4, ll. -l2-_l4.
`
`_
`
`-.
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`1'5 -
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`For the remaining dependent claims 6 and 9, we have reviewed Petitioner’s
`
`supporting evidence and determine that Petitioner has made an adequate showing
`
`under 35 U.S.C. § 314(a).
`
`Accordingly, on the present record, we are persuaded there is a reasonable
`
`likelihood of Petitioner prevailing in establishing the unpatentability of
`
`independent claims 1, 11, and 12, and dependent claims 2, 6, and 9 of the ’099
`
`Patent as anticipated by Gladwin.
`
`D. Claims I, 2, 6, 9, 11, and 12: Obvious Over Berman
`
`Petitioner contends claims 1, 2, 6, 9, 11, and 12 are unpatentable under
`35 U.S.C. § 103 as obvious over Berman. Pet. 27435.
`
`Berman (Exhibit 1 01 02
`
`Berman is titled, “System for Playback of Network Audio Material on
`Demand.” Petitioner contends Berman discloses the use of a remote control that
`
`displays a playlist to select music for playback from a separate media playback
`
`device. Pet. 27-30 (citing Ex. 1010, Figs 1, 3, l3, and col. 3, ll. 33—39, col. 4,
`
`1147-53, col. 5, 11. 42-67, col. 6, l. 64). An embodiment ofBerman’s system is
`
`depicted in Figure 1, which is reproduced ‘below.
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`Page 16 of 293
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`Case IPR2013-00597
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`Patent 8,230,099 B2
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`
`
`FIG. I
`
`Figure 1 is a block diagram ofBerman’s playback unit 100. Ex. 101.0, col. 4, 11.17—
`
`19. Playback unit 100 receives audio material from audio material server 104, and
`
`access rights to this material are controlled by directory and user list (“DUL”)
`
`server 107. Id at col. 4, 11. 51—53, 63-65. Playback unit 100 includes network
`interface ‘110 that facilitates communication with the servers over the internet.
`
`Id. at col. 5, 11. 11-13._ Memory 1 16 temporarily stores audio for playback and
`
`processing. Id. at col. 6, 11. 6-8. In certain embodiments, the user may be
`
`' permitted to record a song to memory. Id. at col. 8, 11. 4-6. Berman’s playback
`
`unit may receive input from a wireless remote control unit. Id. at col. 5, 11. 46—49.
`The remote control uni-t may be used to move through the song list and search for
`
`songs. 1d. at col. 5, 11. 54-61, col. 13,11. 51-64, Figs. 2 and 13.
`
`The operation of the playback unit is illustrated in Figure 3, which is
`
`reproduced below.
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`Page 17 of 293
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`Case IPR2013—00597
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`Patent 8,230,099 B2
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`302
`
`304
`
`301
`
`POWER ON.
`
`
`
`ussn ssiEcrs mnsr,
`
`TlTLE. ALBUM. GENRE.
`ETC.
`
`
`SEND CURRENT SONG LIST
`VERSION TO DUL SERVER.
`
`308
`
`NO
`
`CURRENT?SONG LIST TO
`
`DUL SENDS UPDATED
`PLAYBACK UNIT.
`
`
`
`
` 306
`
`SONG LIST
`
`310
`
`
`
`312
`
`314
`
`USER SELECTS
`ARTIST AND SONG
`YlTLEl
`
`
`
`USER SELECTION
`SENT TO DUL
`SERVER.
`
`DUI. SERVER SENDS URL OF
`
`AUDIO MATERIAL SERVER
`
`AT WHICH SONG DATA IS
`STORED.
`
`
`
`
`
`
`
`FIG. 3
`
`Figure 3 is a processing flow diagram depicting the steps executed to request
`and receive audio material. Ex. 1010, col. 4, 11. 22-25. At step 302, the user
`
`selects a music category or type of song. 1d. at col. 6 l. 65 — col. 7,1. 4. The
`playback unit then contacts the DUL server to confirm that the playback unit’s
`Song listIS up to date. 1d. atcol. 7, II. 4—6, Fig.3astep 304. lfthe song list15 not up
`
`18
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`Page 18 of 293
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`to date, the DUL server will send an updated song list to the device. Id. at col. 7,
`
`II. 14—19, Fig. 3 steps 306 and 308. In certain embodiments, the song list may be
`
`updated to reflect the user’s preferred songs. 1d. at col. 13, 11. 9-15. The user
`
`selects a song from the song list. Id. at col. 7, ll. 22-24. The DUL server then
`
`sends playback unit 100 the network address or URL for the requested song. Id. at
`col. 7, ll. 30—41. Playback unit 100 then uses that URL to obtain the requested
`
`sound file or streaming audio from the appropriate audio material server. Id. at
`
`col. 7, 11.41-45, col. 8, ll. 32-34.
`
`Analysis
`
`Petitioner contends that Berman explicitly discloses all of the elements of
`the ’099 patent, with the exception of the remote control being wireless, which
`
`Petitioner asserts would have been obvious to one of skill in the art, citing the
`
`Declaration of Dr. Bove. Pet. 30 (citing Ex. 1002 11 14). We note that Berman also
`
`explicitly discloses the playback unit “may also include a sensor, such as an
`
`infrared sensor 206, for receiving command signals from a remote control unit.”
`
`Ex. 1010, col. 5, 11. 46-48. Berman’s disclosure of a sensor suggests that the
`
`remote control unit is wireless. Thus, on the record before us, we are persuaded,
`
`that the remote control of Berman could be implemented as a wireless unit.
`
`Patent Owner contends that for the independent claims of the ’099 patent,
`
`Berman fails to disclose a remote control that can present a playlist to the user.
`
`Petitioner argues that the playlist is presented on the graphical user interface of the
`
`1 remote control and enables the User to select at least one item for playback by the
`
`i 19
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`Page 19 of 293
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`playback unit. Pet. 31 (citing Ex. 1010; col. 4, 1147-53, col. 5,]. 5 — col. 6, l. 49,
`
`col. 6, l. 64 — col. 7, l. 38). We determine that Petitioner has made an adequate
`
`showing under 35 U.S.C. § 314(a) for this and the other limitations of the
`
`independent claims 1, 11, and 12-.
`
`i
`
`The Preliminary Response does not respond to Petitioner’s contentions on
`
`dependent claims 6 and 9. For claim 2, Patent Owner contends Berman fails to
`
`disclose the remote source sending a playlist to the playback unit. We are
`
`persuaded by Petitioner’s citation to the contrary of Berman’s disclosure in Figure
`
`3 0f the song list being sent by the DUL server to the playback unit. Id. at 32
`
`(citing Ex. 1010, Fig. 3 and col. 6,1. 64 — col. 7, l. 38). For dependent claims 6 and
`
`' 9, we have reviewed Petitioner’s supporting evidence and determine that Petitioner
`
`has made an adequate showing under 35 U.S.C. § 314(a). Accordingly, on the
`
`present record, we are persuaded there is a reasonable likelihood of Petitioner
`
`prevailing as to the unpatentability of independent claims 1, 11, and 12, and
`
`dependent claims 2, 6, and 9 of the ’099 patent, as obvious over Berman.
`
`E. Janik ’558 and Janik ’902
`
`On its final asserted ground of unpatentability, Petitioner contends claims 1,
`
`2, 6, and 9-12 of the ’099 patent would have been obvious over Janik ’558
`
`(“System and Method for Providing Content, Management, and Interactivity for
`
`Client Devices”) and Janik ’902 (“Webpad and Method for Using the Same”). On
`
`the present record, we are not persuaded there is a reasonable likelihood that Janik
`. "5,58 and Janik ”902 render the'challenged claims obvious.- we agree with Patent
`
`Page 20 of 293
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`Owner that neither Janik reference discloses the limitation recited in all of the
`challenged claims where the user is enabled to select at least one item from the
`
`playlist received from a remote source for playback by a media player device.
`
`Prelim. Resp. 36-37; see Ex. 1001, col. 11,11. 19-27, col. 12,11. 11-48. In
`
`particular, Janik ’558 states that “webpad 92 version of audio device content editor
`and audio device controller GUI allow the user to access playlists and tracks.” Ex.
`
`1011 1] 243. The audio device content editor in turn “provides the user with the
`
`ability to group audio files (tracks) into user-defined playlists” (id. at 11 147), but
`
`there is no disclosure of receipt by the audio device content editor of a playlist, or
`
`of a user’s ability to select a media item with the webpad version of audio device
`
`controller GUI. Prelim Resp. 36.
`
`Janik ’902 states that its “webpad 32 can be used to control a digital audio
`
`converter, a device that is a node on the LAN and is able to receive digital audio
`streams from PC, decode and convert the stream into analog signals that are
`
`plugged into any existing stereo system.” .Ex. 1012 1] 0069. The Selection of a
`target device, such as a digital audio converter, however, does not meet the
`
`claimed limitation of selecting a media item for playback.
`
`III. CONCLUSION
`
`,For the foregoing reasons, we are persuaded the information presented in the
`
`Petition establishes a reasonable likelihood that Petitioner would prevail in
`
`establishing unpatentability ofclaims l, 2, 6, and 9-12 ofthe ’099 patent as
`
`21
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`Page 21 of 293
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`Patent 8,230,099 B2
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`anticipated by Bi, and of claims 1, 2, 6, 9, 11, and 12 as anticipated by Gladwin
`
`and as obvious over Berman.
`
`The Board has not made a final determination on the patentability of any
`
`challenged claim.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to the following claims and grounds:
`
`1.
`
`Claims 1, 2, 6, and 9—12 ofthe ”099 patent are unpatentable
`
`' under 35 U.S.C. § 10209) as anticipated by Bi;
`
`2.
`
`Claims 1, 2, 6, 9, 11, and 12 of the ’099 patent are unpatentable
`
`under 35 U.S.C. § 102(b) as anticipated by Gladwin;
`
`3.
`
`Claims 1, 2, 6, 9, 11 and 12 of the ’099 patent are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Berman; and
`
`FURTHER ORDERED that all other grounds raised in the Petition are
`
`denied for reasons discussed above.
`
`' FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 CPR.
`
`§ 42.4, notice is hereby given of the institution ofa trial; the trial commences on
`
`_
`
`the entry date of this decision; and
`
`FURTHER ORDERED that an initial conference call with the Board is
`
`scheduled for 4:00 PM, Eastern Time on April 9, 2014; the parties are directed to
`
`22
`
`Page 22 of 293
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`Page 22 of 293
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`Case IPR2013-00597
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`Patent 8,230,099 B2
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`the Office Trial Practice Guide| for guidance in preparing for the initial conference
`
`call, and should be prepared to discuss any proposed changes to the Scheduling
`
`Order entered herewith and any motions the parties anticipate filing during the
`
`trial.
`
`PETITIONER:
`
`. David L. Fehrman
`
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`
`dfehrman@mofo.com
`marjomand@mofo.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP ‘
`
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`
`BLACK HILLS MEDIA, LLC
`ted.thomas@sceneralabs.com
`
`' Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66 (Aug. 14,
`
`-
`
`. 23 -
`
`“
`
`Page 23 of 293
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`Page 23 of 293
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`
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`Case 2:14—cv-00486 Document 6 Filed 01/21/14 Page 1 0f 1 Page ID #1514
`
`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING 0R DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the Us. District Court
`for the Central District of California
`on the following
`El Trademarks or
`MPatents.
`( C] the patent action involves 35 U...SC § 292.):
`
`DOCKET NO.
`
`DATE FILED
`1/21/2014,
`
`PLAINTIFF
`Black Hills Media, LLC
`
`
`
`
`U.S. DISTRICT COURT
`for the Central District of California
`DEFENDANT
`Sonos, inc.
`
`HOLDER OF PATENT OR TRADEMARK
`
`Black Hills Media, LLC
`
`Black Hills Media, LLC
`
`mack His Media, LLC
`
`Black Hills Media, LLC
`
`Black Hills Media, LLC
`
`4 7,742,740
`
`5 6,757,517
`
`6/22/2010
`
`6/29/2004
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`
`
`DATE INF/£213???“
`PATENT OR
`
`INCLUDED BY
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`El Answer
`
`[3 Cross Bill
`
`M Other Pleading
`
`.
`HOLDER OF PATENT OR TRADEMARK
`
`8/22/2000
`
`7/24/2012
`
`7/3/2012
`
`6/23/2007
`
`11/30/2004
`
`Black Hills Media, LLC
`
`Black Hills Media, LLC
`
`Black Hills Media, LLC
`
`Black Hills Media, LLC
`
`Black Hills Media, LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 6,108,686
`
`2 8,230,099
`
`3 8,214,873
`
`4 7,236,739
`
`
`
`
`
`5 6,826,283
`it
`6
`
`Black Hills Media, LLC
`9/27/2011
`8,028,323
`In the above—entitled case, the following decision has been rendered orjudgement issued:
`
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy I—Upon initiation of action, mail this copy to Director Copy S—Upon termination of action, mail this copy to Director
`Copy l—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`Page 24 of 293
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`Page 24 of 293
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`
`
`Case 2:14-cv-00471 Document 6 Filed 01/21/14 Page 1 of 1 Page ID #28?
`
`A0120 Rev. 08/10
`
`TRADEMARK
`
`10'
`'
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