`LG ELECTRONICS, INC., L ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner,
`
`
`v.
`
`
`BLACK HILLS MEDIA, LLC
`Patent Owner.
`
`
`IPR2015-00339
`Patent No. 8,214,873
`
`
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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,214,873
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
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`

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`
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`I.
`
`TABLE OF CONTENTS
`
`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 ........................... 3
`
`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)) .......... 4
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ............................................... 5
`
`Person of Ordinary Skill in the Art ................................................................... 6
`
`Unpatentability of the Construed Claims (37 C.F.R. §
`42.104(b)(4)) .......................................................................................................... 7
`
`G.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ............................................. 7
`
`IV.
`
`Summary of the ‘873 PATENT .................................................................................... 7
`
`A. Overview of the ‘873 Patent .............................................................................. 7
`
`B.
`
`Prosecution History Summary of the ‘873 Patent .......................................... 8
`
`V.
`
`There is a Reasonable Likelihood that Petitioner Will Prevail With
`Respect to at Least One Claim of the ‘873 PATENT ............................................. 11
`
`A.
`
`Prior Art .............................................................................................................. 11
`
`1.
`
`2.
`
`U.S. Patent No. 7,454,511 to Weast (Ex. 1004) ................................ 11
`
`U.S. Patent No. 7,668,939 to Encarnacion (Ex. 1005) ..................... 14
`
`- i -
`
`

`

`
`
`
`
`
`B.
`
`Ground I: Combination of the Weast and Encarnacion Patents
`Renders Obvious Claims 1-2, 5-8,15-19, 22-23, 25-27, 30-31, 34-
`37, and 44-46 Under 35 U.S.C. § 103 ............................................................. 17
`
`C.
`
`Conclusion .......................................................................................................... 59
`
`
`
`- ii -
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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
`
`Ex. 1013
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,214,873
`File History for U.S. Patent No. 8,214,873
`File History for U.S. Patent No. 8,028,323
`U.S. Patent No. 7,454,511 to Weast
`U.S. Patent No. 7,668,939 to Encarnacion et al.
`U.S. Patent Application Publication No. 2005/0262204 to Szeto
`et al.
`U.S. Patent Application Publication No. 2003/0225834 to Lee et al.
`Declaration of Kevin Almeroth, Ph.D.
`Curriculum vitae of Kevin Almeroth, Ph.D.
`Miller et al., “Home Networking with Universal Plug and Play”
`(IEEE, Dec. 2001)
`Michael Jeronimo & Jack Weast, UPnP Design By Example,
`Intel Press (Apr. 2003)
`UPnP AV Architecture:1 For Universal Plug and Play Version 1.0,
`Status: Approved Design Document, Date: June 25, 2002
`“TV Meets the Web” (Financial Times, Sept. 10, 2002)
`“Intel Pushes Plug and Play Into Homes” (Extremetech.com, Sept.
`10, 2002)
`“Mediabolic Incorporates Support for UPnP Technology into
`the Mediabolic ONE Platform” (Business Wire, Jan. 6, 2003)
`“Oregan Networks Demonstrates UPnP” (PR Newswire, Feb.
`18, 2003)
`UPnP Content Directory:1 Service Directory Template Version 1.01
`For UPnP™ Version 1.0, Status: Standardized DCP, Date: June 25,
`2002
`
`- iii -
`
`

`

`
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm U.S.A., Inc. (collectively “LG” or “petitioner”) submit this petition for
`
`inter partes review (“IPR”) of U.S. Patent No. 8,214,873 concurrently with a motion for
`
`joinder 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, IPR2014-00723 (“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 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 ’593 Patent against LG and
`
`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. 337-
`
`TA-882 (U.S.I.T.C., filed May 13, 2013) (“the ITC Investigation”) and Black Hills Media,
`
`LLC v. LG Electronics, Inc., 1:13-cv-00803 (filed May 6, 2013) (“the district court
`
`litigation”). The ’873 patent was challenged by Samsung in IPR2014-00723, as noted
`
`above. It was also challenged in Yamaha Corp. of Am. v. Black Hills Media LLC,
`
`IPR2013-00598 (Sept. 19, 2013) and Yamaha Corp. of Am. v. Black Hills Media LLC,
`
`IPR2014-00766 (May 16, 2014). The ’873 Patent has been asserted in the following
`
`litigations:
`
`1
`
`
`

`

`
`
`Black Hills Media LLC v. Pioneer Elect. (USA)
`
`Inc.
`
`2-14-cv-00471 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Yamaha Corp. Am.
`
`8-14-cv-00101 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Sonos, Inc.
`
`2-14-cv-00486 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Yamaha Corp. Am.
`
`2-14-cv-00482 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Sonos Inc.
`
`2-13-cv-06062 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Yamaha Corp. Am.
`
`2-13-cv-06054 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Logitech Inc.
`
`2-13-cv-06055 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Pioneer Corp.
`
`2-13-cv-05980 CACD Aug. 15, 2013
`
`Black Hills Media, LLC v. LG Elect., Inc.
`
`1-13-cv-00803 DED May 6, 2013
`
`Black Hills Media, LLC v. Toshiba Corp.
`
`1-13-cv-00805 DED May 6, 2013
`
`Black Hills Media, LLC v. Sharp Corp.
`
`1-13-cv-00804 DED May 6, 2013
`
`Black Hills Media, LLC v. Samsung Elect. Co.
`
`Ltd.
`
`2-13-cv-00379 TXED May 6, 2013
`
` Black Hills Media, LLC v. Panasonic Corp.
`
`1-13-cv-00806 DED May 6, 2013
`
`Black Hills Media LLC v. Logitech Inc.
`
`1-12-cv-00636 DED May 22, 2012
`
`Black Hills Media LLC v. Yamaha Corp. Am.
`
`1-12-cv-00635 DED May 22, 2012
`
`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
`
`
`
`2
`
`
`

`

`
`
`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
`
`Washington, D.C. 20001-4413
`
`T: (202) 408-4250; F: (202) 408-4400
`
`T: (202) 408-4469; F: (202) 408-4400
`
`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. Petitioners consent to electronic service.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`The undersigned authorizes the Office to charge $28,000 ($9,000 request fee;
`
`$1,000 request excess claims fees; $14,000 post-institution fee and $4,000
`
`post-institution excess claims fee) to Deposit Account No. 06-0916 for the fees set
`
`forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes Review. The undersigned
`
`further authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to the above referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`
`3
`
`
`

`

`
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘873 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ‘873 Patent on the grounds identified in
`
`the present petition.
`
`B.
`
`Citation of Prior Art
`
`Exhibit
`
`Reference
`
`Publication or
`
`Availability as
`
`Filing Date
`
`Prior Art
`
`Ex. 1004
`
`U.S. Patent No. 7,454,511 to Weast
`
`May 29, 2003
`
`35 U.S.C.
`
`(“Weast”）
`
`§ 102(e)
`
`Ex. 1005
`
`U.S. Patent No. 7,668,939 to
`
`December 19,
`
`35 U.S.C.
`
`Encarnacion et al. (“Encarnacion”)
`
`2003
`
`§ 102(e)
`
`
`
`C.
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2))
`
`The relief requested by Petitioner is that claims 1-2, 5-8, 15-19, 22-23, 25-27,
`
`30-31, 34-37, and 44-46 of the ‘873 Patent be found unpatentable and cancelled from
`
`the ‘873 Patent on the following ground:
`
`Ground Claims
`
`Basis
`
`I
`
`1-2, 5-8, 15-19, 22-23, 25-27, 30-
`
`Obvious under 35 U.S.C. § 103 in view
`
`31, 34-37, 44-46
`
`of Weast and Encarnacion.
`
`4
`
`
`

`

`
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`A claim subject to IPR is given its “broadest reasonable construction in light of
`
`the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). Petitioner
`
`has included below a discussion of the “broadest reasonable construction consistent
`
`with the specification” (“BRC ”）for the claim term “playlist” of the ‘873 Patent.
`
`Each of independent claims 1,17, 23, 25-27, 30 and 46 recites a “playlist.”
`
`Petitioner submits that the BRC for “playlist” is “a list of media items.” The
`
`specification of the ‘873 Patent repeatedly discloses that the playlist is a list of songs.
`
`See, e.g., Ex. 1001, 11:27-29 (“The listener selects at least one song from the received
`
`playlist, as shown in block 35. Either a single song may be selected, or a plurality of
`
`songs may be selected.”); 11:42-44 (“The selected songs may be played in the order
`
`selected, in random order, or in any other desired order. The order can preferably be
`
`changed at any time.”) Beyond songs, the specification uses broadening language to
`
`encompass audio and audio/video as the type of “content” that can be included in
`
`“playlists.” See, e.g., id. at 1:19-24 (“The present invention relates . . . to a digital
`
`entertainment network wherein playlists are obtained by communicating attributes of
`
`the playlists to a playlist server and wherein songs are obtained by communicating
`
`information representative of the songs to a content server.”); 16:18-24 (“Although the
`
`content described herein is music, those skilled in the art will appreciate that other
`
`types of content . . . may comprise . . . pictures, video, software, or data.”)
`
`Moreover, the BRC of the term “playlist” does not require that the constituent
`5
`
`
`

`

`
`
`media items be arranged to be played in a sequence (as the patent owner has argued
`
`in litigation). The specification notes that selected songs, rather than all songs on the
`
`playlist, are played, which would operate contrary to the concept of playing the songs
`
`in a sequence. Id. at 11:27-32. The specification also explicitly states that selected
`
`songs can be played in a selected order, a random order, or any other desired order, and
`
`may be changed at any time. Id. at 11:42-44. Based on this disclosure one of skill in
`
`the art would not understand the “playlist” to include a requirement that the contents
`
`of the playlist be arranged to play in any particular sequence. Ex. 1008 (“Almeroth
`
`Dec.”), ¶ 35. Rather, one skilled in the art would understand that “playlist” includes
`
`within its scope content that may or may not be arranged to play in a particular
`
`sequence. Id.1
`
`Person of Ordinary Skill in the Art
`
`E.
`A person of ordinary skill in the art of the ‘873 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
`
`of professional experience with computer networking and multimedia technologies, or
`
`the equivalent. Almeroth Dec., ¶ 4.
`
`
`1 The construction of “playlist” as “a list of media items” is consistent with the
`
`construction “a list of media selections” adopted by the PTAB in IPR2013-00597 for
`
`“playlist” in the related ‘099 Patent.
`
`6
`
`
`

`

`
`
`F. Unpatentability of the Construed Claims (37 C.F.R.
`§ 42.104(b)(4))
`
`An explanation of how claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37, and
`
`44-46 of the ‘873 Patent are unpatentable under the statutory ground(s) identified
`
`above, is provided in Section v, below.
`
`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 ‘873 PATENT
`A. Overview of the ‘873 Patent
`The ‘873 Patent addresses a method and system for obtaining media on a
`
`network. A first device receives a playlist of songs or other media items, selects media
`
`items from the playlist, selects a second device, and directs the second device to
`
`receive the selected media item from a content server without user input on the second
`
`device. Ex. 1001, 11:53 - 12:34. Figure 4 is representative of the processing of an
`
`exemplary embodiment of the ‘873 Patent.
`
`The ‘873 Patent describes the devices using the nomenclature of the Universal
`
`Plug and Play architecture, including describing a “control point” that accesses music
`
`and commands remote devices, and describing a “rendering device” to play back
`7
`
`
`

`

`
`
`selected media. Ex. 1001, 7:25-39; 8:9-35.
`
`Prosecution History Summary of the ‘873 Patent
`
`B.
`The ‘873 Patent was filed on August 10, 2011, as application number 13/207,113
`
`as a continuation of application number 10/840,109, filed May 5, 2004, which issued as
`
`the ‘323 Patent. The ‘323 Patent was under examination by the USPTO for more than
`
`seven years, during which time the USPTO issued numerous rejections of the draft
`
`claims to which the applicant filed numerous responses and amendments. Petitioner
`
`summarizes here the actions most relevant to the grounds of unpatentability set forth
`
`in the present Petition.
`
`In the Final Rejection dated October 20, 2008, the Examiner rejected all claims
`
`of the application leading to the ‘323 Patent under 35 U.S.C. § 102(e) as being
`
`anticipated by Szeto (U.S. Patent App. Pub. No. 2005/0262204). Ex. 1003 (File
`
`History of ‘323 Patent), pp. 314-20. Szeto discloses a system for “facilitating a shared
`
`content experience” between two devices where a first user may allow a server to
`
`update a second user’s media player application display with a link to a song or playlist
`
`being played by the first user. See, e.g., Ex. 1006, [0006], [0025]- [0027], [0034], FIGS. 3-
`
`4. The second user may select the song, causing it to be streamed to the second user’s
`
`media player application so that the second user may listen to the song. Id.
`
`In a Response dated December 22, 2008, the applicant attempted to traverse the
`
`rejection in light of Szeto by arguing that “Applicant’s claimed invention directs or
`
`instructs a second device to obtain or receive the song. A user need not affirmatively
`8
`
`
`

`

`
`
`select a hyperlink . . . [and the invention] can work with second devices with which a
`
`user could not affirmatively select a hyperlink, such as a stereo receiver, a television,
`
`and the like.” Ex. 1003, p. 308. The examiner disagreed and maintained the rejection
`
`in an Advisory Action dated January 12, 2009. Id. at pp. 295-302.
`
`In a Response dated February 20, 2009, the applicant amended the claims to
`
`specifically require that the first device directs the second device to receive media items
`
`from the server. Ex. 1003, pp. 282-83. The applicant argued that “Szeto neither
`
`teaches nor suggests a first device that can direct a second device to obtain or receive a
`
`media item, because Szeto discloses that a user must enter input at the second device to
`
`direct the second device to obtain the media item.” Id. at p. 282.
`
`In an Office Action dated March 18, 2009, the examiner again rejected the
`
`claims as unpatentable under 35 U.S.C. § 103 in light of Szeto and Lee. Ex. 1003, pp.
`
`260-66. The examiner found the additional limitation of the first device directing the
`
`second device would have been obvious in light of Lee. Id. at p. 263. Lee discloses that
`
`a first user can invite a second user to participate in a shared audio experience, and if
`
`the second user accepts, then any music that the first user subsequently plays on his
`
`computer will also play on the second computer. See, e.g., Ex. 1007, at [0008]-[0009],
`
`[0060]-[0061], [0064]-[0065] and FIGS. 3-4, 9.
`
`In a Response dated June 17, 2009, the applicant amended the claims to require
`
`“directing” the “second device” to receive or obtain the selected media item “without
`
`user input via the second device.” Ex. 1003, pp. 253-54. The applicant further argued
`9
`
`
`

`

`
`
`that both Szeto and Lee “require user input via the second device and, consequently,
`
`cannot render obvious Applicant’s claimed invention.” Id. at p. 254.
`
`In an Office Action dated October 26, 2009, the examiner again rejected the
`
`claims under 35 U.S.C. §103(a) in light of Szeto and Janik (U.S. Patent App. Pub. No.
`
`2005/0113946). Ex. 1003, pp. 234-40. The Examiner found that Janik teaches using a
`
`PDA as an enhanced remote controller, and that such a PDA could be used to control
`
`the system in Szeto to direct media for playback.
`
`The applicant filed a Notice of Appeal on September 8, 2010. Ex. 1003, p. 177.
`
`On November 8, 2010, the applicant filed an opening appeal brief. The applicant
`
`argued, inter alia, that neither Szeto nor Janik taught a first device directing a second
`
`device to receive media content without user input at the second device. Id. at p. 161.
`
`Without a substantive response to Appellant’s Appeal Brief, a Notice of
`
`Allowance issued for the ‘323 Patent, on January 1, 2011. Ex. 1003, pp. 136-39. The
`
`Notice of Allowance did not address the reasons for allowance.
`
`Shortly thereafter, the ’873 Patent was filed as a continuation of the ‘323 Patent.
`
`In an Office Action dated March 1,2012, the examiner rejected all of the claims of the
`
`‘873 Patent based on non-statutory obviousness-type double patenting over the ‘323
`
`Patent. Ex. 1002, pp. 92-96. On March 8, 2012, the applicant filed a terminal
`
`disclaimer with respect to the ‘323 Patent to overcome the double patenting rejection.
`
`Id. at p. 72. The examiner subsequently issued a Notice of Allowance for the ‘873
`
`Patent on May 14, 2012. Id. at pp. 37-43.
`
`10
`
`
`

`

`
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ‘873 PATENT
`
`The subject matter of claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37, and 44-
`
`46 of the ‘873 Patent is disclosed and taught in the prior art as explained below. As set
`
`forth in § V.A.-V.B., the references and combinations utilized in Ground I render
`
`obvious each of claims 1-2, 5-8, 15-19, 22-23, 25-27, 30-31, 34-37, and 44-46 pursuant
`
`to 35 U.S.C. § 103, and provide a reasonable likelihood that the Petitioner will prevail
`
`on at least one claim. 35 U.S.C. § 314(a).
`
`Prior Art
`
`A.
`Paragraphs 15-31 of the Almeroth Declaration, Ex. 1008, describe the state
`
`of the art regarding networked media streaming in the 2003 time frame. In particular,
`
`as discussed below, the references relied upon in Ground I discuss devices operating
`
`according to the Universal Plug and Play (“UPnP”) architecture. Dr. Almeroth also
`
`provides a background on the knowledge of one skilled in the art regarding UPnP in
`
`the 2003 time frame. Almeroth Dec., ¶¶ 21-31. As that discussion and the prior art
`
`make clear, by May 2003, the purported innovations of the ‘873 Patent were well-
`
`known.
`
`1.
`Weast was filed in the U.S. on May 29, 2003, and issued on November 18, 2008.
`
`U.S. Patent No. 7,454,511 to Weast (Ex. 1004)
`
`It therefore qualifies as prior art to the ‘873 Patent under 35 U.S.C. § 102(e). Weast
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`was neither cited nor considered during prosecution of the ’873 Patent.
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`Weast discloses the user interface for a computing device operating in a
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`UPnP network. See, e.g., Ex. 1004, 1:36-51. Using the nomenclature of the UPnP
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`architecture, Weast describes both the user interface for a “control point” device, and
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`the interaction among the control point, media server, and media rendering devices.
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`Weast explicitly draws support from the UPnP architecture, referring to the UPnP
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`Architecture Specification for the well-known features of UPnP in order to focus on
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`the inventive aspects of Weast. See, e.g., id. at 2:65-67; 3:15-18. The exemplary UPnP
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`environment is reflected in Figure 1 of Weast:
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`The user interface of Weast is configured to display resources that are available
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`on the network, including available media renderers and available media content for
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`playback on those renderers. See, e.g., id. at 5:1-9; 5:16-44. The control point locates
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`media renderers on the network by transmitting discovery requests, to which media
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`renderers respond. See, e.g., id. at 5:59-67. Similarly, the control point locates media
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`servers by transmitting discovery requests, and can then query the media servers for
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`available media content. See, e.g., id. at 5:16-44. After locating the resources, they can
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`be displayed on the control point. See, e.g., id. at Figs. 4a-4c, 5a-5b, 6a-6b. The control
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`point can use a tree-like interface to display available media renderers and content. See,
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`e.g., id. at 7:6-15, Fig. 4c. As described in the patent, the list of available media content
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`allows selection of media content to be played back on a selected media renderer. See,
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`e.g., id. at 7:29-46; 8:18-30; 8:34-39. The interface also allows selection of a media
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`renderer. See, e.g., id. at 7:65-8:2.
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`Id. at Fig. 4b.
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`
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`After selection of media content, the control point will direct the selected media
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`renderer to retrieve the requested media content from the media server, without user
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`input at the media renderer. For example, Weast discloses that “in response to a user
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`selection to render a media content, control point device 102 instructs the applicable
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`UPnP media renderers 106 accordingly, to receive/pull and render provided media
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`contents 132 from UPnP media servers 104.” Id. at 6:19-23; Fig. 3b. Weast describes
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`the user input needed to cause the rendering of media content as occurring solely on
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`the control point device, for example by using an interface on the control point to drag
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`and drop media to playback onto an icon representing a media renderer or by using a
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`drop-down menu in the same interface. Id. at 8:34-43; 7:29-40. Weast also describes
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`that when a selected media renderer is already in use, requests to play additional media
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`items are handled algorithmically, rather than by resorting to user input at the media
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`rendering device. Id. at 8:44-52. There is no description of any user input at the media
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`rendering device, and a POSA would understand that the system and method of Weast
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`renders media content without user input at the media renderer. Almeroth Dec., ¶ 38.
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`2.
`Encarnacion was filed in the U.S. on December 19, 2003, and issued on
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`U.S. Patent No. 7,668,939 to Encarnacion (Ex. 1005)
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`February 23, 2010. It therefore qualifies as prior art to the ‘873 Patent under 35 U.S.C.
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`§ 102(e). Encarnacion was neither cited nor considered during prosecution of the ’873
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`Patent.
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`Encarnacion discloses a UPnP network configured to allow media from a server
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`device to be played on a rendering device. See, e.g., Ex. 1005, 1:20-24; 3:4- 16;14:31-47.
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`In the UPnP network of Encarnacion, a “control point” device, for example a personal
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`digital assistant, is configured to control the other devices on the network. See, e.g., id.
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`at 8:14-28. The UPnP network of Encarnacion also includes a “media rendering
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`device,” which can play back the media, and a “media server,” which stores the media
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`for transmission to other devices on-demand. See, e.g., id. at 7:65-8:13.
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`Consistent with all UPnP networks of the time, each of the three categories
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`of devices disclosed in Encarnacion corresponds to a device that could be used in a
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`home network for the purpose of accessing and playing media across devices. A
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`“media rendering device” could include a “stereo system, speakers, TVs, hand-held
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`audio players, and so on” Id. at 8:6-8. A “media server” could be “a personal
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`computer that stores a collection of music, video, pictures, etc., or may comprise
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`various types of jukebox devices.” Id. at 3:9-12; 5:25-26. Lastly, a “control point”
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`could be a device, such as a personal digital assistant, that includes functionality both to
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`both receive information about other devices on the UPnP network and to issue
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`commands to those devices. Id. at 2:25-67; 8:21-24; 8:51-9:4; 14:31-63; 25:48-55; 37:36-
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`54.
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`The media server includes a resource store that contains media content, such as
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`songs, made available for presentation at media renderers in the UPnP network.
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`Id. at 5:52-64; 8:51-58; 20:17-32; 37:18-27; 37:36-54. Media is identified using
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`“resource locators,” which allow devices on the network to identify the location of the
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`media. Id. at 37:18-27.
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`One key use case of the UPnP system disclosed in Encarnacion is where the user
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`of the control point submits a “browse” request to the media server for available media
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`resources matching certain criteria. See, e.g., Ex. 1005, 12:30-67. The media server
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`stores media resources hierarchically in a resource store, with individual media items
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`organized into “resource containers.” See, e.g., id. at 20:17-32; 20:44-58; 21:42-60.
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`Exemplary resource containers include a “music” resource container, which includes all
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`music items, and a “music/album” resource container that includes albums of music,
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`with each album represented by its own container. Id. at 21:47-54.
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`In response to a browse request, the media server returns a set of resource
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`locators that identify media responsive to the request. See, e.g., id. at 12:38-40; 13:5-14;
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`14:8-19. A “resource locator” can refer to various forms of media that can be
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`identified on the network, including an individual song, a collection of songs, or a
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`playlist of songs. See, e.g., id. at 13:62-14:7; 14:14-21; 25:39-43. A POSA would
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`understand that the “browse” request would allow a user to request a list of resources
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`present in a given resource collection. See, e.g., id. at 6:39-42; 6:43-46; 12:38-40; 13:56-
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`62; 14:8-21; 20:8-16; 25:55-61; Almeroth Dec., ¶ 40.
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`For example, a control point user could first browse the “music” collection to
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`retrieve a list of albums, and then use the resource locator for an album in that
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`collection to request a list of individual media items within the album. Id. A
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`control point user can use the retrieved resource locators, such as for an album or
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`individual song within the album, for rendering on a media rendering device, which will
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`cause the control point to command a selected media rendering device to request the
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`resource from the media server. See, e.g., Ex. 1005, 25:46-50.
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`The media rendering device then downloads the requested resource and plays it
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`back without any user input at the media rendering device. See, e.g., Ex. 1005, 14:36-47;
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`25:46-50; 51:1-22; Fig. 20. In particular, Encarnacion discloses the steps that are
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`performed at each device when rendering media content from a media server, and it
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`does not disclose any user input at the media rendering device. Id. For example,
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`Encarnacion discloses that selection of a media resource on a control point allows the
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`consumer to “command the media rendering device 306 to play resource content,”
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`with no disclosure of an input at the media rendering device. Id. at 25:46-50.
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`Therefore, a POSA would understand the system and method of Encarnacion as
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`rendering media content solely as the result of input at the control point device,
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`without any user input at the media rendering device. Almeroth Dec., ¶ 42.
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`B. Ground I: Combination of the Weast and Encarnacion Patents
`Renders Obvious Claims 1-2, 5-8,15-19, 22-23, 25-27, 30-31, 34-37,
`and 44-46 Under 35 U.S.C. § 103
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`Both Weast and Encarnacion discuss the capabilities of devices in a UPnP
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`network. Ex. 1004, 1:7-10; Ex. 1005, 5:3-5. Encarnacion includes an extensive
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`description of the UPnP architecture in its Background section, uses standard
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`terminology defined in the UPnP architecture to describe components of the
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`Encarnacion system, and on
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`its face cites to numerous UPnP architecture
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`documents as prior art. See, e.g., Ex. 1005, cover page 2;1:28-3:3; 5:3-37; Fig. 1.
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`Likewise, the Weast reference explicitly discusses that its invention is in the context of
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`UPnP media devices, and it expressly refers to UPnP architecture documents as prior
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`art. See, e.g., Ex. 1004, cover page; 1:7-10; 1:36-46; 2:44-56; 3:12-4:17.
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`Both references describe aspects of the capabilities of devices in a UPnP
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`network, including control points, media rendering devices, and media servers.
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`Whereas Weast includes a detailed disclosure of the user interface for a control point
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`device, Encarnacion describes the exchange of communications among the control
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`point, media rendering device, and media server. A POSA would understand that the
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`user interface for a UPnP control point that is disclosed in Weast could be used in the
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`context of a UPnP system that involves the exchange of communications described in
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`Encarnacion. Almeroth Dec., ¶ 44.
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`One reason to combine the references is that a POSA implementing a UPnP
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`system would need to implement both a user interface for a control point device and a
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`set of communications for the various devices in the system to exchange with one
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`another. The POSA would consider references that taught these distinct portions of
`
`the UPnP system, and would find that combining the teachings of Weast and
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`Encarnacion would yield no more than predictable results from the combination of
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`known prior art devices and methods. Almeroth Dec., ¶¶ 45-46. For example, a UPnP
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`network must include a user interface on the control point device, and Weast teaches
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`one configuration of a user interface on the control point. A UPnP system also needs
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`to store resources available to be accessed by the control point and media rendering
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`device, and one of skill would appreciate that the storage architecture described in
`
`Encarnacion would allow resources to be stored efficiently. Almeroth Dec., ¶ 45. The
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`teachings of Weast and Encarnacion are therefore complementary and could readily be
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`combined with predictable results. Almeroth Dec., ¶ 46.
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`Moreover, the system and method of Encarnacion render media content with
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`user input on