UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2014-00766
`U.S. Patent 8,214,873
`
`___________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO
`37 C.F.R. §42.107
`
`
`
`SONOS 1010 - Page 1
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`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`RELATED INTER PARTES REVIEW IPR2013-00598................................ 1
`
`III.
`
`PETITION IS UNTIMELY UNDER 35 U.S.C. § 315(b) ............................. 3
`
`IV. PETITION SHOULD REJECTED UNDER 35 U.S.C. § 325(d) .................. 6
`
`V.
`
`SUMMARY OF THE ‘873 PATENT ............................................................ 9
`
`VI. CLAIM CONSTRUCTION ......................................................................... 15
`
`1.
`
`2.
`
`3.
`
`Legal Standard ......................................................................... 15
`
`A Person of Ordinary Skill in the Art ...................................... 16
`
`“Playlist” .................................................................................. 16
`
`VII. SUMMARY OF ALLEGED PRIOR ART .................................................. 20
`
`A. U.S. Patent Publication No. 2002/0087996 to Bi et al. (“Bi”) ........... 20
`
`B.
`
`C.
`
`U.S. Patent No. 6,502,194 to Berman et al. (“Berman”) ................... 25
`
`United States Patent 6,622,018 to Erekson (“Erekson”) .................... 28
`
`D. U.S. Patent Publication No. 2003/0080874 Yumoto et al.
`(“Yumoto”) ......................................................................................... 32
`
`E.
`
`F.
`
`U.S. Patent Publication 2001/0044321 to Ausems (“Ausems”) ........ 35
`
`U.S. Patent Publication No. 2002/0173339 to Safadi et al.
`(“Safadi”) ............................................................................................ 36
`
`VIII. THERE IS NO REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE RENDERED OBVIOUS ......................... 39
`
`A.
`
`Legal Standard .................................................................................... 39
`
`SONOS 1010 - Page 2
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`

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`B.
`
`Independent Claims 1 and 30 Are Not Obvious Over Bi and
`Erekson. .............................................................................................. 41
`
`1.
`
`2.
`
`There Is No Motivation to Combine Bi with Erekson ............. 41
`
`Bi and Erekson Do Not Render Obvious Claims 1 and
`30. ............................................................................................. 47
`
`Claims 5 and 34 Are Not Obvious In View Of Bi, Erekson, And
`Ausems ............................................................................................... 48
`
`Claims 4 and 33 Are Not Obvious In View Of Bi, Erekson and
`Safadi .................................................................................................. 49
`
`C.
`
`D.
`
`E.
`
`Claims 5 and 34 Are Not Obvious In View Of Bi And Yumoto ....... 51
`
`1.
`
`2.
`
`3.
`
`There Is No Motivation To Combine Bi And Yumoto. ........... 51
`
`Claims 1 and 30 Are Not Obvious. .......................................... 53
`
`Claims 5 and 34Are Not Obvious ............................................ 54
`
`F.
`
`Claims 5 and 34 Are Not Obvious In View Of Berman And
`Yumoto ............................................................................................... 55
`
`1.
`
`2.
`
`Claims 1 And 30 Are Not Obvious. ......................................... 55
`
`Claims 5 And 34 Are Not Obvious. ......................................... 59
`
`IX. CONCLUSION ............................................................................................. 60
`
`SONOS 1010 - Page 3
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`

`

`TABLE OF AUTHORITIES
`
`
`CASES
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312
`(Fed. Cir. 2012) ................................................................................................... 43
`
`Page(s)
`
`Anova Food, LLC v. Leo Sandau and William R. Kowalski, IPR2013-00114 ...... 2, 3
`
`Apple Inc. v. Rensselear Polytechnic Institute, IPR2014-00319 .......................... 4, 5
`
`Bonneville Associates, Ltd. Partnership v. Baram, 165 F.3d 1360
`(Fed. Cir. 1999) ..................................................................................................... 4
`
`Brennan v. Kulick, 407 F.3d 603 (3d. Cir. 2005) ...................................................... 5
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183 ....................... 40
`
`In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ....................... 15
`
`In re Bass, 314 F.3d 57, (Fed. Cir. 2002) ................................................................ 15
`
`Intellectual Ventures Management, LLC v. Xilinx, Inc.,IPR2012-00020 ................ 42
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ...................................................................................... 40
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .................................... 40, 43, 57
`
`Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004 ............................................ 5
`
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) ........................ 42, 49
`
`Motorola Mobility LLC, et al. v. Arendi S.A.R.L., IPR2014-00203 ........................ 40
`
`In re Nouvel, 493 F. App’x 85 (Fed. Cir. 2012) ................................................ 42, 49
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 15
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 40
`
`Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506 ............................. 8, 9
`
`SONOS 1010 - Page 4
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`

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`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054 ........... 40
`
`STATUTES
`35 U.S.C. § 315(b) ............................................................................................ 1, 3, 6
`
`35 U.S.C. §316(e) .................................................................................................... 39
`
`35 U.S.C. § 325(d) ............................................................................................ 1, 6, 8
`
`OTHER AUTHORITIES
`
`37 C.F.R. §42.100(b) ............................................................................................... 15
`
`37 C.F.R. § 42.107 (c) ................................................................................................ 2
`
`37 C.F.R. § 42.121 ..................................................................................................... 2
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ......................................................... 15
`
`157 Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) ................................................... 8
`
`Fed. R. Civ. P. 16(a)................................................................................................... 4
`
`Fed. R. Civ. P. 41(a)................................................................................................... 4
`
`Fed. R. Civ. P. 41(b) .................................................................................................. 4
`
`MPEP § 2141(II)(C) (8th Ed., Rev. 9, August 2012) .............................................. 16
`
`MPEP § 2141 (8th Ed., Rev. 9, August 2012) ......................................................... 40
`
`MPEP §2143.03 ....................................................................................................... 41
`
`SONOS 1010 - Page 5
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`TABLE OF EXHIBITS
`
`
`Exhibit Description
`
`Declaration of Gareth Loy and Exhibits A - N thereto (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2011)
`
`
`Exhibit #
`
`2001
`
`Deposition Transcript of Dr. Bove dated 5/29/2014 (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2012)
`
`
`2002
`
`
`
`
`
`SONOS 1010 - Page 6
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`The Patent Owner Black Hills Media, LLC (“Patent Owner”) respectfully
`
`submits this Preliminary Response to the Petition for Inter Partes Review (Paper
`
`No. 1, “Petition”) filed by Yamaha Corporation of America (“Petitioner” or
`
`“Yamaha”) concerning U.S. Patent 8,214,873 (“the ‘873 Patent,” Ex. 1001). This
`
`Preliminary Response is timely, as it is being filed within three months of May 28,
`
`2014, the mailing date of the Notice according the Petition a filing date.
`
`I.
`
`INTRODUCTION
`
`Petition should be denied for failure to comply with 35 U.S.C. § 315(b),
`
`because it was filed more than one year from the service of the complaint for
`
`patent infringement. Petition also should be denied under 35 U.S.C. § 325(d)
`
`because Petitioner has previously advanced – and the Board has denied –
`
`substantially the same prior art and arguments against the same claims challenged
`
`in the present Petition. Should the Board find that Yamaha has complied with
`
`statutory prerequisites as a Petitioner, the Board should deny the Petition as none
`
`of the references relied upon gives rise to a reasonable likelihood of Yamaha
`
`prevailing with respect to any of Claims 4, 5, 33, and 34 of the ‘873 Patent.
`
`II. RELATED INTER PARTES REVIEW IPR2013-00598
`This is the second IPR Petition filed by Yamaha against the ‘873 Patent
`
`challenging Claims 4, 5, 33, and 34. In the IPR2013-00598 (the “‘598 IPR”), the
`
`Board declined to institute trial on Claims 4, 5, 33, and 34 based on Bi, Erekson,
`
`SONOS 1010 - Page 7
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`and Berman – the same primary references being relied upon in this Petition. See
`
`‘598 IPR, Paper 23 at 20-23. Upon reconsideration on Petitioner’s request for
`
`“limited rehearing” (‘598 IPR, Paper 22), the Board again rejected Petitioner’s
`
`invalidity contentions with respect to Claims 4, 5, 33, and 34. ‘598 IPR, Paper 23
`
`at 2-4.
`
`In the ‘598 IPR, on June 13, 2014, Patent Owner filed its Response pursuant
`
`to 37 C.F.R. § 42.121 (‘598 IPR, Paper 31) with a supporting Declaration by Dr.
`
`Gareth Loy (the “Loy Declaration,” Ex. 2011 in the ‘598 IPR). Patent Owner
`
`submits herewith, as evidence from the ‘598 IPR, the Loy Declaration (Ex. 2001)
`
`and the transcript of deposition of Petitioner’s expert, Dr. Bove (Ex. 2002), which
`
`are directly relevant to both the alleged invalidity grounds raised in this Petition
`
`and construction of the claim term “playlist.”1 Neither Dr. Loy’s Declaration nor
`
`1 Patent Owner believes that the inclusion of Exhibits 2001 and 2002 in this
`
`proceeding complies with 37 C.F.R. § 42.107 (c), which prohibits submission of
`
`new testimony evidence in a preliminary response “beyond that already of record.”
`
`Specifically, the Board explained in Anova Food, LLC v. Leo Sandau and William
`
`R. Kowalski (IPR2013-00114, June 25, 2013), that the prohibition against new
`
`testimony under 37 C.F.R. § 42.107 (c) “applies only to ‘new’ testimony that was
`
`taken specifically for the purpose of the inter partes review proceeding at issue, as
`
`SONOS 1010 - Page 8
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`Dr. Bove’s transcript is new testimony evidence because they were not prepared in
`
`support of Patent Owner’s positions in the present proceeding. As such, Patent
`
`Owner respectfully contends that it should be allowed to rely on Dr. Loy’s prior
`
`Declaration and Petitioner’s expert’s prior testimony to rebut the Petitioner’s
`
`allegations in this proceeding.
`
`III. PETITION IS UNTIMELY UNDER 35 U.S.C. § 315(b)
`While Petitioner acknowledges that the Petition was filed more than one
`
`year after Petitioner was first served with a complaint alleging infringement of the
`
`‘873 Patent on September 19, 2012, Petitioner erroneously contends that the court-
`
`ordered dismissal without prejudice of the infringement action nullifies the effect
`
`of the original service date for purposes of the 35 U.S.C. § 315(b) statutory bar.
`
`See Paper 1 at 6-7. In support, Petitioner relies on three inapposite and facially
`
`distinguishable decisions issued in IPR2013-00175 (Ex. 1005), IPR2012-00004
`
`(Ex. 1006), and IPR2013-00312 (Ex. 1007), each standing for the proposition –
`
`supported by the discussion and the comments that accompanied the rule.”
`
`(IPR2013-00114, Paper 11 at 3.) Thus, the Board in Annova Food, LLC found a
`
`declaration previously filed in a district court litigation and submitted by the patent
`
`owner with its preliminary response, as not new testimonial evidence and
`
`“appropriately submitted with the response.” Id. at 3.
`
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`inapplicable here – that a voluntary dismissal2 without prejudice leaves the parties
`
`in the same legal position as if the original complaint had never been filed. See id.
`
`at 8-10.
`
`The three decisions are inapplicable here because the dismissal of the Patent
`
`Owner’s infringement complaint was not voluntary under Rule 41(a) of the Federal
`
`Rules of Civil Procedure, but was court-ordered under Rule 41(b). Importantly,
`
`the court allowed Patent Owner to refile the complaint within one week from the
`
`date of dismissal without disturbing the original case schedule, ruling that “[i]f
`
`Plaintiff files new complaints in the Central District of California and serves
`
`Defendants with these complaints by January 21, 2014, the Court shall maintain
`
`the schedule set forth in the November 12, 2013 Scheduling Conference as
`
`allowed under Fed. R. Civ. P. 16(a).” Ex. 1004, p. 7 (emphasis added).
`
`Based on a nearly identical fact pattern, in Apple Inc. v. Rensselear
`
`Polytechnic Institute (IPR2014-00319), the Board denied the petition as being
`
`untimely because a court-ordered dismissal prescribed a set period of time within
`
`2 “The effect of a voluntary dismissal without prejudice pursuant to Rule 41(a) is to
`
`render the proceedings a nullity and leave the parties as if the action had never
`
`been brought.” Bonneville Associates, Ltd. Partnership v. Baram, 165 F.3d 1360,
`
`1364 (Fed. Cir. 1999) (internal citations omitted).
`
`SONOS 1010 - Page 10
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`which the complaint must be refiled for it to enjoy the benefit of the original case’s
`
`schedule and discovery. Ex. 1006, Paper 12 at 5-6 (finding that service of an
`
`original complaint should not be treated as a nullity “because Dynamic I cannot be
`
`treated as if that case had never been filed under the rationale of Macauto . . .
`
`because that cause of action, although dismissed, was continued immediately in
`
`Dynamic II.”) (emphasis added). Notably, the Board in Apple explicitly
`
`distinguished the decision in Macauto U.S.A. v. BOS GmbH & KG (IPR2012-
`
`00004), which was one of the cases cited by the Petitioner.
`
`Specifically, the Board in Apple distinguished between a voluntary
`
`dismissal, which “could result in a significant period of delay prior to the bringing
`
`of a new action,” and an “order of dismissal [that] grants leave to amend within a
`
`time certain,” because such an order will “prevent a plaintiff from indefinitely
`
`extending the limitations period.” Id. at 6, citing Brennan v. Kulick, 407 F.3d 603,
`
`607 (3d. Cir. 2005).
`
`Like in Apple, the court in the Central District of California dismissed the
`
`original case against Petitioner (2:13-cv-06054) without prejudice on January 14,
`
`2014, and, upon Patent Owner’s expeditious refiling of the complaint, maintained
`
`the original 2012 case schedule. Ex. 1004, p. 7. Petitioner does not dispute that
`
`Patent Owner re-filed the complaint against Petitioner, among others, within one
`
`SONOS 1010 - Page 11
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`week on January 21, 2014. See Paper 1 at 8. Consistent with Apple, the original
`
`2012 case against Yamaha cannot be treated as a “nullity” because the litigation
`
`between the parties immediately continued upon re-filing under the same schedule
`
`entered in the original case. For these reasons, the instant Petition should be
`
`rejected for failure to comply with 35 U.S.C. § 315(b), because it was filed more
`
`than one year after the service date of the original complaint.
`
`IV. PETITION SHOULD BE REJECTED UNDER 35 U.S.C. § 325(d)
`As stated above in Section II, this is Yamaha’s second Petition seeking to
`
`invalidate Claims 4, 5, 33, and 34. Unsatisfied with the outcome of the ‘598 IPR,
`
`Yamaha now attempts to recast its prior arguments, armed with the Board’s
`
`guidance as to the earlier petition’s flaws as outlined in the Institution Decision
`
`denying review of the challenged claims (Paper 19 in the ‘598 IPR) and the Order
`
`denying Yamaha’s request for rehearing (Paper 23 in the ‘598 IPR). Yamaha’s
`
`challenges in this Petition are based on the same primary references and arguments
`
`upon which the Board previously declined to institute trial, which Yamaha merely
`
`supplemented with new secondary references. Notably, none of the new references
`
`are alleged by Yamaha to have been unavailable at the time of filing the ‘598 IPR.
`
`In the instant Petition, Yamaha puts forth four grounds based on
`
`obviousness, each of which includes as the primary reference(s) a patent or
`
`publication that was previously asserted in the ‘598 IPR petition. Thus, Petitioner
`
`SONOS 1010 - Page 12
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`challenges Claims 5 and 34 on the combination of Bi and Erekson and further in
`
`view of Ausems (Ground 1), the combination of Bi and Yumoto (Ground 3), and
`
`the combination of Berman and Yumoto (Ground 4). Petitioner also challenges
`
`Claims 4 and 33 on the combination of Bi and Erekson and further in view of
`
`Safadi (Ground 4). In contrast, Petitioner previously challenged Claims 4, 5, 33,
`
`and 34 in the ‘598 IPR on the basis of Bi, Erekson, and the Sony White Paper, and
`
`Claim 33 on the basis of Berman and Van Ryzin. See ‘598 IPR, Paper 3 at p. 10
`
`(Grounds 6 and 8).
`
`While Yamaha has substituted Ausems and Safadi for the Sony White Paper
`
`as secondary references, Yamaha’s arguments for Grounds 1 and 3 remain the
`
`same: Bi and Erekson teach all the elements of Claims 4, 5, 33, and 34, except for
`
`the device being a mobile phone or MP3 player, which Ausems and Safadi
`
`allegedly, respectively disclose. Similarly, in Ground 2 of the instant Petition,
`
`Yamaha argues that Claims 5 and 34 are obvious in light of Bi in combination with
`
`newly-cited Yumoto, while in Ground 4, Yamaha argues that these same claims
`
`are also obvious in light of Berman and Yumoto. The Petitioner previously put
`
`forth obviousness grounds in the ‘598 IPR based on the same primary references of
`
`Bi, Erekson, and Berman. In sum, the Petitioner fails to articulate any relative
`
`distinction between the grounds in the instant Petition and that of the ‘598 IPR that
`
`SONOS 1010 - Page 13
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`require reconsideration of Yamaha’s previous arguments.
`
`Section 325(d) entitles the Board to deny petitions that attempt to rehash
`
`previously-rejected grounds based on cumulative and duplicative art to avoid
`
`giving petitioners an unfair advantage before the Office and in pending
`
`infringement litigation:
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request, because the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`35 U.S.C. § 325(d). The legislative history of Section 325(d) confirms that
`
`Congress intended this provision to prevent “serial challenges” and the resulting
`
`burden on patent owners and the Office in managing multiple proceedings
`
`involving the same patent. 157 Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011)
`
`(statement of Sen. Kyl). Denying cumulative, redundant, and/or repetitive
`
`petitions serves policy goals and helps “secure the just, speedy, and inexpensive
`
`resolution of every proceeding” by encouraging petitioners to present their “best
`
`case” in a first petition and by preventing the gamesmanship and resulting
`
`prejudice to patent owners of allowing petitioners to file serial petitions.
`
`Indeed, in Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506, the
`
`Board denied in its entirety a petition relying on thirteen pieces of art (six of which
`
`SONOS 1010 - Page 14
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`were raised in a previous petition) “because the same or substantially the same
`
`prior art previously was presented to the Office in the [earlier] proceeding.”
`
`IPR2014-00506, Paper 17 at 6 (internal quotations omitted). Thus, in Unilever, the
`
`Board rejected the petitioner’s attempt at the proverbial second bite at the apple,
`
`where like Yamaha in the instant Petition, the petitioner “uses [the Board’s] prior
`
`Decision on Institution to bolster challenges that were advanced, unsuccessfully, in
`
`[an earlier petition].” Id. at 8.
`
`For at least these reasons, the Board should reject the instant Petition in its
`
`entirety as the Board has previously considered (and denied) substantially the same
`
`prior art and arguments in the ‘598 IPR.
`
`V.
`
`SUMMARY OF THE ‘873 Patent
`
`The ‘873 Patent describes and claims a digital entertainment network that is
`
`“a fully integrated plug and play technology platform that delivers secure anytime,
`
`anywhere, on-demand multimedia content for digital home systems.” See Ex.
`
`1001 at 7:12-15. The ‘873 Patent describes and claims systems and methods for
`
`facilitating media sharing between electronic devices. Specifically, “[o]n-demand
`
`delivery of content, such as streaming music, is provided utilizing such user-
`
`friendly features such as customized playlists, collaboration, music management
`
`tools, and search capability.” Id. at 7:21-24; see also 7:40-43.
`
`SONOS 1010 - Page 15
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`“[F]eatures preferably include web-based music catalog browsing via
`
`jukebox interface, search capability (to find artists and specific selections), the use
`
`of standard playlists, the use of custom playlists (created by each user), the ability
`
`to select different devices on which to play songs, the ability to view a user's
`
`activity over a given time period or in real-time with the activity streamer…” Id.
`
`at 7:43-59.
`
`The claimed methods for playing music relate to initiating, from a first
`
`device, playback of one or more songs from a playlist by a second device. In
`
`Figure 1, the ‘873 Patent provides for the interoperability of three classes of
`
`devices: the controller device (first device 13), player device (second device 14),
`
`and content server 10 (via the Internet 11), such that any controller device could
`
`interact with any playback device (and vice versa), and both the controller and the
`
`playback device have independent capability to contact and interact with any
`
`content server via the Internet to receive media. See id. at 8:57-59, 9:15-17, 9:55-
`
`56.
`
`The controller (first device 13) and player (second device 14) are
`
`independent of each other in that they have the ability to independently
`
`communicate with the content server via the Internet to request and receive media
`
`content for playback. See id. at 8:57-59, 9:15-17, 9:55-56, etc.
`
`SONOS 1010 - Page 16
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`
`
`The ‘873 Patent states that, in general, “it may sometimes be beneficial to
`
`think of the first device 13 as a small handheld portable device such as a PDA or
`
`dedicated remote control that can function to control the second device 14 and it
`
`may similarly sometimes be beneficial to think of the second device as a larger
`
`music rendering device such as a stereo, television, or personal computer.” Id. at
`
`9:57-64. More specifically, “the first device 13 may comprise a handheld portable
`
`device such as a personal digital assistant (PDA), a palmtop computer, an MP3
`
`player, a telephone, or a remote control for a music rendering device. The first
`
`device may alternatively comprise a non-portable device, such as a desktop
`
`computer, a television, or a stereo. The second device 14 may comprise the same
`
`type of device as the first device 14 or may alternatively comprise a different type
`
`SONOS 1010 - Page 17
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`of device with respect thereto. Thus, the first and second devices may comprise
`
`portable devices, non-portable devices, or any combination thereof.” Id. at 9:8-19.
`
`
`
`According to one embodiment of the invention, shown in Figure 4, the first
`
`device 13 is capable of directing the second device 14 to communicate with the
`
`content server via the Internet to receive media from the content server for
`
`playback. See id. at Fig. 4, 4:46-60; 11:60-12:23.
`
`The interaction between the user and content, and between the first and
`
`second devices, is driven by playlists, as exemplified throughout the claims and by
`
`steps 41, 42, 44, 46, and 47 in Figure 4. In this exemplary method, a list of
`
`SONOS 1010 - Page 18
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`playlists is displayed as shown in block 41. Id. at 11:53-59. “Each item on the list
`
`of playlists is representative of a particular playlist. Each playlist may come from
`
`any one of a variety of sources. For example, a playlist may be compiled by a
`
`user, a playlist may be obtained from someone else, or a playlist may be formed by
`
`a computer using an algorithm that attempts to identify songs that will suit the
`
`tastes of the listener.” Id. at 10:47-53. One of the playlists is selected as shown in
`
`block 42. Id. at 11:53-59. “The selected playlist is a playlist that is expected to
`
`contain one or more songs that the listener would like to listen to. For example,
`
`the displayed list of playlists may contain a playlist named rock favorites, a playlist
`
`named country favorites, and a playlist named classical favorites. If the listener
`
`wants to listen to classical music that is on the playlist named classical favorites,
`
`the playlist named classical favorites is selected.” Id. at 10:64-11:5.
`
`At least one attribute (such as a name of a playlist, the number of a playlist,
`
`and/or any other unique identifier of a playlist) is sent to the playlist server as
`
`shown in block 43, and a playlist is received as shown in block 44. Id. at 11:53-59.
`
`“This playlist is a list of songs containing at least one song that the listener would
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`like to hear.” Id. at 11:23-26. “[A] second device 14 typically must be selected as
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`shown in block 45. A particular second device may be selected from a list of
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`second devices that is displayed on the first device 13. For example, a listener's
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`desktop computer may be selected from a list having the desktop computer, a
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`television, and a stereo listed thereon.” Id. at 11:60-67. “At least one song is
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`selected from the playlist as shown in block 46.” Id. at 12:6-7. Information
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`representative of the selected song(s) is sent from the first device 13 to the second
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`device 14. This information tells the second device 14 what song(s) are to be
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`played.
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`Claim 1 of the ‘873 Patent is representative of the technology claimed:
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`1. A method for facilitating the presentation of media,
`the method comprising:
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`displaying, on a first device, at least one device identifier
`identifying a second device;
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`receiving user first input selecting the at least one device
`identifier;
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`receiving, on the first device, a playlist, the received
`playlist comprising a plurality of media item identifiers;
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`receiving user second input selecting at least one media
`item identifier from the received playlist; and
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`directing, from the first device, the second device to
`receive a media item
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`identified by the at least one media item identifier from a
`content server, without user input via the second device.
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`Claim 1 thus covers a method where a first device, such as a mobile phone
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`or other handheld, receives a playlist from another location (e.g., a server accessed
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`over the Internet such as one maintained by YouTube or Netflix). The first device
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`then allows for selection of a media item from the playlist and the selection of a
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`second playback device, such as a stereo or television, that the media will be
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`played on. In the claimed invention, the portable device directs the player device
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`to receive the media item–without requiring user input at the player device (thus
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`acting as a controller of that device). Independent claim 30 covers devices for
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`selecting a media item. Claims 4 and 5 depend from Claim 1 and add the
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`limitations that the first device is an MP3 player and a mobile phone, respectively.
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`Claims 33 and 34 depend from Claim 30 and, similarly, add the limitations that the
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`first device is an MP3 player and a mobile phone, respectively.
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`VI. CLAIM CONSTRUCTION
`Legal Standard
`1.
`In an inter partes review, a claim of an unexpired patent is construed using
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`the “broadest reasonable construction in light of the specification.” 37 C.F.R.
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`§42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). A claim term is given its ordinary and customary meaning in the
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`context of the specification as it would be understood by one of ordinary skill in
`
`the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); In
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`re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
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`broadest reasonable construction must take into account any definitions presented
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`in the specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
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`A Person of Ordinary Skill in the Art
`
`2.
`While the Petition itself fails to identify the level of skill and experience that
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`a hypothetical person of ordinary skill in the art would have possessed in or around
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`2004, Petitioner’s expert stated that “a person of ordinary skill in the art pertaining
`
`to the ‘873 Patent would have at least a bachelor’s degree in computer science or
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`electrical engineering, and at least one year of practical experience with networked
`
`multimedia.” Ex. 1002 at ¶ 11. Petitioner’s expert, however, provided no
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`explanation why “at least a bachelor’s degree” and “at least one year of practical
`
`experience” are needed. As such, the definition proposed by Petitioner’s expert is
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`arbitrary and improper at least because it is open-ended and would include persons
`
`who are over-qualified to be considered of “ordinary skill” in the art.
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`Patent Owner proposes instead that the Board adopt the following definition:
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`a person of ordinary skill in the art would have a bachelor’s degree in computer
`
`science or electrical engineering and one year of practical experience with
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`networked multimedia. Should a trial be instituted, Patent Owner reserves the right
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`to present additional evidence on factors to be taken into account in determining
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`the level of ordinary skill. MPEP § 2141(II)(C) (8th Ed., Rev. 9, August 2012).
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`“Playlist”
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`3.
`Petitioner proposes no claim construction and instead states that the “claims
`
`should be given their ordinary and customary meaning.” Paper 1 at 15. Patent
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`Owner believes that consistent with at least the ‘598 IPR, it is important to
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`construe the term “playlist” as the term appears in the independent Claims 1 and
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`30, from which the challenged Claims 4, 5, 33, and 34 depend.
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`As noted in the Loy Declaration, the Board has previously construed the
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`term “playlist” as “a list of media selections.” Ex. 2001 at ¶ 45. Based on the Loy
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`Declaration as well as Petitioner’s expert’s testimony given in the ‘598 IPR, Patent
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`Owner in this proceeding urges the Board to construe “playlist” to mean “a list of
`
`media items arranged to be played in a sequence.” Id. at ¶¶ 44-52. Such
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`construction is consistent with both the plain and ordinary meaning of the term
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`“playlist” and its broadest reasonable construction in view of the ‘873 Patent.
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`A playlist inherently possesses an order that is often intentionally selected by
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`a listener or creator of the playlist, which distinguishes a playlist from an arbitrary
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`group of songs/media items. As noted in the ‘873 Patent, when selecting songs
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`within a playlist, “[t]he selected songs may be played in the order selected, in
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`random order, or in any other desired order. The order can preferably be changed
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`at any time.” Ex. 1001, 11:42-44.
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`The ‘873 Patent uses playlists as a form of curated content, distinct from an
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`arbitrary group of songs/media items, as the Petitioner’s order-less definition
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`implies. See, e.g., Ex. 1001, 10:64-11:5 (“list of playlists may contain a playlist
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`named rock favorites, a playlist named country favorites, and a playlist named
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`classical favorites,”) Id. at 7:47-59 (“find buddies with the same m