Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 1 of 20 Page ID #:3826
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES - GENERAL
`
`DATE: August 21, 2014
`CASE NO.: CV 14-00486 SJO (PJWx)
`TITLE:
`Black Hills Media, LLC v. Sonos, Inc.
`
`========================================================================
`PRESENT: THE HONORABLE S. JAMES OTERO, UNITED STATES DISTRICT JUDGE
`
`Victor Paul Cruz
`Courtroom Clerk
`
`Not Present
`Court Reporter
`
`COUNSEL PRESENT FOR PLAINTIFF(S):
`
`COUNSEL PRESENT FOR DEFENDANT(S):
`
`Not Present
`
`Not Present
`
`========================================================================
`PROCEEDINGS (in chambers): ORDER CONSTRUING CLAIM TERMS [Docket No. 37]
`
`This matter is before the Court for claim construction. On May 19, 2014, Plaintiff Black Hills
`Media, LLC ("Plaintiff") filed its Opening Claim Construction Brief ("Plaintiff's Brief," ECF No. 37).
`On June 2, 2014, Defendant Sonos, Inc. ("Defendant" or "Sonos") submitted a responsive Claim
`Construction Brief ("Defendant's Brief," ECF No. 38), to which Plaintiff filed a Reply on June 9,
`2014 (ECF No. 40). The Court held a Markman hearing on July 10, 2014. (ECF No. 59.)
`
`I.
`
`FACTUAL AND PROCEDURAL HISTORY
`
`The Complaint in the instant case was filed on January 21, 2014, against Defendant, as part of
`a group of three related lawsuits also filed against Pioneer Corp. and Pioneer Electronics (USA)
`Inc. (collectively, "Pioneer") and Yamaha Corporation of America ("Yamaha").1 (See generally
`Compl., ECF No. 1.) See also Compl., Black Hills Media, LLC v. Yamaha Corp. of Am.,
`No. 8:14-cv-00101-SJO-PJW (C.D. Cal. Jan. 21, 2014), ECF No. 1; Compl., Black Hills Media,
`LLC v. Pioneer Elecs. (USA) Inc., No. 2:14-cv-00471-SJO-PJW (C.D. Cal. Jan. 21, 2014), ECF
`No. 1. Plaintiff asserted a total of eleven patents against Sonos. (See generally Compl.) Plaintiff
`also asserted six of these patents against Pioneer and Yamaha; five of the patents were asserted
`against Sonos only.
`
`On September 18 and 19, 2013, Yamaha filed petitions seeking inter partes review by the Patent
`Trial and Appeal Board ("PTAB") of four of the patents asserted against it. (Mot. to Stay Case 9,
`ECF No. 16.) On February 12, 2014, Sonos, Yamaha, and Pioneer jointly filed a motion seeking
`
`1 Plaintiff re-filed the instant Complaint and the two related complaints after the Court
`dismissed without prejudice earlier complaints, filed in May 2012, after finding that Plaintiff
`did not own the asserted patents on the filing date of the earlier complaints. See Order
`Granting Defs.' Mot. to Dismiss ("Dismissal Order"), Black Hills Media, LLC v. Pioneer
`Corp., No. 2:13-cv-05980-SJO-PJW (C.D. Cal. January 14, 2014), ECF No. 112.
`
`MINUTES FORM 11
`CIVIL GEN
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`Initials of Preparer
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 2 of 20 Page ID #:3827
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`to stay the case pending the completion of the inter partes review proceedings. (See generally
`Mot. to Stay Case.) Ultimately, the Court stayed proceedings only with respect to the patents
`commonly asserted against Sonos, Pioneer, and Yamaha, and not with respect to the Sonos-only
`Patents. (Minute Order Granting Defendants' Motion, ECF No. 35.) On July 1, 2014, Plaintiff and
`Sonos jointly applied to dismiss all claims related to Sonos-only U.S. Patent No. 8,028,323 (ECF
`No. 50); the Court granted this application on July 3, 2014 (ECF No. 53).
`
`Thus, the current proceedings are focused on the four remaining Sonos-only Patents: U.S. Patent
`Nos. 6,757,517 ("the '517 Patent"), 6,826,283 ("the '283 Patent"), 7,236,739 ("the '739 Patent")
`(collectively with the '517 Patent, "the Chang Patents"),2 and 7,742,740 ("the '740 Patent"). All of
`these patents disclose methods and apparatuses for playing music on multiple devices
`synchronously. Plaintiff alleges that by selling wireless audio speakers that play the same or
`different music synchronously, Sonos is infringing the Sonos-only Patents. (Pl.'s Br. 2.)
`
`Pursuant to this Court's June 18, 2014 Minute Order, four terms or phrases will be construed at
`the July 10 Markman hearing. (Minute Order Limiting Terms to Be Construed at Markman
`Hearing, ECF No. 44.) These are: 1) the term "central processor," found in Claim 6 of the '283
`Patent ('283 Patent 9:14-35); 2) the phrases "music sharing"/"music selection"/"selecting a song,"
`found in Claims 2 and 9 of the '739 Patent and Claims 6 and 13 of the '517 Patent ('739 Patent
`6:14, 22, 23-27, 62-67; '517 Patent 6:42, 7:47); 3) the terms "music listening apparatus"/"music
`playback device"/"listening apparatus," found in a number of claims in the '517 and '739 Patents
`(see, e.g., '739 Patent 5:58, 6:14-16, 54-56; '517 Patent 5:48-49, 6:31-33); and 4) the phrase
`"effecting playback of the select media content at the first receiving media player device," found
`in Claims 1 and 4 of the '740 Patent ('740 Patent 61:26-27, 62:4-5).
`
`II.
`
`DISCUSSION
`
`Claim construction, the process of giving proper meaning to the claim language, is a question for
`the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996); see also Lighting
`Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1276-77 (Fed. Cir. 2014).
`"Courts construe claim terms in order to assign a fixed, unambiguous, legally operative meaning
`to the claim." Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1377 (Fed. Cir. 2005).
`
`In claim construction, claim terms "are generally given their ordinary and customary meaning."
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). "[T]he ordinary and customary
`meaning of a claim term is the meaning that the term would have to a person of ordinary skill in
`the art in question at the time of the invention, i.e., as of the effective filing date of the application."
`Id. at 1313. "Importantly, the person of ordinary skill in the art is deemed to read the claim term
`not only in the context of the particular claim in which the disputed term appears, but in the context
`of the entire patent, including the specification." Id.
`
`2 The '517 and '739 Patents are related and share a common inventor and specification.
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 3 of 20 Page ID #:3828
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`To determine the ordinary and customary meaning of a claim term, a court must "look[] to those
`sources available to the public that show what a person of skill in the art would have understood
`disputed claim language to mean," including "the words of the claims themselves, the remainder
`of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific
`principles, the meaning of technical terms, and the state of the art." Id. at 1314 (internal citations
`and quotation marks omitted). This evidence, however, is not all of equal importance in the claim
`construction analysis. See id. at 1314-19; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
`1582-84 (Fed. Cir. 1996). Rather, "[i]t is well-settled that . . . the court should look first to the
`intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in
`evidence, the prosecution history." Vitronics, 90 F.3d at 1582. This "intrinsic evidence is the most
`significant source of the legally operative meaning of disputed claim language." Id.
`
`"It is elementary that claim construction begins with, and remains focused on, the language of the
`claims." Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1302 (Fed. Cir. 2005). Thus,
`in construing claim terms, a court first "look[s] to the words of the claims themselves, both
`asserted and nonasserted . . . ." Vitronics, 90 F.3d at 1582. "[T]he claims themselves provide
`substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. For
`instance, "the context in which a term is used in the asserted claim can be highly instructive" and
`often provides a "firm basis for construing the term." Id. In addition, "[o]ther claims of the patent
`in question, both asserted and unasserted, can . . . be valuable sources of enlightenment as to
`the meaning of a claim term" and "can often illuminate the meaning of the same term in other
`claims." Id. Similarly, "[d]ifferences among claims can . . . be a useful guide in understanding the
`meaning of particular claim terms," id., as differences in claim terms "are presumed to reflect a
`difference in the scope of the claims," Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1310
`(Fed. Cir. 2001).
`
`The claims should not be read in isolation but "must be read in view of the specification, of which
`they are a part." Phillips, 415 F.3d at 1315. Thus, after considering the claim language, the court
`must next look to the rest of the specification. Vitronics, 90 F.3d at 1582. The specification is
`"always highly relevant to the claim construction analysis" and "is the single best guide to the
`meaning of a disputed term." Phillips, 415 F.3d at 1315. Nevertheless, the court should not
`import limitations from the specification into the claims. See ICU Med., Inc. v. Alaris Med. Sys.,
`Inc., 558 F.3d 1368, 1375 (Fed. Cir. 2009); Renishaw PLC v. Marposs Societa' per Azioni, 158
`F.3d 1243, 1248 (Fed. Cir. 1998). However, a court must also examine the intrinsic evidence "to
`determine whether the patentee has set forth an explicit definition of a term contrary to its ordinary
`meaning, has disclaimed subject matter, or has otherwise limited the scope of the claims." Day
`Int'l, Inc. v. Reeves Bros., 260 F.3d 1343, 1348 (Fed. Cir. 2001).
`
`"In addition to consulting the specification, . . . a court should . . . consider the patent's prosecution
`history, if it is in evidence." Phillips, 415 F.3d at 1317; see Vitronics, 90 F.3d at 1582. The
`prosecution history "consists of the complete record of the proceedings before the PTO and
`includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317; see
`
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 4 of 20 Page ID #:3829
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`Vitronics, 90 F.3d at 1582. "Like the specification, the prosecution history provides evidence of
`how the PTO and the inventor understood the patent," which may "inform the meaning of the claim
`language." Phillips, 415 F.3d at 1317. Nevertheless, the prosecution history "often lacks the
`clarity of the specification and thus is less useful for claim construction purposes." Id.
`
`Courts may also rely on extrinsic evidence, "including expert and inventor testimony, dictionaries,
`and learned treatises." Id. Although extrinsic evidence may "shed useful light on the relevant art,"
`it is "less significant" and "less reliable" than the intrinsic record in determining the legally operative
`meaning of a claim term. Id. at 1317-18. "A court should discount any expert testimony 'that is
`clearly at odds with the claim construction mandated by the claims themselves, the written
`description, and the prosecution history, in other words, with the written record of the patent.'" Id.
`at 1318 (citing Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)).
`
`A.
`
`The '283 Patent
`
`The application for the '283 Patent was filed on July 27, 2000, and the patent was issued on
`November 30, 2004. The '283 Patent, titled "Method and System for Allowing Multiple Nodes in
`a Small Environment to Play Audio Signals Independent of Other Nodes," describes methods and
`systems for playing audio at different nodes, which the patent explains could be rooms of a house
`or small business.
`
`1.
`
`Central Processor
`
`Plaintiff's Proposal
`"audio distribution device"
`
`Defendant's Proposal
`"a centralized audio distribution server that
`transfers audio signals that are (1) stored on
`the server and (2) external to the server"
`
`Here, the parties dispute whether the term "central processor" is an "audio distribution device" or
`whether it is "a centralized audio distribution server."3 However, the heart of the parties' dispute
`
`3 Defendant originally proposed the construction "a centralized audio distribution server
`that transfers audio signals that are (1) stored on the server and (2) external to the server,"
`but states in its Brief that "[t]he primary difference" between its and Plaintiff's construction
`is that its proposed construction includes the word "centralized." (Def.'s Br. 3.) Defendant
`also briefly explains why the central processor is a "server" in its Brief (Def.'s Br. 4 & n.8);
`however, Defendant appears to concede the remainder of its proposed construction, which
`largely serves to limit the term "audio signals" (see Def.'s Br. 3-5). The Court thus focuses
`its analysis on the "primary difference" between the two parties' proposed constructions,
`as identified by Defendant. (Def.'s Br. 3.)
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 5 of 20 Page ID #:3830
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
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`appears to be whether all audio signals played by the nodes must be transferred through the
`central processor, as Defendant contends (Transcript for Proceedings Held on 7/10/2014 ("Tr.")
`18-19, ECF No. 79), or whether, while infringement requires certain signals to pass through the
`central processor, nodes may play other signals independently of the central processor, as Plaintiff
`contends (Tr. 29). The term "central processor" appears in Claim 6 of the '283 Patent. ('283
`Patent 9:14-35.) Claim 6 describes:
`
`c)
`
`A method of distributing audio in a small environment comprising the
`steps of:
`storing a plurality of audio signals on a central processor;
`a)
`b)
`presenting a plurality of nodes a selection comprising a
`plurality of audio signals external to the central processor and
`at least a portion of the stored audio signals;
`selecting audio signals from the selection presented in said b)
`to be transferred from said central processor to said plurality
`of nodes by inputting requests into said plurality of nodes;
`transferring said audio signals selected in said c) from said
`central processor to said nodes; and
`presenting said audio signals transferred in said d) on a
`plurality of audio presentation devices, wherein each audio
`presentation device is coupled to one node of said plurality of
`nodes, such that each node of said plurality of nodes is
`capable of playing a different audio signal than is being played
`concurrently on any other node of said plurality of nodes.
`
`d)
`
`e)
`
`('283 Patent 9:14-36 (emphasis added).)
`
`Looking at the words of the claim itself, the central processor 1) stores audio signals, which are
`presented to the nodes along with audio signals stored external to the central processor, and 2)
`transfers from the central processor to the nodes audio signals selected from that presentation of
`signals. The claim language is explicit that selected audio signals, whether originally stored on
`the central processor or external to it, are transferred "from said central processor to said nodes."
`('283 Patent 9:27-28.) Thus, the Court agrees with both parties that to infringe this method claim,
`transferred audio signals must pass through the central processor to the node. However, the
`claims are silent as to whether the nodes may receive audio from other sources independent of
`the central processor, distribute audio to other nodes, or take turns serving as the central
`processor, and the claims are written in the open-ended "comprising" format, meaning that
`additional steps are allowed. Thus, the language of the claim does not support Defendant's
`interpretation that all audio signals played by the nodes must be transferred through the central
`processor. For example, as written, the claims allow a CD player to be coupled with a node's
`audio presentation devices so that it could play audio signals directly from CDs independent of the
`
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 6 of 20 Page ID #:3831
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`central processor. Under Defendant's interpretation, the addition of such a CD player would mean
`there could be no infringement.
`
`Defendant further argues that the specification teaches that all songs must be transferred from the
`central processor to the nodes. It is true that the specification, like the claims, frequently describes
`the central processor or audio signal distribution device as transferring songs to the nodes. ('283
`Patent 5:28-30, 5:66-6:2, 6:32-38.) For example, the specification states that "requests are
`transferred to the audio signal distribution device 100, which transfers the requested audio signal
`201 to the node 200." ('283 Patent 5:28-30.) However, the specification does not explicitly require
`all audio signals to be transferred through the central processor or the nodes to only play music
`from the central processor. The Court will not import these limitations from the specification into
`the claim.
`
`Defendant also presents the testimony of Tim Price, the co-inventor, who stated that "all audio
`must go through the central processor 100 before being distributed to the nodes 200," and that
`"[t]he nodes 200 only receive audio from central processor 100 and do not receive audio from any
`other sources or distribute audio to any other node." (Decl. of George I. Lee in Supp. of Def.'s Br.
`("Lee Declaration"), Ex. B ("Price Declaration") ¶¶ 7-8, ECF No. 38-1.) While "'the subjective
`intent of the inventor when he used a particular term is of little or no probative weight in
`determining the scope of a claim,' . . . [a]n inventor is a competent witness to explain the
`invention . . . ." Voice Techs. Grp., Inc. v. VMC Sys., Inc., 164 F.3d 605, 615 (Fed. Cir. 1999)
`(quoting and distinguishing Markman v. Westview Instruments, Inc., 52 F.3d 967, 985 (Fed. Cir.
`1995), aff'd, 517 U.S. 370 (1996)). Nonetheless, "the inventor can not by later testimony change
`the invention and the claims from their meaning at the time the patent was drafted and granted."
`Id. As discussed, the Court agrees that infringement requires audio signals to first pass through
`the central processor. However, because the claim includes the term "comprising," the claim
`language allows nodes to receive audio independent of the central processor. The Court cannot
`change the scope of the claim as written solely in response to Mr. Price's deposition.
`
`An additional concern the Court has with Defendant's construction is the term "server." Defendant
`has provided no clear definition for this term, and the Court fears that it could improperly limit the
`claim, as it may imply that the claim requires separate server hardware. The claim language does
`not use the term "server." And while the specification teaches an embodiment wherein the nodes
`and the audio distribution device interface via a server interface ('283 Patent 5:62-6:2), this is but
`a single possible embodiment, and the Court declines to import any such limitation from the
`specification into the claim. See ICU Med., 558 F.3d at 1375; Renishaw, 158 F.3d at 1248. Thus,
`the Court will not read this proposed limitation into the claim.
`
`Plaintiff seeks to construe the term "central processor" as "audio distribution device." To some
`extent, the claims suggest that this construction is also incorrect. In construing a term, a court
`looks to both asserted and nonasserted claims, and "[d]ifferences among claims can . . . be a
`useful guide in understanding the meaning of particular claim terms." Vitronics, 90 F.3d at 1582.
`
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`SONOS 1014 - Page 6
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 7 of 20 Page ID #:3832
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`Here, nonasserted system claims in the '283 Patent use the term "audio signal distribution device"
`instead of "central processor" to refer to the device that distributes audio signals to the nodes.
`('283 Patent 8:49-52; 10:24-31.) Furthermore, the "audio signal distribution device" in the system
`claims is coupled to a "storage device" that stores audio signals, so, as used in these claims, an
`"audio signal distribution device" lacks internal storage, unlike the central processor described in
`Claim 6. ('283 Patent 8:53-55; 10:32-34.) Finally, Claim 16 of the '283 Patent contains both the
`term "audio signal distribution device" and "central processor" ('283 Patent 10:24-34, 50),
`suggesting these terms have different meanings.
`
`However, claims are read in the context of the specification, and the specification muddies the
`water, as the term "central processor" is often equated or used interchangeably with the terms
`"audio signal distribution device" and "audio distribution device." For example, Figure 1 shows a
`schematic diagram of an exemplary computer system 100 that is alternatively referred to as an
`"audio signal distribution device" ('283 Patent 4:64, 5:11-12, 5:19-20, 5:28-30, 5:65-66, 6:27,
`7:21-22); an "audio distribution device" ('283 Patent 5:45, 5:49-50, 5:67, 7:66-67); and a "central
`processor (audio signal distribution device)" ('283 Patent 6:44-45, 7:2-3 & fig. 4). Thus, despite
`the contrasting uses of the phrase "audio signal distribution device" and "central processor" in the
`claims, the specification teaches that these terms may be used synonymously. When read in light
`of the specification, "central processor" can be defined as either "audio signal distribution device"
`or, as Plaintiff contends, "audio distribution device."
`
`Reviewing all of the available evidence, the Court agrees that, to infringe the claim, selected
`signals must be transferred to the nodes from the central processor. Thus, to the extent
`Defendant seeks to construe the term central processor to imply a client-server relationship4
`whereby the server central processor supplies audio signals to client nodes, this limitation is
`expressly required by the terms by the words of the claim. However, the Court is also concerned
`that Defendant's proposed construction will improperly limit the claim—for example, by implying
`that a separate hardware server is required, that the device acting as the central processor cannot
`also play music, or that the nodes cannot play music independently of the central processor.
`Because the centralized nature of the central processor is inherent in the claim language and
`because the Court is concerned that additional limitations will unduly limit the claim, the Court
`declines to adopt Defendant's proposed construction. Instead, the Court adopts Plaintiff's
`proposed definition for "central processor" meaning "audio distribution device."
`
`B.
`
`The Chang Patents
`
`On May 10, 2001, a patent application was filed for the '517 Patent, and on June 29, 2004, a
`continuation application was filed for the '739 Patent. The Chang patents share a common
`
`4 In a client-server network, the client requests and receives resources from the server.
`This contrasts with a peer-to-peer network, where the peers communicate with each other
`directly.
`
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`SONOS 1014 - Page 7
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 8 of 20 Page ID #:3833
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`specification and both patents are titled "Apparatus and Method for Coordinated Music Playback
`in Wireless Ad-Hoc Networks." These patents teach how to use "wireless networking and digital
`music technologies to achieve coordinated and synchronized music playback" so that "two or more
`listeners in local proximity . . . can participate and listen to the same song at the same time." ('739
`Patent, at Abstract.)
`
`1.
`
`Music Sharing/Music Selection/Selecting a Song
`
`Plaintiff's Proposal
`Plain and ordinary meaning, no construction
`required.
`
`Defendant's Proposal
`"music that the parties have mutually agreed
`to play"5
`
`If construction is necessary:
`"music sharing" means "making available
`audio information"
`"music selection" means "designated audio
`information"
`"selecting a song" means "choosing a media
`item"
`
`The phrases "music sharing," "music selection," and "selecting a song" are found in Claims 2 and
`9 of the '739 Patent and Claims 6 and 13 of the '517 Patent. ('739 Patent 6:14, 22, 23-27, 62-67;
`'517 Patent 6:42, 7:47.) The parties dispute whether these terms include a limitation requiring the
`parties to mutually agree to select and share music, or whether the terms take on their plain and
`
`5 In its Brief, Defendant concedes that the phrase "determining whether music sharing is
`enabled" should be construed as "determining whether there is music that the parties have
`mutually agreed to play"; the phrase "selecting a song" should be construed as "selecting
`music that the parties have mutually agreed to play"; and the phrase "playing a music
`selection" means "playing music that the parties have mutually agreed to play on the first
`music playback device." (Def.'s Br. 12.) Thus, Defendant does not appear to argue that
`these three terms have identical constructions, but rather that the three terms contain an
`identical limitation requiring the parties to mutually agree to play the music. This is wise,
`as some of the disputed phrases ("music sharing" and "music selection") are used in
`different steps in the same claim (see, e.g., '739 Patent 6:14-27), from which the Court may
`infer that the patentee "intended his choice of different terms to reflect a differentiation in
`the meaning of those terms," Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111, 1119 (Fed. Cir. 2004). Furthermore, the disputed phrases "music selection"
`and "selecting a song" are different parts of speech, so it would be nonsensical to assign
`identical constructions to these phrases.
`Page 8 of 20
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`SONOS 1014 - Page 8
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`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 9 of 20 Page ID #:3834
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`ordinary meaning in the claims. It is not clear to the Court whether Defendant seeks only a
`limitation requiring parties to mutually agree generally to play music together, or whether
`Defendant seeks agreement on a song-by-song or transaction-by-transaction basis. (Tr. 41-42.)
`However, Defendant seeks to construe the phrase "playing a music selection" to mean "playing
`music that the parties have mutually agreed to play." To the Court, this suggests that the parties
`must mutually agree on the music selection, not merely to share music more generally. The Court
`has therefore treated Defendant's construction as requiring mutual agreement on the individual
`song selections.
`
`Claim 2 of the '739 Patent describes:
`
`A method for sharing music between a first music playback device,
`and at least a second music playback device, comprising the steps of:
`-
`exchanging wireless messages between the first and the at
`least second music playback devices, wherein exchanging
`messages establishes an ad-hoc network between the first and
`the at least second music playback devices;
`determining whether music sharing is enabled;
`playing a music selection on the first music playback device;
`and
`playing back the music selection on the at least second music
`playback device in synchrony with the first music playback
`device.
`
`-
`-
`
`-
`
`('739 Patent 6:14-27 (emphasis added).) Thus, this claim describes a method for sharing music
`in which a music selection is played in synchrony by two music playback devices. Claim 9 of the
`'739 Patent describes "a portable music listening apparatus for coordinated music playback" with
`a second apparatus, "wherein the random access controller supports the establishment of an
`ad-hoc network over the wireless transceiver with the at least one other apparatus after which a
`music selection being played on the music playback device is synchronously played on a music
`playback device of the other apparatus." ('739 Patent 6:54-67 (emphasis added).)
`
`In the '517 Patent, Claim 6 describes a "method for interactively playing music between multiple
`users, including at least a first user and a second user, comprising . . . selecting a song; and
`synchronizing playing the song in the apparatuses." ('517 Patent 6:28-43 (emphasis added).)
`Claim 13 of the '517 Patent specifies a "method for interactively playing music between multiple
`users," with steps that include "exchanging a sequence of messages between the first apparatus
`and the second apparatus; selecting a song; and synchronizing playing the song in the
`apparatus." ('517 Patent 7:38-47 (emphasis added).)
`
`In the claims, the phrases "music sharing," "music selection," and "selecting a song" take on their
`plain and ordinary meaning. There is nothing in the claim language to teach that, in sharing or
`
`Page 9 of 20
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`SONOS 1014 - Page 9
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`

`

`Case 2:14-cv-00486-SJO-PJW Document 82 Filed 08/21/14 Page 10 of 20 Page ID #:3835
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`CASE NO.: CV 14-00486 SJO (PJWx)
`
`DATE: August 21, 2014
`
`selecting a song, the parties must have mutually agreed to play the music. Defendant argues that
`the term "sharing" indicates "mutual coordination and agreement," such as when two users agree
`to share music. (Def.'s Br. 9.) The Court disagrees that the plain and ordinary meaning of sharing
`to a person of ordinary skill in the art requires mutual agreement. For example, two prisoners
`sharing a jail cell certainly did not mutually agree to share that cell, and it is possible to share an
`opinion with someone who has no desire to hear that opinion. Furthermore, in the field of
`computer science, sharing can mean making files available over a shared network, or jointly using
`something with another party, such as sharing network resources with that party. Neither of these
`uses requires mutual agreement. Finally, even if the term "sharing" did imply some degree of
`mutual agreement to share music generally, it would not also require that the parties must mutually
`agree to play each selected song.
`
`Defendant also argues that the words "interactively" and "coordinated" in the preambles of several
`of the asserted claims ('739 Patent 6:54; '517 Patent 6:28, 7:38) call for mutual agreement from
`the parties (Def.'s Br. 8-9). However, while "[w]here a patentee uses the claim preamble to recite
`structural limitations of his claimed invention, the PTO and courts give effect to that
`usage[,] . . . where a patentee defines a structurally complete invention in the claim body and uses
`the preamble only to state a purpose or intended use for the invention, the preamble is not a claim
`limitation." Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (citations omitted). Here, the terms
`"interactively" and "coordinated" do not recite essential structural limitations of the claim, but rather
`provide a purpose for the claimed structure, and thus do not further limit the claim. Additionally,
`even if these terms did limit the claimed invention, they would not necessarily do so in the way
`Defendant claims. A "method for interactively playing music between multiple users" means only
`that the users must interface or play music together in some way, not that they must mutually
`agree to play music. ('517 Patent 6:28, 7:38.) Similarly, "coordinated music playback" does not
`require the parties to mutually agree to playback the music, but only that this playback be
`organized or synchronous in some way. ('739 Patent 6:54.)
`
`Defendant's arguments are further weakened by the fact that other claims explicitly include the
`limitation Def