Trials@uspto.gov
`571-272-7822
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` Paper 7
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`Entered: November 24, 2014
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`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 IPR2014-00766
`Patent 8,214,873 B2
`
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, and
`PETER P. CHEN, Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`SONOS 1010 - Page 1
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`
`571-272-7822
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`
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` Paper 7
`
`Entered: November 24, 2014
`
`
`
`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 IPR2014-00766
`Patent 8,214,873 B2
`
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, and
`PETER P. CHEN, Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`SONOS 1010 - Page 1
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`IPR2014-00766
`Patent 8,214,873 B2
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`I. INTRODUCTION
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`Yamaha Corporation of America (“Petitioner”) filed a Petition
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`requesting an inter partes review of claims 4, 5, 33, and 34 of
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`U.S. Patent No. 8,214,873 B2 (Ex. 1001, “the ’873 patent”). Paper 1
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`(“Pet.”). Black Hills Media, LLC (“Patent Owner”) filed a Preliminary
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`Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
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`§ 314, which provides that an inter partes review may not be instituted
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`“unless . . . there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition.”
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`Upon consideration of the Petition and the Preliminary Response and
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`their accompanying exhibits, Petitioner has demonstrated a reasonable
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`likelihood that it would prevail in showing the unpatentability of claims 4, 5,
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`33, and 34 of the ’873 patent. Accordingly, we institute an inter partes
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`review of these claims.
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`A. Related Proceedings
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`On May 12, 2012, Patent Owner filed a Complaint against Petitioner
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`in the U.S. District Court for the District of Delaware, alleging infringement
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`of three patents. On September 12, 2012, Patent Owner filed a First
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`Amended Complaint (“FAC”) against Petitioner, alleging for the first time,
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`infringement of the ’873 patent. See Black Hills Media, LLC v. Yamaha
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`Corp. of America, No. 1:12-cv-00635-RGA (D. Del.). The FAC was served
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`on September 19, 2012. Pet. 7.
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`2
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`On August 5, 2013, the Delaware Court transferred the case to the
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`Central District of California. Id. In November 2013, the Central District of
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`California ordered Patent Owner to file evidence of the chain of title for the
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`asserted patents. Ex. 1004, 3. In December 2013, Defendants moved to
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`dismiss the FAC for lack of standing, on the basis that Patent Owner did not
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`own the allegedly infringed patents when it filed the original complaint in
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`Delaware in May 2012. Id. The Central District of California subsequently
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`found that “Plaintiff did not in fact own all rights and interests in the First
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`Asserted Patents on May 22, 2012, when it filed the cases (citations
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`omitted). In fact, Plaintiff did not take ownership of the patents until July
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`23, 2012, more than two months after filing the Complaints (citation
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`omitted). Plaintiff does not dispute these facts.” Id. at 2.
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`The court dismissed the FAC without prejudice and further ordered
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`Patent Owner to file and serve “new complaints in the Central District of
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`California” by January 21, 2014. Ex. 1004, 7. On January 21, 2014, Patent
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`Owner filed and served a new complaint alleging infringement of the ’873
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`patent by Petitioner, No. 8:14-cv-00101. Pet. 8.
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`The Patent Owner also initiated an investigation, pursuant to 19
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`U.S.C. § 1337, in the U.S. International Trade Commission against LG,
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`Sharp, Toshiba, Panasonic, and Samsung alleging, inter alia, infringement
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`of the ’873 patent. See Certain Digital Media Devices, Including
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`Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and
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`Mobile Phones, Components Thereof and Associated Software, Inv. No.
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`3
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`337-TA-882 (USITC).1 Pet. 14.
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`We previously instituted an inter partes review of claims 1, 2, 6–12,
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`13, 15–31, 42, 44–46 of the ’873 patent, in IPR 2013-00598, Yamaha
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`Corporation of America v. Black Hills Media LLC (PTAB March 20, 2014)
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`(Paper 19). In that proceeding, we denied institution as to claims 4, 5, 33,
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`and 34. Id.2
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`B. The ’873 Patent
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`The subject matter of the challenged claims of the ’873 patent relates
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`generally to a system and method for media sharing between electronic
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`devices, by using a first device to provide remote control of playing of
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`media items (e.g., songs or videos) on a second device such as a stereo or
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`television. Ex. 1001, Abstract, 9:8–14. The first device receives a playlist
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`and selects the second device, and a user selects the media items to be
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`
`1 An Administrative Law Judge (“ALJ”) at the ITC has issued a Final
`Initial Determination, in which the ALJ determined that the ’873 patent is
`invalid under 35 U.S.C. § 112, ¶ 1. See Certain Digital 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 (July 14, 2014) (Final Initial Determination). The ITC
`subsequently determined not to review this part of the ALJ’s final initial
`determination. See 79 Fed. Reg. 55,827–28 (Sept. 17, 2014).
`2 Patent Owner argues that the Petition should be rejected under
`35 U.S.C. § 325(d). Prelim. Resp. 6–9. We have reviewed the Patent
`Owner’s arguments and cited authorities, and exercise our discretion to
`decline to reject the Petition under § 325(d). Petitioner’s prior art and
`arguments differ from those in IPR2013-00598.
`4
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`played on the second device, without user input via the second device.
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`Pet. 2; Prelim. Resp. 6; Ex. 1001, Abstract; 2:28–40, 52–68.
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`Figure 1 of the ’873 patent is reproduced below.
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`
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`Figure 1 depicts an embodiment of the invention wherein a playlist is
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`communicated from playlist server 11 via Internet 12 to first device 13 or
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`second device 14. Ex. 1001, 8:51–56. First device 13 comprises a remote
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`control for second device 14, which may comprise a music rendering device
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`such as a stereo, television, or home computer. Id. at 9:27–32, 55–63.
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`C. Representative Claims
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`Dependent claims 4, 5, 33, and 34 are the subject of the petition.
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`Claims 4 and 5 depend from claim 1, and claims 33 and 34 depend from
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`claim 30. Independent claim 1 is reproduced as follows.
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`5
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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 identified by the at least one media item identifier
`from a content server, without user input via the second device.
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`Claims 4, 5, 33, and 34 are reproduced below.
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`4. The method as recited in claim 1, wherein the first device
`comprises an MP3 player.
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`5. The method as recited in claim 1, wherein the first device
`comprises a mobile phone.
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`33. The device as recited in claim 30, wherein the device comprises an
`MP3 player.
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`34. The device as recited in claim 30, wherein the device comprises a
`mobile phone.
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`C. Prior Art Relied Upon
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`Petitioner relies upon six prior art references.
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`Reference
`
`Title
`
`Bi
`
`US 2002/0087996 A1
`
`Erekson
`
`US 6,622,018 B1
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`Ausems
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`US 2001/0044321 A1
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`Yumoto
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`US 2003/0080874 A1
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`Safadi
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`US 2002/0173339 A1
`
`Berman
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`US 6,502,194 B1
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`Ex. No.
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`D. The Asserted Grounds
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`Petitioner contends the challenged claims are unpatentable based on
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`four grounds.
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`Reference(s)
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`Basis
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`Claims Challenged
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`Bi, Erekson, and Ausems
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`§ 103
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`5 and 34
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`Bi and Yumoto
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`§ 103
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`5 and 34
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`Bi, Erekson, and Safadi
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`§ 103
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`4 and 33
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`Berman and Yumoto
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`§ 103
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`5 and 34
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`7
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`II. ANALYSIS
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`A. Statutory Bar Under 35 U.S.C. § 315
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`A threshold issue is Patent Owner’s contention that Petitioner is
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`barred from pursuing inter partes review under 35 U.S.C. § 315(b), which
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`provides:
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`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the
`date on which the petitioner, real party in interest or privy of
`the petitioner is served with a complaint alleging infringement
`of the patent.
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`In this proceeding, Petitioner filed its Petition on May 16, 2014
`
`(Paper 1), which was less than four months after it was served with Patent
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`Owner’s complaint filed on January 21, 2014, in the Central District of
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`California alleging infringement of the ’873 patent. Pet. 8. As described at
`
`pages 2–4 above, the January 21, 2014, complaint was filed one week after
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`the court order dismissing the FAC.
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`Patent Owner argues that the date on which Petitioner was served with
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`a complaint alleging infringement of the ’873 patent was the FAC, filed on
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`September 19, 2012. Prelim. Resp. 3. However, the FAC was
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`jurisdictionally defective because Patent Owner lacked standing to sue at the
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`time of the original complaint in May 2012. Ex. 1004, at 2. In a patent
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`infringement action, for plaintiff properly to allege standing, it “must
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`demonstrate that it held enforceable title to the patent at the inception of the
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`lawsuit.” Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309–
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`8
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`10 (Fed. Cir. 2003). “[I]f the original plaintiff lacked Article III standing,
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`the suit must be dismissed, and the jurisdictional defect cannot be cured”
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`after the inception of the lawsuit. Schreiber Foods, Inc. v. Beatrice Cheese,
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`Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005). Thus, neither Patent Owner’s
`
`original 2012 complaint nor its FAC were viable federal pleadings. Patent
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`Owner finally filed a federal complaint properly alleging its standing to sue,
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`on January 21, 2014. The instant petition was filed in May 2014.
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`Accordingly, Patent Owner’s argument under § 315(b) fails.
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`Patent Owner argues (Prelim. Resp. 4–6) that we should follow the
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`Board’s recent denial of a petition under § 315(b) in Apple Inc. v Rensselaer
`
`Polytechnic Institute, Case IPR2014-00319 (PTAB June 12, 2014) (Paper
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`12), Reh’g denied (Paper 14 ). In Apple, an earlier filed complaint was
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`dismissed without prejudice pursuant to a consolidation order in which the
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`earlier complaint was consolidated into another existing complaint. The
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`Board found that the earlier lawsuit, “although dismissed, was continued
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`immediately” into the consolidated action. Id. Paper 12, 6. The Apple case
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`is distinguishable because the earlier, first-filed lawsuit against Apple was
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`not jurisdictionally defective for lack of standing. On the record before us,
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`we are not persuaded that this Petition should be denied under § 315(b).
`
`B. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
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`9
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). Claim terms generally are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007).
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`Petitioner states that, as in our Decision in IPR2013-00598 (Paper 19)
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`“the claims should be given their ordinary and customary meaning,” Pet. 14–
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`15. Patent Owner’s Preliminary Response and accompanying exhibits,
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`including the declaration of Gareth Loy, assert that a “playlist” is “a list
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`referencing media items arranged to be played in a sequence.” Prelim. Resp.
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`16–19. The Specification, however, states that “selected songs may be
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`played in the order selected, in random order, or in any other order. The
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`order can preferably be changed at any time.” Ex. 1001, 3:23–24, 11:42–44.
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`The construction proposed by Patent Owner is too narrow and would
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`exclude the embodiment described in the specification. For purposes of this
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`Decision, we determine that “playlist,” and all other terms in the challenged
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`claims do not require express construction at this time.
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`C. Claims 5 and 34 – Obviousness over Bi, Erekson, and Ausems
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`Petitioner contends claims 5 and 34 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Bi, Erekson, and Ausems. Pet. 17–30. Claim 5
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`depends from claim 1, with claim 5 further reciting that the first device
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`comprises an MP3 player. Claim 34 depends from claim 30, further reciting
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`that the claimed device comprises an MP3 player.
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`10
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`Bi (Exhibit 1009)
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`Bi is titled, “Interactive Remote Control of Audio or Video Playback
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`and Selections.” Petitioner contends Bi discloses a system for an interactive
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`remote control, which may be wireless, of an audio or playback application
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`running on a personal computer or other computing platform. Pet. 18.
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`Ex. 1009, Abstract. Figure 2 of Bi is reproduced below.
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`11
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`Figure 2 depicts data server 102 that provides digital audio or video data via
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`the Internet or other network 101 to computing platform 100. Ex. 1009 ¶ 20.
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`Digital audio or video data also can be read from local storage 112. Id.
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`Navigator 260 is a wireless remote control that communicates with
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`computing platform 100 to control selection of audio or video data. Id. The
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`navigator provides various functions “such as playback of current digital or
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`audio video content; selection of new audio or video content; and providing
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`lists of content for playback.” Id. ¶ 7. The digital content in Bi can be
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`controlled from a location away from the computing platform running the
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`digital content playback application. Id. Navigator 260 acts as a remote
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`control and allows the user to receive feedback from and provide input to
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`audio or video player application 151 running on computing platform 100.
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`Id. ¶ 31. The communication with the computing platform may be wireless,
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`e.g., by a Bluetooth or IEEE 802.11 interface. Id. ¶ 28.
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`Figure 5 of Bi is reproduced below.
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`12
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`Figure 5 depicts navigator 260 in communication with computing platform
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`100. Navigator 260 can be configured to display user outputs such as
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`graphics and text for display on LCD screen 266. Id. ¶ 18. Navigator
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`control manager 154 of Figure 1 receives user inputs from navigator 260 and
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`interprets and translates them into commands and actions for audio or video
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`player application 151 to provide interactive remote control specifically for
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`digital music playback and selection. Id. ¶ 31.
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`Figure 7 of Bi is reproduced below.
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`13
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`Figure 7 depicts the software flow of navigator control manager 154.
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`Ex. 1009 ¶ 15. The remote control functionality includes browsing music by
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`reference to playlists (step 188). The specification describes the software
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`flow, in which steps 188–193 involve browsing and selection of music
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`14
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`utilizing navigator 260. Id. ¶ 32. These steps include browsing of music
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`local to computing platform 100 and obtaining information from data server
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`102 if the music is not on the local database. Id. “Typically, a browse of
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`music is based on such criteria as music track, album, artist, music genre,
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`and playlists.” Id.
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`Petitioner contends Bi discloses the elements of claims 1 and 30 of the
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`’873 patent, with the exception of the display of multiple devices for
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`selection and control, which Petitioner contends is disclosed by Erekson.
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`Pet. 21.
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`Erekson (Ex. 1010)
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`Erekson is titled, “Portable Device Control Console with Wireless
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`Connection.” Erekson discloses “a system and method for controlling
`
`remote devices over a wireless connection (e.g., using a radio signal).”
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`Ex. 1010, 2:18–19. In one embodiment, “a portable computer system (e.g., a
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`palmtop or hand-held computer) having a transceiver is used to control
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`compliant [remote] devices. In a preferred embodiment, the transceiver and
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`the remote devices are Bluetooth-enabled devices.” Id. at 2:19–24. Each of
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`the remote devices is shown on a display device. Id. at 2:27–30. Figure 7 of
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`Erekson is reproduced below.
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`15
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`Figure 7 depicts one embodiment of Erekson’s portable computing device
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`100, with display 105, input 106 and stylus 90. Three remote devices 610,
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`620, and 630 are indicated on display 105. Id. at Fig. 7. A user can select
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`one of the remote devices by touching stylus 90 to display 105, or “may
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`simply touch the screen” directly. Ex. 1010, Fig. 7, 9:3–24. Figure 11 of
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`Erekson is reproduced below.
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`16
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`Figure 11 is a flowchart of the steps in a process for controlling one or more
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`remote devices. Id. at Fig. 11, 10:32–11:49. Once a device is selected, the
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`“characteristics and capabilities” of the selected remote device are “linked to
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`indications (e.g., icons) on display device.” Id. at 10:47–64. The selected
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`remote device can be controlled “in some prescribed manner (e.g., turning
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`the device off or on, raising or lowering a level, etc.) based on the type of
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`device and its capabilities.” Id. at 8:56–61.
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`17
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`Ausems (Exhibit 1011)
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`Ausems is titled, “Personal digital assistant with wireless telephone,”
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`and discloses an integrated wireless telephone, personal digital assistant.
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`Ex. 1011, Abstract, ¶¶ 2, 8–9, 30. The combined PDA/telephone may also
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`function as a remote control for multiple devices. Id. ¶¶ 9, 30, 65–66.
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`Figure 2 of Ausems is reproduced below.
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`Figure 2 depicts a block diagram of the PDA wireless telephone of
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`Ausems, including wireless phone engine 210, PDA engine 290, and short
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`18
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`range transceiver 265, which may be a Bluetooth transceiver. Ex. 1011
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`¶¶ 45, 49.
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`Analysis
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`
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`In IPR 2013-00598 (Paper 19), we determined that for purposes of
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`instituting a trial, Petitioner made an adequate showing that Bi and Erekson
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`taught or suggested the limitations of claims 1 and 30. Yamaha Corporation
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`of America v. Black Hills Media LLC (PTAB March 20, 2014), Paper 19, at
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`10–20. We have reviewed Patent Owner’s arguments in the Preliminary
`
`Response (e.g., at 20–25, 28–32, and 41–47) and accompanying exhibits,
`
`and determine that for purposes of this Decision, Bi and Erekson teach the
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`limitations of claims 1 and 30, from which claims 5 and 34 respectively
`
`depend. We adopt the reasoning set forth in the Decision to Institute in IPR
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`2013-00598, as cited above, regarding the sufficiency of Petitioner’s
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`showing as to independent claims 1 and 30.
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`Petitioner provides explanations as to how the subject matter of
`
`dependent claims 5 and 34 is disclosed by Bi, Erekson, and Ausems.
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`Pet. 17–30. In particular, Petitioner contends that Ausems teaches a mobile
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`phone as a first device. Id. at 28-29. We are persuaded, on the present
`
`record, that Ausems teaches or suggests the recited mobile phone as the first
`
`device in claim 5 and the claimed device in claim 34, which is described in
`
`Ausems at paragraphs 45 and 46 and depicted in Fig. 2. See also Ex. 1011,
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`Fig. 2 and ¶¶ 2, 9, 30, 38, 42, 49, 65–66.
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`Patent Owner states there is no reason to combine Bi, Erekson and
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`
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`Ausems. Prelim. Resp. 48–49. Petitioner notes that, “just as with Erekson
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`and Bi, Ausems discloses a PDA or hand-held computer operable as a
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`remote control,” Pet. 28, and then states:
`
`In view of the above, it would have been obvious to one of
`ordinary skill in the art to implement the navigator in Bi with a
`remote controller using a PDA that provides at least one device
`identifier in order to provide for selection of a device to control
`as disclosed in Erekson, and further which is a telephone to
`provide the desirable combined functionality and convenience
`of a PDA/phone/remote controller as disclosed in Ausems.
`(citing Ex. 1002 (Bove Decl.) ¶¶ 20–22.) Just as in the case of
`the combination of Bi and Erekson, the further combination
`with Ausems is simply applying a known technique to improve
`a known remote controller device by providing the desirable
`feature of a PDA, telephone, and remote control in a single
`device, and the result would have been predictable. (citing
`Ex. 1002 ¶ 22.) See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
`398, 417–22 (2007).
`
`
`
`For purposes of this Decision, we are persuaded by Petitioner’s evidence as
`
`to claims 5 and 34.
`
`
`
`D. Claims 4 and 33: Obviousness Over Bi, Erekson, and Safadi
`
`Petitioner contends dependent claims 4 and 33 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Bi, Erekson, and Safadi. Pet. 37–38.
`
`Claim 4 depends from independent claim 1, with claim 4 further reciting that
`
`the first device comprises an MP3 player, and claim 33 depends from
`
`20
`
`
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`SONOS 1010 - Page 20
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`
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`IPR2014-00766
`Patent 8,214,873 B2
`
`independent claim 30, with claim 33 further reciting that the claimed device
`
`comprises an MP3 player.
`
`Safadi (Exhibit 1013)
`
`Safadi is titled, “Self-configurable multipurpose modular portable
`
`device and methods for configuring same,” and discloses a portable device
`
`that can be a PDA, a cellular telephone, a universal remote control, or an
`
`MP3 player, and “combinations of such devices.” Pet. 37. Ex. 1013 ¶¶ 1, 6,
`
`18.
`
`
`
`Analysis
`
`Petitioner provides explanations as to how the subject matter of
`
`dependent claims 4 and 33 is disclosed by Bi, Erekson, and Safadi. Pet. 37–
`
`38. Patent Owner does not refute that Safadi teaches a portable MP3 player,
`
`but asserts that the claimed “first device” in claim 4 and the device in claim
`
`33 cannot be Safadi’s MP3 player. Patent Owner asserts Safadi discloses a
`
`portable device, to which a modular component (the MP3 player) is
`
`attached, and that the MP3 player cannot constitute the portable (first)
`
`device. Prelim. Resp. 50. We disagree, as Safadi discloses that “the
`
`portable device may act as any one of a number of handheld devices,
`
`including but not limited to a cellular telephone, a pager, a web pad, . . . an
`
`MP3 player,” Ex. 1013 ¶ 1. Safadi describes elsewhere, in non-exclusive
`
`language, that the disclosed portable device “may be a web pad, a personal
`
`digital assistant,” and that the modular component of his invention “may
`
`21
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`SONOS 1010 - Page 21
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`IPR2014-00766
`Patent 8,214,873 B2
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`comprise a web pad, a personal digital assistant . . . an audio playback
`
`device (e.g., an MP3 player or the like).” Id. ¶¶ 1, 17–18.
`
`Thus, Safadi teaches or suggests that its portable device and its
`
`modular component both may include multiple types of devices, including
`
`web pads, personal digital assistants, and MP3 players. For purposes of this
`
`Decision, we are persuaded that the MP3 player taught by Safadi may be the
`
`first device recited in claims 4 and 33.
`
`Patent Owner also contends Petitioner “fails to provide any rationale”
`
`to combine Safadi with Bi and Erekson. Prelim. Resp. 50–51. We are
`
`persuaded otherwise, as the Petition states:
`
`It would have been obvious to one of ordinary skill in the art to
`implement the navigator in Bi with a remote controller using a
`device that provides at least one device identifier in order to
`provide for selection of a device to control as disclosed in
`Erekson (as set forth above . . . and in IPR2013-00598). It
`would also have been obvious to one of ordinary skill in the art
`in view of Safadi that such a remote controller could comprise
`an MP3 player to provide the desirable combined functionality
`and convenience of a PDA/MP3 player/remote controller as
`disclosed in Safadi. (citing Ex. 1002 (Bove Decl). ¶¶ 26-28.)
`Just as in the case of the combination of Bi and Erekson, the
`further combination with Safadi would have simply entailed
`applying a known technique to improve a known remote
`controller device by providing
`the desirable feature of
`combining an MP3 player, PDA, and remote controller in a
`single device, and the result would have been predictable.
`(citing Ex. 1002 ¶ 28.) See KSR, 550 U.S. at 417–22.
`
`
`22
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`SONOS 1010 - Page 22
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`Patent 8,214,873 B2
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`On this record, for purposes of this Decision, we are persuaded by the
`
`Petitioner’s evidence as to claims 4 and 33.
`
`
`
`
`
`
`
`D. Other Grounds
`
`All other alleged grounds of unpatentability in the Petition are
`
`redundant in light of the above grounds of unpatentability on the basis of
`
`which we institute review for the same claims.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded the information presented
`
`in the Petition shows a reasonable likelihood that Petitioner would prevail in
`
`establishing unpatentability of claims 5 and 34 of the ’873 patent as obvious
`
`over Bi, Erekson, and Ausems, and of claims 4 and 33 as obvious over Bi,
`
`Erekson, and Safadi.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims of the construction of any claim term.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to the following claims and grounds:
`
`1.
`
`Claims 5 and 34 of the ’873 patent are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Bi, Erekson, and
`
`Ausems;
`
`23
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`SONOS 1010 - Page 23
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`IPR2014-00766
`Patent 8,214,873 B2
`
`2.
`
`Claims 4 and 33 of the ’873 patent are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Bi, Erekson, and
`
`Safadi; and
`
`FURTHER ORDERED that no other grounds are authorized.
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`commences on the entry date of this decision.
`
`
`
`
`
`PETITIONER:
`
`David Fehrman
`patentdocket@mofo.com
`
`Mehran Arjomand
`patentdocket@mofo.com
`
`PATENT OWNER:
`
`Lana Gladstein
`gladsteinl@pepperlaw.com
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Christopher Horgan
`chris.horgan@concerttechnology.com
`
`
`
`
`
`24
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`SONOS 1010 - Page 24
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`
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