UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONOS, INC.
`Petitioner
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`v.
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`BLACK HILLS MEDIA, LLC
`Patent Owner
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`Case: To Be Assigned
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`Patent No. 8,050,652
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,050,652
`PURSUANT TO 35 U.S.C. § 311 et seq. and 37 CFR § 42.1 et seq.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONOS, INC.
`Petitioner
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`v.
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`BLACK HILLS MEDIA, LLC
`Patent Owner
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`Case: To Be Assigned
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`Patent No. 8,050,652
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,050,652
`PURSUANT TO 35 U.S.C. § 311 et seq. and 37 CFR § 42.1 et seq.
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`TABLE OF CONTENTS
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`INTRODUCTION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
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`1
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`STATEMENT OF RELIEF REQUESTED
`UNDER 37 CFR § 42.22. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
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`I.
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`II.
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`4
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`4
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`6
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`12
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`III. STANDING TO FILE PETITION
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`UNDER 37 CFR §§ 42.101 – 103. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
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`IV. PETITION REQUIREMENTS
`UNDER 37 CFR § 42.104. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
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`V. REASONS FOR THE REQUESTED RELIEF
`UNDER 37 CFR § 42.22. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
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`A.
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`B.
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`C.
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`Technology Overview. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
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`The ‘652 Patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
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`25
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`Identification of Challenges. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
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`1.
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`2.
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`Challenge #1: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
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`Challenge #2: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
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`D. Challenge #1: White Renders Obvious Claims 1, 21, 42 and
`63 Under 35 U.S.C. § 103 ……………………………………….
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`E. Challenge #2: The Combination of Lipscomb and Logan
`Renders Obvious Claims 1, 42 and 63 Under 35 U.S.C. § 103..
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`V. CONCLUSION. . . . . . . .. . . . . . . . . . . . . . . . ……………………….56
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`29
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`42
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`TABLE OF EXHIBITS
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`DESCRIPTION
`EXHIBIT
`SONOS 1001 U.S. Patent No. 8,050,652 (“the ‘652 Patent”)
`SONOS 1002 BHM’s Complaint for Black Hills Media, LLC v. Sonos, Inc., Case
`No. 1:12-cv-00637-RGA (D. Del.)
`SONOS 1003 BHM’s First Amended Complaint (“FAC”) for BHM’s Complaint
`for Black Hills Media, LLC v. Sonos, Inc., Case No. 1:12-cv-
`00637-RGA (D. Del.)
`SONOS 1004 Delaware District Court’s Transfer Order, dated August 5, 2013
`SONOS 1005 California District Court’s Scheduling Order, dated November 12,
`2013
`SONOS 1006 Motion to Dismiss FAC, dated December 11, 2013
`SONOS 1007 California District Court’s Order Granting Motion to Dismiss
`FAC, dated January 14, 2014
`SONOS 1008 BHM’s Complaint for Black Hills Media, LLC v. Sonos, Inc., Case
`No. 2:14-cv-00486-SJO-PJW (C.D. Cal.)
`SONOS 1009 Patent Owner’s Preliminary Response in Yamaha Corporation of
`American v. Black Hills Media, LLC, Case No. IPR2014-00766
`(Paper 6; Dated: August 28, 2014)
`SONOS 1010 Institution Decision in Yamaha Corporation of American v. Black
`Hills Media, LLC, Case No. IPR2014-00766 (Paper 7; Dated:
`November 24, 2014)
`SONOS 1011 Decision on Institution of Inter Partes Review Pursuant to 37
`C.F.R. § 42.108 in Yamaha Corp. of America v. Black Hills
`Media, LLC, Case IPR2013-00594 (March 20, 2014)
`SONOS 1012 Declaration of Andrew Wolfe, Ph.D (“Wolfe Declaration”)
`SONOS 1013 U.S. Patent No. 5,168,481 to Culbertson et al. (“Culbertson”)
`SONOS 1014 U.S. Patent No. 5,616,876 to Cluts (“Cluts”)
`SONOS 1015 Nielsen, J., Desurvire, H., Kerr, R., Rosenberg, D., Salomon, G.,
`Molich, R., and Stewart, T., “Comparative Design Review: An
`Exercise in Parallel Design,” Proc. ACM INTERCHI’93 Conf.
`(Apr. 24-29, 1993) (“Nielsen”)
`SONOS 1016 Hacker, S. “MP3: The Definitive Guide by Scot Hacker” March,
`2000 (Springer) (“Hacker”)
`SONOS 1017 U.S. Patent No. 7,187,947 to White et al. (“White”).
`SONOS 1018 U.S. Patent No. 6,199,076 to Logan et al. (“Logan”)
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`ii
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`
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`DESCRIPTION
`EXHIBIT
`SONOS 1019 U.S. Patent No. 7,020,704 to Lipscomb et al. (“Lipscomb”)
`SONOS 1020 U.S. Provisional Patent Application No. 60/157,736 (“the ‘736
`provisional” or “the ‘736 app”)
`SONOS 1021 U.S. Provisional Patent Application No. 60/176,829 (“the ‘829
`provisional” or “the ‘829 app.”)
`SONOS 1022 U.S. Provisional Patent Application No. 60/176,830 (“the ‘830
`provisional” or “the ‘830 app.”)
`SONOS 1023 U.S. Provisional Patent Application No. 60/176,833 (“the ‘833
`provisional” or “the ‘833 app.”)
`SONOS 1024 U.S. Provisional Patent Application No. 60/177,063 (“the ‘063
`provisional” or the “063 app.”)
`SONOS 1025 U.S. Provisional Patent Application No. 60/177,783 (“the ‘783
`provisional” or “the ‘783 app.”)
`SONOS 1026 U.S. Provisional Patent Application No. 60/177,867 (“the ‘867
`provisional” or “the ‘867 app.”)
`SONOS 1027 U.S. Provisional Patent Application No. 60/177,884 (“the ‘884
`provisional” or “the ‘884 app.”)
`SONOS 1028 File History for U.S. Patent No. 8,050,652
`SONOS 1029 Jaffrey Declaration
`SONOS 1030 Rio 500 Manual
`SONOS 1031 Real Networks Case Study
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`iii
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 et seq. and 37 CFR § 42.1 et seq., Sonos, Inc.
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`(“Petitioner” or “Sonos”) hereby petitions the Patent and Trial Appeal Board
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`(“PTAB”) to institute an Inter Partes Review of Claims 1, 21, 42 and 63 of U.S.
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`Patent No. 8,050,652 (“the ‘652 Patent”; SONOS 1001). The ‘652 Patent issued
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`on June 29, 2004, resulting from U.S. Patent Application No. 11/563,232 (“the
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`‘232 Application”), filed on November 27, 2006. According to USPTO records,
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`the ‘652 Patent is currently assigned to Black Hills Media, LLC (“BHM”).
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`This petition for Inter Partes Review (the “Petition”) demonstrates a
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`reasonable likelihood that Petitioner will prevail with respect to challenged Claims
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`1, 21, 42 and 63 (“Challenged Claims”) of the ‘652 Patent. 35 U.S.C. § 314(a).
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`Petitioner asserts that the Challenged Claims are obvious over the asserted prior
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`art, and therefore should be cancelled.
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`Real Party-In-Interest: 37 CFR 42.8(b)(1). Pursuant to 35 U.S.C.
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`312(a)(2), the real party-in-interest is Sonos, Inc., a corporation organized under
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`the laws of the State of Delaware with a principal place of business at 223 E. De
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`La Guerra Street, Santa Barbara, California 93101.
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`Related Matters: 37 CFR 42.8(b)(2): On May 22, 2012, BHM filed a
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`complaint against Sonos in the U.S. District Court for the District of Delaware,
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`alleging infringement of eight patents, including the ‘652 Patent (collectively “First
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`1
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`
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`Asserted Patents”). SONOS 1002. In addition, BHM filed a similar complaint
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`against Yamaha Corporation of America (“Yamaha”). Black Hills Media, LLC v.
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`Yamaha Corp. of America, No. 1:12-cv-00635-RGA (D. Del.) (“Yamaha
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`Litigation”). BHM never served these complaints. Furthermore, as discussed
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`below, BHM did not then own the patents-in-suit in either complaint.
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`On September 11, 2012, BHM filed a first amended complaint (“FAC”)
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`against Sonos, alleging infringement of the original eight patents (including the
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`‘652 Patent), plus three additional patents. See SONOS 1003. BHM served Sonos
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`with the FAC on September 12, 2012.1
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`On August 5, 2013, the Delaware Court transferred the case to the U.S.
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`District Court for the Central District of California. SONOS 1004. In November
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`2013, the California Court ordered BHM to file evidence of the chain of title for
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`the asserted patents. SONOS 1005. In December 2013, Sonos moved to dismiss
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`for lack of standing because BHM did not own the allegedly infringed patents
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`when it filed the original complaint in Delaware in May 2012. SONOS 1006.
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`On January 14, 2014, the California Court dismissed the FAC without
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`prejudice and further ordered BHM to file and serve “new complaints in the
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`1 Similarly, on September 12, 2012 and September 19, 2012, respectively, BHM
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`filed and served a first amended complaint against Yamaha, alleging infringement
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`of six patents, including U.S. Patent No. 8,214,873 (“the ‘873 Patent”).
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`2
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`Central District of California” by January 21, 2014. SONOS 1007. In dismissing
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`the FAC, the California Court found that:
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`Plaintiff did not in fact own all rights and interests in the First
`Asserted Patents on May 22, 2012, when it filed the cases (citations
`omitted). In fact, Plaintiff did not take ownership of the patents until
`July 23, 2012, more than two months after filing the Complaints
`(citation omitted). Plaintiff does not dispute these facts.
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`Id. at p. 2.
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`On January 21, 2014, BHM filed and served a new complaint, Case No.
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`2:14-cv-00486-SJO-PJW (C.D. Cal.) (“Underlying Litigation”), alleging
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`infringement by Sonos of, inter alia, the ‘652 Patent. SONOS 1008.
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`Lead/Back-up Counsel and Service Info – 37 CFR § 42.8(b)(3)-(4):
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`Lead Counsel
`George I. Lee
`Lee Sullivan Shea & Smith LLP
`150 South Wacker Drive, Suite 2400
`Chicago, Illinois 60606
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`Back-up Counsel
`Sean M. Sullivan
`Lee Sullivan Shea & Smith LLP
`150 South Wacker Drive, Suite 2400
`Chicago, Illinois 60606
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`Rory P. Shea
`Lee Sullivan Shea & Smith LLP
`150 South Wacker Drive, Suite 2400
`Chicago, Illinois 60606
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`
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`Tel: (312) 754-9602
`Fax: (312) 754-9603
`Email: lee@leesullivanlaw.com
`USPTO Reg. No. 39,269
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`
`Tel: (312) 754-9602
`Fax: (312) 754-9603
`Email: sullivan@leesullivanlaw.com
`USPTO Reg. No. 40,191
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`Tel: (312) 754-9602
`Fax: (312) 754-9603
`Email: shea@leesullivanlaw.com
`USPTO Reg. No. 60,529
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`3
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`
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`John Dan Smith
`Lee Sullivan Shea & Smith LLP
`150 South Wacker Drive, Suite 2400
`Chicago, Illinois 60606
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`II.
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`Tel: (312) 754-9602
`Fax: (312) 754-9603
`Email: smith@leesullivanlaw.com
`USPTO Reg. No. 66,743
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`STATEMENT OF RELIEF REQUESTED UNDER 37 CFR § 42.22
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`Petitioner asks that the PTAB review the asserted prior art and below
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`analysis, institute a trial for Inter Partes Review of Claims 1, 21, 42 and 63 of the
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`‘652 Patent, and cancel those claims as unpatentable.
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`III. STANDING TO FILE PETITION UNDER 37 CFR §§ 42.101 – 103
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`Sonos has not filed a civil action challenging the validity of a claim of the
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`‘652 Patent. In addition, this Petition has been filed within one year after Sonos
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`was served with a jurisdictionally-proper complaint alleging infringement of the
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`‘652 Patent, i.e., the Complaint served on January 21, 2014 in pending Case No.
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`2:14-cv-00486-SJO-PJW. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b); SONOS
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`1008. Petitioner is also not estopped from challenging the claims on the grounds
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`identified in the Petition. See 37 C.F.R. § 42.101(c). Thus, the filing of this
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`Petition is proper under 37 CFR § 42.101.
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`In Yamaha Corporation of American v. Black Hills Media, LLC, Case No.
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`IPR2014-00766 (“the Yamaha IPR”), BHM argued – on the same facts present
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`here – that the FAC filed and served in September 2012 started the clock for the
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`one year statutory bar under § 315(b). SONOS 1010, pp. 3-6. The Yamaha IPR
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`was filed against the ‘873 Patent, one of the First Asserted Patents. BHM argued
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`4
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`that the Yamaha IPR petition that was filed in May 2014 was barred because it was
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`filed more than one year after service of the FAC in September 2012. Id.
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`The Board rejected BHM’s argument, however, and instituted the Yamaha
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`IPR on November 24, 2014. See SONOS 1010 (“Institution Decision”), pp. 8-9.
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`Specifically, in its Institution Decision, the Board found that:
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`[T]he FAC was jurisdictionally defective because Patent Owner
`lacked standing to sue at the time of the original complaint in May
`2012. Ex. 1004, at 2. In a patent infringement action, for plaintiff
`properly to allege standing, it “must demonstrate that it held
`enforceable title to the patent at the inception of the lawsuit.”
`Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309-10
`(Fed. Cir. 2003). “[I]f the original plaintiff lacked Article III
`standing, the suit must be dismissed, and the jurisdictional defect
`cannot be cured” after the inception of the lawsuit. Schreiber Foods,
`Inc. v. Beatrice Cheese, 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 Owner finally filed a federal
`complaint properly alleging its standing to sue, on January 21, 2014.
`The instant petition was filed in May 2014. Accordingly, Patent
`Owner’s argument under § 315(b) fails.
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`Id. Moreover, the Board distinguished the cases cited by BHM because the earlier
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`lawsuits in those cases, just like the original and first amended lawsuits in the
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`present IPR, were “not jurisdictionally defective for lack of standing.” Id. at 9.
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`The procedural history for the Underlying Litigation here is essentially the
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`5
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`same as the Yamaha Litigation. Thus, for the same reasons as expressed in the
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`Institution Decision for the Yamaha IPR, and since the instant Petition is being
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`filed on January 21, 2015 – which is not more than one year after the service of
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`BHM’s complaint on January 21, 2014 – this Petition should be allowed under 35
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`U.S.C. § 315(b) and 37 CFR § 42.101(b).
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`Timing – 37 CFR § 42.102: The ‘652 Patent was filed before March 16,
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`2013, granted on November 21, 2013, and a post-grant review has not been
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`initiated. Thus, the timing for this Petition is proper under 37 CFR § 42.102(a).
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`Fees – 37 CFR § 42.103: With the filing of this Petition, Sonos is paying
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`both the $9,000 request fee set forth in 37 CFR § 42.15(a)(1), as well as the
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`$14,000 post-institution fee set forth in 37 CFR § 42.15(a)(2). However, Petitioner
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`authorizes a debit from Deposit Account No. 50-6632 for whatever additional
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`payment is necessary in filing and/or granting this Petition.
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`IV. PETITION REQUIREMENTS UNDER 37 CFR § 42.104
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`Standing: 37 CFR § 42.104(a). Petitioner certifies that the ‘652 Patent is
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`available for Inter Partes Review and that the Petitioner is not barred or estopped
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`from requesting an Inter Partes Review on the grounds identified in the Petition.
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`Claims challenged: 37 CFR § 42.104(b)(1). Petitioner requests review of
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`Claims 1, 21, 42 and 63 of the ‘652 Patent.
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`Specific Statutory Grounds: 37 CFR § 42.104(b)(2). For the reasons set
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`6
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`forth herein, Petitioner submits that the Challenged Claims are obvious under 35
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`U.S.C. § 103 in view of the asserted prior art.
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`Claim Construction: 37 CFR § 42.104(b)(3) and Effective Filing Date.
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`For purposes of an Inter Partes Review, claim terms in an unexpired patent
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`should be given its broadest reasonable construction in light of the specification of
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`the patent in which it appears. See 37 CFR 42.100(b). Using the “broadest
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`reasonable construction,” claim terms are given their “ordinary and customary
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`meaning,” as understood by one of ordinary skill in the art in the context of the
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`entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007) (quoting Philllips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
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`banc)). Any special definition for a claim term must be set forth with “reasonable
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`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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`1994).
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`The terms “playlist assigned to the electronic device” and “wherein ones of
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`the plurality of songs are not stored on the electronic device,” were added to the
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`independent claims by amendment, warranting discussion as to their broadest
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`reasonable interpretation consistent with the specification.
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`1.
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`“Playlist Assigned to the Electronic Device”
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`The term “playlist assigned to the electronic device” appears in independent
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`claims 1, 21, 42 and 63.
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`7
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`In IPR2013-00594 (SONOS 1011), the Board construed “playlist” and a
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`“playlist assigned to the electronic device” to respectively mean “a list of audio
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`files or URLs of where the audio files were retrieved from” and “a list of audio
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`files or URLs of where the audio files were retrieved from directed to a particular
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`device selected by a user.” SONOS 1011, pp. 11-13. Petitioner submits that, for the
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`reasons provided by the Board in IPR2013-00594, these constructions should apply
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`to the meaning of these terms in the present proceeding as well.
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`The assigning playlists is described in connection with FIGS. 15, 17, and 19
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`at 4:50-5:3, 21:40-23:5, 24:44-60, and 28:11-30:26. The Summary of the
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`Invention (4:50-58) states the invention “is a method for assigning playlists of
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`music from one electronic device to another” and “[t]he software module allows a
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`user to assign a playlist from a first device to a second device.” SONOS 1001. FIG.
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`17C illustrates the assigning operation by selecting “Make available on” and
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`selecting a device. Id. As stated at 24:50-53, “[t]he user can choose the menu
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`option of ‘Make Available On’ to assign the playlist from one device to another
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`(e.g., from device 1510 to device 1520).” Id. Assigning playlists is disclosed as
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`assigning a playlist from one device to another by selecting the device to which the
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`playlist is to be transferred. The term “playlist assigned to the electronic device” is
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`therefore be construed as a list of songs that is to be transferred to a particular
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`device selected by the user. SONOS 1012, ¶¶ 37-41.
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`
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`8
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`2.
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`“Wherein Ones of the Plurality of Songs Are Not Stored on
`the Electronic Device”
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`The term “wherein ones of the plurality of songs are not stored on the
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`electronic device” is in independent claims 1, 21, 42 and 63 of the ‘652 patent. In
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`IPR2013-00594, the Board construed it to mean “wherein at least one of the
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`plurality of songs is not stored on the electronic device.” SONOS 1011, pp. 13-14.
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`For the Boards reasons in IPR2013-00594, this construction should apply in the
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`present proceeding as well.
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`The specification describes networked electronic devices 1510 and 1520
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`each having its own storage space to store songs. SONOS 1001, at 21:43-44. When
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`a playlist is assigned to a device, songs not stored on the device are provided to the
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`device and stored. Id. at FIG. 15; 21:40-22:15. The plain claim language means the
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`electronic device can store songs—otherwise the limitation would have no
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`meaning. See, e.g., Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 546 (Fed. Cir.
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`1994) (“All limitations of a claim must be considered meaningful.”); see also
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`SONOS 1012 ¶¶ 40-41.
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`In the Summary of the Invention (3:57-4:9), it is stated that embodiments of
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`the audio device may not have storage for songs. SONOS 1001. However, this
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`embodiment is inconsistent with the claim language. Selecting a playlist for
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`playback is not the same operation as assigning a playlist to a device. SONOS
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`1012, ¶¶ 38-40. The assigning operation is described in the specification as
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`
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`9
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`
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`selecting a device and transferring songs to the device for storage. Id. In this
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`regard, during prosecution of related U.S. Patent No. 8,045,952, the same
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`Examiner evaluated the same specification and the same claim language as in the
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`‘652 patent and considered that the device had memory to store songs:
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`Regarding claim 1, none of the prior arts of record, in combination or
`individual, show or make it obvious a network-enable audio device of
`identifying ones of the plurality of songs in the playlist that are not
`stored on the electronic device and providing information to the
`electronic device enabling the electronic device to obtain the ones of
`the plurality of songs that are not stored on the electronic device from
`at least one remote source (check the electronic device’s data storage
`space for songs listed on the assigned playlist and a network
`connection is made to upload the file if the songs needed to from the
`playlist are not stored on the electronic device’s data storage space,
`see specification 0021).
`Office Action at 3-4 (Feb. 2, 2011).
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`The manner in which the Examiner read the claim language demonstrates
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`how one of ordinary skill in the art would have construed the claim. Salazar v.
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`Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) (“Although
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`unilateral statements by an examiner do not give rise to a clear disavowal of claim
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`scope by an applicant, it does not necessarily follow that such statements are not
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`pertinent to construing claim terms. Statements about a claim term made by an
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`examiner during prosecution of an application may be evidence of how one of skill
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`10
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`
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`in the art understood the term at the time the application was filed.”).
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`Such is also consistent with the prosecution of the ‘652 patent. As noted
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`above, both of the “not stored” and “assigned to” limitations were in originally
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`filed dependent claims and were added to the independent claims in response to a
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`rejection. SONOS 1028, 274-90. The dependent claims track the embodiments of
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`the system described in the specification that are directed to assignment of playlists
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`and storage of songs from the playlist, and not to a broader system without storage.
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`Accordingly, “wherein ones of the plurality of songs are not stored on the
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`electronic device,” read consistently with the specification, requires that the device
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`have a storage for storing songs. In other words, “wherein ones of the plurality of
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`songs are not stored on the electronic device” cannot be construed to encompass an
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`electronic device that has no storage for songs. SONOS 1012. ¶¶ 40-41.
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`3.
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`Effective Filing Date
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`The ‘652 Patent resulted from a chain of applications beginning in 1998 with
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`U.S. Provisional Application No. 60/072,127 (filed January 22, 1998) (“the ‘127
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`app.”), and U.S. Patent Application No. 09/096,703 (filed on June 12, 1998) (“the
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`‘703 app.”). The ‘652 Patent also claims priority to U.S. Provisional Application
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`No. 60/246,842 (filed on November 8, 2000) (“the ‘842 app.”) and U.S. Patent
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`Application No. 09/805,470 (filed on March 12, 2001) (“the ‘470 app.”). The ‘652
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`Patent issued from U.S. Patent Application No. 11/563,232 (filed on November 27,
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`11
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`
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`2006), which is a continuation of the ‘470 application and claims priority to the
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`‘470 and ‘703 applications, as well as the ‘127 and ‘842 applications.
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`The ‘652 Patent is not, however, entitled to claim priority to each of these
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`applications. The independent claims of the ‘652 Patent recites a “playlist
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`identifying a plurality of songs.” This claim language was not disclosed in the
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`chain of applications leading to the ‘652 Patent until the ‘842 application, which
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`was filed on November 8, 2000. For that reason, the earliest possible priority date
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`of the claims of the ‘652 Patent is November 8, 2000. SONOS 1012, ¶ 8.
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`Unpatentability under 37 CFR § 42.104(b)(4)-(5). For the reasons set
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`forth in detail below, a reasonable likelihood that Petitioner will prevail exists with
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`respect to each of the Challenged Claims based on anticipation under 35 U.S.C. §
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`103 in view of the asserted prior art, alone or in combination.
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`V. REASONS FOR THE REQUESTED RELIEF UNDER 37 CFR § 42.22
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`In light of the asserted prior art, Petitioner asks that the PTAB institute a trial
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`for Inter Partes Review of the Challenged Claims and cancel those unpatentable.
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`Here, an IPR on the ‘652 Patent has already been instituted on behalf of Samsung
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`and LG has also filed for an IPR IPR2015-00334 on the same grounds here.
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`A.
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`Technology Overview
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`Paragraphs 27 to 31 of the Wolfe Declaration, SONOS 1012, describe the
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`state of the art regarding online and mobile audio services in the 1999-2000
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`12
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`timeframe. Using a “playlist” to represent a list of songs or audio files so that users
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`could select, play, and manipulate was well known in the art by the mid to late
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`1990s. The RioPort Audio Manager provided a graphical user interface (GUIs) for
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`users to select and play music transmitted from a central database in a network.
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`Consumer products with playlist functions had become common by the year 2000.
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`For example, Culbertson shows that in the context of radio broadcast
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`stations, it was known to compile a scheduled playlist from various music
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`selections and pre-recorded materials having known durations or runtimes.
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`SONOS 1013, at 1:15-18. Compact disc players are used to “sequentially play a
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`predetermined list of musical selections and commercial or informational
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`messages.” Id. at 1:50-51. A display device shows “information contained in the
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`playlist to allow an operator to obtain information about the music . . . played as
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`well as those selections that will be played subsequently.” Id. at 2:51-55.
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`Cluts describes a system in an interactive network allowing consumers to
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`select “playlists” in the form of a predetermined collection of songs, and review
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`the contents of the playlists, select songs in the playlist, build and create playlists,
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`and display general information associated with the currently playing album or
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`song. SONOS 1014, at 4:38-54, 11:40-43, 12:55-65, 13:24-27, 13:50-62, 15:14-25.
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`The implementation and use of playlists through a GUI on a PC to allow
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`users to select and play music transmitted from a database over a network was also
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`
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`13
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`
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`well known before 1999. For example, Nielsen discloses selecting songs, making
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`multiple selections for a particular time interval, (e.g., 45 mins. of music), selecting
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`random songs in a selected genre (singer, musician, style), and manipulating the
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`selected songs to pause, fast forward, skip, and rewind. SONOS 1015, pp. 414-417.
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`According to Nielsen, the Home Fiber Optic Music System included
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`features, such as providing a “player view” that mimics a CD player and a “song
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`list view.” SONOS 1015, p. 416. Music could be played from two types of objects:
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`a personal CD object and a Catalog object; and the catalog object supported
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`“query” and “history lists” in the song list view. Id.
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`Available were tools to make playlists through a GUI to play music over a
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`network. See e.g., SONOS 1016, p. 56 (“playlist is just a plain text file naming the
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`full paths to the selected songs. . . . Playlists for players that can handle streaming
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`or broadcast MP3 can also store URL’s to your favorite broadcast sites.”)
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`Thus, as of 1999-2000, implementing playlists on a network-enabled audio
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`device to select, manage, and manipulate audio content was well known in the art.
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`Software to listen to Internet radio has existed since Internet radio began.
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`SONOS 1012, ¶¶ 28-30. By the late 1990s, companies marketed software for real-
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`time streaming of audio. See, e.g., SONOS 1016, pp. 13-14. By 2000, freely
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`available software for laptops or PCs enabled receipt of various audio content,
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`including Internet radio broadcasts. SONSO 1012, ¶ 28.
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`
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`14
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`
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`As made clear by the state of the art, and the prior art below, by November
`
`2000, the purported inventions of the ‘652 Patent were well known.
`
`1. U.S. Patent No. 7,187,947 to White et al. (SONOS 1017)
`
`White was filed in the U.S. on March 28, 2000, issued on March 6, 2007,
`
`and qualifies as prior art to the ‘652 Patent under 35 U.S.C. § 102(e). White was
`
`cited during prosecution of the ‘652 Patent, but was not used in any rejections.
`
`White is directed to a system communicating information to an electronic
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`device including “audio information such as songs, on-line radio stations, on-line
`
`broadcasts, streaming audio.” SONOS 1017 at 3:59-61. White allows a “listener to
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`create a personal playlist and to listen to this playlist in a wireless atmosphere
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`while enjoying CD quality sound.” Id. at 2:7-10. White’s Figure 4 is below:
`
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`Figure 4 shows graphical user interface 400 for displaying selectable audio
`
`information. SONOS 1017, at 11:6-15. Interface 400 may be displayed as a web
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`page. Id. This interface allows users to view radio dial 412 or “a current playlist
`
`selected by the user or the status of [a] wirelessly communicated playlist.” Id.
`
`11:26-33. Program interface 413 is used to specify items to be displayed by radio
`
`dial 412. Id. 12:29-30. These items may include Internet and broadcast radio
`
`stations or playlists. Id. 12:30- 36. Figure 8 of White is reproduced below:
`
`16
`
`
`
`
`
`
`
`
`
`Figure 8 depicts a method for providing selected audio information to an
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`electronic device. SONOS 1017, at 3:40-42. At step 800, the user accesses a web
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`page such as the home page of Figure 4. Id. at 15:64-67. At step 801, the user
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`selects “a single song, a plurality . . . of songs, an entire album, a broadcast station,
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`streaming audio, etc. or other selectable audio information.” Id. at 16:3-6. A
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`playlist is created at step 802 reflecting the user’s audio selections. Id. at 16:6-9,
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`17:56-18:19. A list of information is compiled at step 803 including associated
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`playlist information, such as network or URL locations for the audio information.
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`Id. at 16:12-14. At step 804, the user then selects a device such as “a[n] automobile
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`audio system, a home stereo system, a home computer, an electronic device
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`coupled to a home network or computer system, etc.[,] or other locations or
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`devices operable to receive the selected audio information.” Id. at 16:24-28. The
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`playlist and associated information are sent to the electronic device for the user to
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`execute the playlist (812, 814). Id. at 16:35-45, 17:7-18.
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`White’s device “may be integrated into an audio component such as a radio
`
`receiver” or “coupled to a home audio system, a portable radio system or other
`
`system to provide a versatile electronic device operable to receive wirelessly
`
`communicated selected audio information.” SONOS 1017, at 9:53-57, 10:38-42.
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`The electronic device may be coupled to an optical disc player such as a CD player
`
`or “storage medium 303 such as a high speed buffer, programmable memory, or
`
`
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`17
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`
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`other devices operable to store information.” Id. at 18:46-50, 8:46-52, 8:67-9:5.
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`White thus discloses at least an Internet radio mode of operation (3:59-61
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`and 2:7-10); a playlist mode of operation (Fig. 8 elements 813, 807, 808, 16:3-4);
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`assigning a playlist to a player device, where some of the songs are not stored on
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`the player device (15:62-16:34, Fig. 4, 11:66-12:7, Fig. 8, 17:32-35); a control
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`system for carrying out the functionality of its player device (8:52-62, 12:38-54,
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`Figs. 3-4); and receiving information from a central system enabling the player to
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`obtain missing songs from a remote source (16:11-19).
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`2. U.S. Patent No. 6,199,076 to Logan et al. (SONOS 1018)
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`Logan was filed on October 2, 1996, issued on March 6, 2001, and therefore
`
`qualifies as prior art to the ‘652 Patent under 35 U.S.C. § 102(e). A family member
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`of Logan, U.S. published patent application No. US 2004/0255340, was cited
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`during prosecution of the ‘652 Patent, but was not used in any rejections.
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`
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`Logan discloses an information distribution system that allows player
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`devices to play back audio program segments, such as music. SONOS 1018, at
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`2:6-43, 5:60-65. The audio player plays back the audio program segment files in
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`accordance with a schedule file, which is created in the first instance by a host
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`server, which develops and transmits the schedule file to the player. Id. at 2:47-50;
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`7:1-13. The schedule file consists of a sequence of program segment identification
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`numbers, which determines the sequence of events that occur during playback. Id.
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`
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`18
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`
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`at 7:1-13, 12:3-15, 17:59-61 and Fig. 4. The schedule file is thus a “playlist”.
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`Figure 1 of Logan, which presents schematic diagrams of host server 101
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`and player 103, is provided below.
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`Page 2 of 34
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`
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`Logan discloses that the player, after obtaining the schedule file, issues download
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`requests to the host server for program segments which are not already in the
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`player’s local storage. Id. at 7:4-13. In embodiments, the player only requests
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`transfer of program segments not already present in local storage. Id. at 19:4-8.
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`The download operation preferably occurs at a time established by the player. Id. at
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`8:24-29. In the download, the player identifies specific program segments to
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`download by, e.g., designating filenames or program_id values. Id. at 8:20-38.
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`In particular, the selections made by and uploaded from the subscriber take
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`19
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