Filed on behalf of Chestnut Hill Sound Inc.
`By: Edmund J. Walsh
`
`
`Gerald B. Hrycyszyn
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
`Fax: (617) 646-8646
`EWalsh-PTAB@wolfgreenfield.com
`GHrycyszyn-PTAB@wolfgreenfield.com
`
`
`
`
`
`Paper No. _____
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`CHESTNUT HILL SOUND INC.
`Patent Owner
`_____________
`
`Case IPR2015-01463
`Patent No. 8,090,309
`_____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ........................................................................................................ 1
`
`II. Overview of the ’309 Patent .............................................................................. 4
`
`A. The “first mode” .......................................................................................... 5
`
`B. The “second mode” ..................................................................................... 5
`
`III. Claim interpretation ........................................................................................... 6
`
`A. The “media source that, in turn, responds . . . by accessing . . . and
`sending . . . to a media output device” limitation of the “second
`mode” of independent claim 1 ..................................................................... 7
`
`B. The “remote media source that, in turn, responds . . . by accessing .
`. . and once accessed, sends . . . to a media output device”
`limitation of the “second mode” of independent claim 9 ..........................11
`
`C. The “mode” limitations in independent claims 1 and 9 ............................12
`
`IV. The Petition fails to establish a reasonable likelihood that the claims are
`anticipated by U.S. Patent App. No. 2002/0002039 (“Qureshey”) .................14
`
`A. Overview of Qureshey ...............................................................................14
`
`B. The Petition fails to show that Qureshey discloses a media device
`operable in the “second mode” of claim 1 ................................................17
`
`1. The Petition does not address the correct interpretation of the
`“media source that, in turn, responds . . . by accessing . . . and
`sending . . . to a media output device” limitation of the “second
`mode” of claim 1 .................................................................................17
`
`2. Even under the Petition’s incorrect interpretation of the “media
`source that, in turn, responds . . . by accessing . . . and sending .
`. . to a media output device” limitation of the “second mode” of
`claim 1, the Petition fails to show Qureshey discloses that
`limitation .............................................................................................18
`
`3. The Petition does not identify a “second mode” .................................21
`
`4. The Petition fails to show Qureshey discloses bi-directional
`messaging as required in the “second mode” of claim 1 ....................23
`
`a. “transmitting . . . a request” & “receiving . . . the media
`metadata indicating” limitations of the “second mode” of
`claim 1 ......................................................................................... 26
`
`
`
`i
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`b. “displaying” limitation of the second mode of claim 1 .............. 27
`
`c. “generating a signal” & “sending a corresponding signal”
`limitations of the “second mode” of claim 1 .............................. 30
`
`5. The Petition does not identify the remote “media source”
`required in the “second mode” of claim 1 ...........................................33
`
`C. The Petition fails to establish a reasonable likelihood that claim 9 is
`anticipated by Qureshey ............................................................................35
`
`D. The Petition fails to establish a reasonable likelihood that Qureshey
`anticipates the claims dependent on claims 1 and 9 ..................................37
`
`1. The Petition fails to show that Qureshey anticipates claims 3-8,
`and 12-14 .............................................................................................37
`
`2. The Petition fails to show that Qureshey anticipates dependent
`claims 6, 7, and 14 because there is no showing that Qureshey
`discloses a server as the remote media source ....................................37
`
`E. The Petition fails to specify where each element of the challenged
`claims are found in Qureshey, leaving Patent Owner and the Board
`guessing about the significance of the Petition’s arguments and
`cited disclosures .........................................................................................39
`
`V. The Petition fails to establish a reasonable likelihood that the claims are
`anticipated by U.S. Patent No. 6,563,769 to Van Der Meulen (“VDM”) .......41
`
`A. Overview of VDM .....................................................................................41
`
`B. Because VDM, just like Qureshey, is directed to a virtual jukebox,
`the Petition’s Ground 3 suffers from much the same failings as
`discussed with respect to Ground 1 ...........................................................44
`
`C. The Petition fails to show that VDM discloses a media device
`operable in the “second mode” of claim 1 ................................................45
`
`1. The Petition does not identify a “second mode” .................................45
`
`2. The Petition does not address the correct interpretation of the
`“media source that, in turn, responds . . . by accessing . . . and
`sending . . . to a media output device” limitation of the “second
`mode” of claim 1 .................................................................................48
`
`3. Even under the Petition’s incorrect interpretation of the “media
`source that, in turn, responds . . . by accessing . . . and sending .
`
`
`
`ii
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`. . to a media output device” , the Petition fails to show VDM
`discloses that limitation .......................................................................48
`
`4. The Petition does not identify metadata that is requested,
`received, displayed, and included in a signal identifying to the
`media source what media file to select and play .................................50
`
`a. “transmitting . . . a request” limitation of the “second
`mode” of claim 1 ......................................................................... 51
`
`b. “displaying” in the “second mode” of claim 1 ........................... 52
`
`c. “generating a signal” & “sending a corresponding signal”
`limitation of the “second mode” of claim 1 ................................ 54
`
`D. The Petition fails to establish a reasonable likelihood that claim 9 is
`anticipated by VDM ..................................................................................55
`
`E. The Petition fails to establish a reasonable likelihood that VDM
`anticipates the claims dependent on claims 1 and 9 ..................................57
`
`1. The Petition fails to show that VDM anticipates claims 3, 5-8,
`and 13-14 .............................................................................................57
`
`F. The Petition fails to establish a reasonable likelihood that VDM
`renders obvious claims 4 and 12, because the Petition fails to
`address the correct language of claims 4 and 12 .......................................57
`
`G. The Petition fails to specify where each element of the challenged
`claims are found in VDM, leaving Patent Owner and the Board
`guessing about the significance of the Petition’s arguments and
`cited disclosures .........................................................................................58
`
`VI. The Petition fails to establish a reasonable likelihood that the
`challenged claims are obvious over Qureshey or VDM ..................................60
`
`VII. Conclusion .......................................................................................................60
`
`
`
`iii
`
`
`
`
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00450 (Jun. 29, 2015) .................................................................... 40, 59
`
`Apple Inc. v. Zilabs Inc.,
`IPR2015-00964 (Sept. 17, 2015) ......................................................... 7, 18, 36, 48
`
`CallCopy v. Verint Americas, Inc.,
`IPR2013-00486 (Feb. 5, 2013) ...................................................................... 41, 60
`
`Jiawei Tech. (HK) Ltd. v. Richmond,
`IPR2014-00937 (Feb. 6, 2015) ..................................................................... passim
`
`Net MoneyIN, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (2008) ...........................................................................................25
`
`Silicon Labs., Inc. v. Cresta Tech. Corp.,
`IPR2014-00809 (Oct. 24, 2014) ...........................................................................58
`
`Symantec Corp. v. RPost Commc’ns Ltd.,
`IPR2014-00355 (July 15, 2014) .................................................................... 37, 56
`
`Zerto Inc. v. EMC Isr. Dev. Ctr., Ltd.,
`IPR2013-00458 (Jan. 16, 2014) .......................................................... 7, 40, 56, 60
`
`OTHER AUTHORITIES
`
`IBM Dictionary of Computing (10th ed. 1993) .......................................................34
`
`Microsoft Computer Dictionary (4th ed. 1999) .......................................................34
`
`REGULATIONS
`
`37 C.F.R. § 42.104 ...................................................................................... 31, 39, 58
`
`37 C.F.R. § 42.108 ...................................................................................................45
`
`37 C.F.R. § 42.22(a) .................................................................................................39
`
`77 Fed. Reg. 48,612 (Aug. 14, 2012).......................................................... 39, 58, 59
`
`
`
`iv
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`I.
`
`Introduction
`
`In 2004, Chestnut Hill Sound Inc. (“Patent Owner”) began developing a
`
`system for the playback of digital audio content. That effort culminated in the
`
`launch of an iPod audio system called GeorgeTM, which achieved widespread
`
`distribution through Petitioner’s stores and other retailers like Best Buy. It even
`
`won a Best of Show award at the Macworld tradeshow, a “Play of the Year” award
`
`from Macworld Magazine, and PC Magazine’s Editor’s Choice Award, all shortly
`
`after its launch in 2007. (Ex. 2001 (Chestnut Hill Sound Inc. v. Apple Inc., No.
`
`15-261-RGA (D. Del) (Exs.1, 2 and 4 to D.I. 9, Opening Brief in Support of
`
`Motion for Preliminary Injunction)).1
`
`Patent Owner’s U.S. Patent No. 8,090,309 (“the ’309 Patent”, Ex. 1001) is
`
`based on research and development from the GeorgeTM project. The ’309 Patent
`
`discloses and claims a media device that operates in two modes and a method of
`
`using such a media device. In the first mode, the media device operates as a media
`
`player, with a display presenting data about media files or media streams (media
`
`
`1 In this related litigation, Patent Owner has asserted that Petitioner used pre-
`
`launch meetings with Patent Owner to learn the Patent Owner’s ideas for making a
`
`media player more desirable for users, and then misappropriated Patent Owner’s
`
`invention to create its own competing product. Petitioner denies this allegation.
`
`
`
`1
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`metadata) that a user can select and play from a media source that is co-housed
`
`with or directly connected to the media device. In the second mode, the media
`
`device operates as a remote controller of a remote media source. That remote
`
`control is implemented through bi-directional messaging, enabling the media
`
`device to obtain the media metadata to display and generate the appropriate control
`
`signals to cause the remote media source to send selected media to an output
`
`device separate from the media device.
`
`In addition to allowing selection and playback of co-housed or directly
`
`connected media in the first mode and remotely stored media in the second mode,
`
`the invention’s use of media metadata to select and play media offers the
`
`advantages of faster and more flexible access to the media. Further, the remote
`
`media source can be controlled without the media device having a catalog or
`
`archive of all available media.
`
`In contrast, the allegedly anticipatory prior art references offered by
`
`Petitioner, U.S. Patent Application No. 2002/0002039 to Qureshey (“Qureshey”)
`
`and U.S. Patent No. 6,563,769 to Van Der Meulen (“VDM”), describe virtual
`
`jukeboxes that catalog and archive media.
`
`These prior art references do not disclose a media device with two modes,
`
`with the media device operating in the first mode as a media player accessing co-
`
`housed or directly connected media, and in the second mode as a remote controller
`
`
`
`2
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`using bi-directional messaging for accessing remote media. As a result, there are
`
`multiple reasons, each adequate on its own, to deny all Grounds in the Petition:
`
`First, the Petition fails to identify in Qureshey or VDM the “second mode”
`
`required by both independent claims of the ’309 Patent.
`
`Second, the Petition incorrectly interprets a limitation in both independent
`
`claims relating to remote control of the media source such that a requirement for
`
`the media source to send media to an output device is satisfied by the media device
`
`sending the media to the output device. Because the Petition applies an improper
`
`claim interpretation, it fails to show either independent claim is anticipated.
`
`Third, the Petition fails to identify in Qureshey or VDM a request for
`
`metadata that satisfies the interconnected actions and responses of the second mode
`
`of either independent claim of the ’309 Patent.
`
`Fourth, the Petition inconsistently points to features of Qureshey and VDM
`
`for the same elements appearing in different limitations of the claimed second
`
`mode of operation. The confusion created by this approach alone means that the
`
`Petitioner cannot meet its burden of showing that it is reasonably likely that the
`
`challenged claims are unpatentable.
`
`Qureshey and VDM, in fact, do not show any device that operates in a
`
`remote controller mode in which the actions occur ordered and arranged as recited
`
`
`
`3
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`in the claims of the ’309 Patent—meaning that Petitioner’s anticipation arguments
`
`in Grounds 1 and 3 fail.
`
`Petitioner’s obviousness challenges in Grounds 2 and 4 incorrectly assume
`
`that the references fully disclose the claimed second mode. Thus, those grounds
`
`necessarily fail, as well.
`
`Accordingly, the Petition should be denied since it provides the Board with
`
`no basis to find a reasonable likelihood that any claim is unpatentable.
`
`II. Overview of the ’309 Patent
`
`The ’309 Patent is directed to a media device useful in a number of ways to
`
`control a variety of media sources. Two of these operating modes2 are the subject
`
`of the claims. (See e.g., Ex. 1001 at 3:21-31, 8:58-9:8, 3:64-4:7, 8:11-42, 18:33-
`
`38). The claimed modes offer faster and more flexible access to media through a
`
`device that operates in one mode as a media player, allowing a user to select and
`
`play co-housed or directly connected media and operates in a second mode as a
`
`remote controller allowing a user to select and play remote media. (See e.g., id. at
`
`2:2-22, 17:57-61, 17:31-36, 8:33-37).
`
`
`2 The specification uses the word “mode” in connection with a control unit
`
`attached or detached from a base unit. (See e.g., Ex. 1001 at 8:58-9:8).
`
`Detachability is not the focus of the claims.
`
`
`
`4
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`A. The “first mode”
`
`In the first mode, the media device operates as a media player, enabling
`
`users to access media from a source that is cohoused with or directly connected to
`
`the media device. (See e.g., id. at Figs. 1, 8, 3:21-31, 8:58-9:2, 7:44-8:2 18:33-38;
`
`see also id. at 14:61-67). In this first mode, control is achieved through a display
`
`of the media device that presents media metadata, information that describes the
`
`selectable media available for playback. (Id.; see also id. at 9:24-32). Using this
`
`first mode, users can view information about the media cohoused with or directly
`
`connected to the media device to select media to be played. (Id.). The media
`
`device responds to such a user selection with an indication of what was selected
`
`and plays the selected media on the media device. (Id.).
`
`B.
`
`The “second mode”
`
`In the second mode, the media device operates as a remote controller,
`
`enabling users to play music in multiple locations throughout their house, and to
`
`control that playback from multiple locations. (See e.g., id. at 4:3-8) . This control
`
`is implemented by connecting the media device to a remote media source (e.g., a
`
`personal computer with an iTunes library) via a network interface, such as a WiFi
`
`connection. (Id. at Figs. 1, 2a, 2b, 13, 3:21-31, 8:11-34, 8:37-42, 1:59-63). Over
`
`this connection to the remote media source, the media device can transmit and
`
`receive messages, including a transmitted request for media metadata that
`
`
`
`5
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`describes the selectable media available at the remote media source. (See e.g., id.
`
`at 18:7-11, 17:31-46). The media device receives, from the remote media source,
`
`media metadata indicating the media files and media streams that are available at
`
`the remote media source. (See e.g., id. at 18:7-11, 17:36-46). Using this media
`
`metadata, the media device displays to the user the options for media available at
`
`the remote media source, permitting the user to view and select media available at
`
`the remote media source. (See e.g., id. at 17:49-55).
`
`In response to a user selection from the displayed media metadata, the media
`
`device generates a signal and sends a corresponding signal that includes the
`
`selected media metadata to the remote media source, relaying the user’s selection
`
`to the remote media source. (See e.g., id. at 17:50-55, 18:27-33). The remote
`
`media source responds to that signal sent in this remote controller mode by both
`
`accessing the identified media and sending the accessed media (the media that was
`
`identified by the user selection) to an output device separate from the media device
`
`for playback. (See e.g., id. at 18:27-33; 8:11-42).
`
`III. Claim interpretation
`
`The Petition offers no express claim interpretations. Instead, the Petition
`
`implicitly interprets the claims by the way it attempts to map the prior art
`
`references to the claims. The Petition provides no support nor any explanation for
`
`the implicit claim interpretations it applies.
`
`
`
`6
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`A number of the implicit claim interpretations applied in the Petition are
`
`incorrect, as discussed below. Because the Petition does not show that the prior art
`
`discloses the correct interpretations, the Petition should be denied. See Apple Inc.
`
`v. Zilabs Inc., IPR2015-00964, slip op. at 11-12 (Sept. 17, 2015) (Paper 13)
`
`(denying institution because Petitioner’s arguments were inconsistent with proper
`
`claim construction); Zerto Inc. v. EMC Isr. Dev. Ctr., Ltd., IPR2013-00458, slip
`
`op. at 17-19 (Jan. 16, 2014) (Paper 12) (denying institution because “Petitioner
`
`does not direct us to a disclosure” addressing the correct interpretation); Jiawei
`
`Tech. (HK) Ltd. v. Richmond, IPR2014-00937, slip op. at 2 (Feb. 6, 2015) (Paper
`
`24) (denying rehearing following denial of institution where Petitioner “fail[ed] to
`
`offer a construction and analysis of a term critical to understanding the scope of
`
`[the] claims”).
`
`A. The “media source that, in turn, responds . . . by accessing . . . and
`sending . . . to a media output device” limitation of the “second
`mode” of independent claim 1
`
`Claim 1 of the ’309 Patent requires, in the second mode, that the remote
`
`media source, respond to a media device signal that includes media metadata
`
`identifying at least one media file or media stream to be selected and played, by
`
`both (1) accessing the media associated with the identified media metadata and
`
`(2) sending that identified media to a media output device separate from the
`
`media device. This unmistakably provides that the remote media source responds
`
`
`
`7
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`to the media device by first accessing and then sending the selected media file or
`
`media stream to a separate output device. In this way, Claim 1 provisions the
`
`second mode of operation.
`
`In contrast, the Petition treats this limitation as requiring the media device
`
`(as opposed to the required remote media source) send the selected media file or
`
`media stream to the output device. (See e.g., Pet. at 18-21, 22, 23 (“[T]he PC (the
`
`media device) sends the selected media file to a network-enabled audio device
`
`(media output device) . . . .”), 51(“The media device sends the identified media file
`
`or stream to a media output device separate from the media . . . .”)). Moreover, the
`
`Petition treats the sending of the media file to the output device as disconnected
`
`from and not in response to the media device signal identifying to the remote
`
`media source which media file is to be accessed and sent. (See id.). Yet, Petitioner
`
`cites no support in the specification for its interpretation.
`
`Petitioner may have arrived at its position by attaching unwarranted
`
`significance to a line break in claim 1 (though this is not clear as Petitioner chose
`
`not to explain why it interpreted the claims as it did). Focusing on the line break
`
`erroneously uncouples the actions of accessing and sending—which are both
`
`required of the media source—and attributes the accessing to the media source, but
`
`the sending to the media device. (Cf. Pet. at 21-22 [1.5.8 and 1.5.9]).
`
`
`
`8
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`That interpretation of the claim is unreasonable in light of the entirety of the
`
`claim and the specification.
`
`Claim 1 has a line break that results in line 20 ending with the indication that
`
`“and once accessed, and.” An image of the subject claim language as it appears in
`
`the ’309 Patent is provided below:
`
`
`
`(Ex. 1001 at 21:10-22).
`
`While this line break creates awkwardness, it is clear to one of skill in the art
`
`that the limitation does not end at the line break. Line 20 ends without indicating
`
`what happens once the identified media file or media stream is accessed. The
`
`following line completes the thought, indicating that once the identified media file
`
`or media stream is accessed, it is sent to an output device separate from the media
`
`device. In other words, “sending” at line 21 completes the phrase “the media
`
`source that, in turn, responds to the corresponding signal by accessing the
`
`
`
`9
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`identified media file . . and sending the identified media file . . . to a media
`
`output device separate from the media device.”
`
`This interpretation is consistent with the language of the claim. First, it
`
`gives meaning to the phrase “and once accessed,” as that indicates when the media
`
`source sends the identified media file or media stream. In contrast, Petitioner’s
`
`claim interpretation merely ignores the abrupt ending of the phrase at line 20.
`
`Second, this section of the claim relates to the remote media device acting as
`
`“a remote controller system for controlling over a network a media source remote
`
`from the media device.” It would be inconsistent to interpret claim 1 as requiring
`
`the media device (rather than the media source being controlled) to send the media
`
`to an output device.
`
`Third, as recited in the claim, the media metadata indicates “at least one
`
`media file or media stream available from the media source.” There is no
`
`reasonable interpretation for the “identified media file or media stream” that is sent
`
`other than media that was on the source.
`
`This interpretation is also consistent with the specification, which explains
`
`that media metadata is used to control selection and playback of media at the
`
`remote output device. (See e.g., Ex. 1001 at 18:3-6 (“Thus, only metadata need be
`
`downloaded from the player and the player may then function as a service to the
`
`base unit or other device through which music can be played in response to
`
`
`
`10
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`making a song selection from the metadata.”) (emphasis added); see also id. at
`
`17:31-48, 8:33-37).
`
`Accordingly, claim 1 should be read, despite the line break, with line 21
`
`continuing the text. Read properly, the claim requires that the remote media source
`
`both access the selected media and send that accessed media to a media output
`
`device, and that those actions be responsive to the media device signal identifying
`
`the selected media. Because the Petition never addresses this interpretation of
`
`claim 1—the only logical and reasonable interpretation–all of Petitioner’s
`
`arguments fail with respect to claim 1.
`
`B.
`
`The “remote media source that, in turn, responds . . . by accessing
`. . . and once accessed, sends . . . to a media output device”
`limitation of the “second mode” of independent claim 9
`
`Claim 9 of the ’309 Patent also includes a limitation that requires, in the
`
`second mode, that the remote media source respond to a media device signal that
`
`includes media metadata identifying at least one media file or media stream to be
`
`selected and played, by both (1) accessing the media associated with the identified
`
`media metadata and (2) sending that accessed media to a media output device
`
`separate from the media device. (Ex. 1001 at 22:36-40).3
`
`
`3 A certificate of correction changed the language “and once accessed, and
`
`sending” to “and once accessed, sends”. (Ex. 1002 at 25-26).
`
`
`
`11
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`Unlike claim 1, claim 9 has no line break between “accessing” and “sends.”
`
`(Id. at 22:39-40). Although, for the reasons above, Patent Owner disagrees that the
`
`line break in claim 1 allows claim 1 to be interpreted to require the media device
`
`send the accessed media to the media output device, claim 9 has no such line break
`
`and states that “sends” is the response of the remote media source.
`
`Despite the plain language of claim 9, the Petition applies the same incorrect
`
`interpretation it applied to claim 1 (arguing that the media device sends the
`
`identified media to the media output device). For this limitation of claim 9, the
`
`Petition merely cross references the allegations made with respect to claim 1. (See
`
`e.g., Pet. at 26 (“Petitioner submits that claim 9 is invalid for at least the same
`
`reasons described above relative to claim 1.”), 54 (same)).
`
`Accordingly, Petitioner’s arguments clearly fail with respect to claim 9 as
`
`the Petition nowhere addresses a proper interpretation of claim 9.
`
`C. The “mode” limitations in independent claims 1 and 9
`
`As discussed above, the ’309 Patent discloses and claims a media device that
`
`operates in two modes. In the first mode, the media device operates as a media
`
`player to allow a user to select and play media files or media streams from a media
`
`source that is co-housed with or directly connected to the media device. In the
`
`second mode, the media device operates as a remote controller to allow a user to
`
`select and play media files or media streams from a remote media source.
`
`
`
`12
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`Importantly, in the second mode, the claims require a series of
`
`interconnected actions and responses that allow the media device to select and play
`
`media from a remote media source. Those interconnected actions involve both bi-
`
`directional messaging between the media device and media source and user
`
`interaction through the media device to implement remote control of the media
`
`source.
`
`Yet, the Petition offers no definition of “mode” nor any suggestion of an
`
`interpretation that would enable these two operating modes to be distinguished.
`
`The Petition treats as a mode, disparate features disclosed in the references that are
`
`not sequenced and interconnected actions and responses. The Petition cobbles
`
`together as a mode these disparate features even though they occur at different
`
`times, in response to different user interactions, using different software
`
`components. See Sections IV.B.3, V.C.1 below.
`
`By not addressing any required connection between the actions in the second
`
`mode, the implied claim interpretation in the Petition essentially ignores the
`
`requirement for a “mode.” As a result, the Petition fails to identify the claimed
`
`second mode in either of Qureshey or VDM. For this reason the Petition must fail.
`
`
`
`13
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`IV. The Petition fails to establish a reasonable likelihood that the claims are
`anticipated by U.S. Patent App. No. 2002/0002039 (“Qureshey”)
`
`A. Overview of Qureshey
`
`Qureshey discloses a computer jukebox—what it refers to as the “Internet
`
`Personal Audio Network” (“IPAN”). (Ex. 1005 ¶ 0014). The IPAN system has
`
`various functions, including downloading audio files, cataloging the audio files and
`
`archiving them to the IPAN system (id. at ¶¶ 0148-49, 0173), playing audio files
`
`on the IPAN system (id. at ¶ 0156), and allowing the user to create playlists and
`
`assign the playlists to network-enabled audio devices (id. at ¶ 0159).
`
`Qureshey teaches the type of systems disparaged by the ’309 patent.
`
`Compare Ex. 1005 at ¶ 0122 (“[S]oftware on a PC can be used to assign playlists
`
`of songs to the network-enabled audio device.”), with Ex. 1001 at 3:64-4:1 (“The
`
`device is a ‘pull’ or ‘on-demand’ system, which permits the user to select the audio
`
`content from a location remote from the device. This contrasts with ‘push’
`
`systems such as AirTunes, that require a user to control programming from a
`
`central computer for supply to remote players.”)).
`
`Qureshey’s IPAN is composed of a PC connected to a server and one or
`
`more “network-enabled audio devices.” (Ex. 1005 ¶ 0124). Fig. 11 illustrates the
`
`IPAN. (Id. at ¶ 0046; see, e.g., Pet. at 6).
`
`
`
`14
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`(Ex. 1005 at Fig. 11).
`
`
`
`In attempting to map Qureshey to the claims of the ’309 Patent, the Petition
`
`identifies: (1) the PC as the claimed “media device”; (2) the “network-enabled
`
`audio device” as the claimed “media output device”; and (3) the Internet as the
`
`remote “media source” of the second mode. (E.g., Pet. at 10-11, 22).
`
`The Petition identifies two distinct operations of the IPAN as disclosing the
`
`claimed second mode: downloading files from the Internet, and assigning a playlist
`
`to a network-enabled audio device. (E.g., Pet. at 8, 10-11). However, as discussed
`
`below, these features are used at different times, require separate user interactions,
`
`and use distinctly different user interfaces from separate software.
`
`To download a file from a website on the Internet, a user accesses the PC’s
`
`web browser. (Ex. 1005 at ¶¶ 0148-49, 0173). Using the web browser, a user
`
`“finds a desired audio file as addressed by a URL.” (Id. at ¶ 0173).
`
`
`
`15
`
`

`
`Case IPR2015-01463
`Patent No. 8,090,309
`
`After an audio file has been downloaded, the user can choose to put it on a
`
`playlist and assign it to a network-enabled audio device. (Id. at ¶¶ 0156, 0159).
`
`Playlists are created and assigned in the “Playlist Manager window 1700,” which is
`
`described as a web-based interface provided by the IPAN server. (Id. at ¶¶ 0155,
`
`0156, 0159). The user selects the “Make Available On” option to assign a playlist
`
`to a network-enabled audio device. (Id. ¶ 0159). The network-enabled audio
`
`device to which a playlist has been assigned receives the p