Qurio Holdings, Inc.
`Robert Renke
`4011 WestChase Blvd, Suite 110
`Raleigh, NC 27607
`(919) 532-7665 (telephone)
`
`
`By:
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`DISH NETWORK, LLC
`Petitioner
`
`v.
`
`QURIO HOLDINGS, INC.
`Patent Owner
`
`___________________
`
`Case IPR2016-00007
`Patent 7,787,904
`
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`

`
`IPR2016-00007
`U.S. Patent 7,787,904
`
`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`BACKGROUND OF THE ‘904 PATENT .................................................... 1
`
`III. A PERSON OF ORDINARY SKILL IN THE ART ..................................... 9
`
`IV. CLAIM CONSTRUCTION ......................................................................... 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“WPAN” ............................................................................................. 11
`
`“mobile device” .................................................................................. 13
`
`“media device” ................................................................................... 14
`
`“validation process” ........................................................................... 15
`
`“media database” ................................................................................ 16
`
`“last-played time-stamps” .................................................................. 16
`
`V.
`
`THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ....................................................................................... 17
`
`A.
`
`Claims 1-4, 7, 10, 12, and 15-18 are not obvious in view of
`Morse and Meade ............................................................................... 17
`
`1.
`2.
`3.
`
`Summary of Morse................................................................... 18
`Summary of Meade .................................................................. 18
`There Is No Reasonable Likelihood That Claims 1-4, 7,
`10, 12, and 15-18 Would Have Been Obvious Over the
`Combination of Morse and Meade .......................................... 19
`
`B.
`
`Claims 13 and 20 are not obvious in view of Morse, Meade,
`and Terada .......................................................................................... 23
`
`1.
`2.
`
`Summary of Terada .................................................................. 23
`There Is No Reasonable Likelihood That Claims 13 and
`20 Would Have Been Obvious Over the Combination of
`Morse, Meade, and Terada ....................................................... 24
`
`C.
`
`Claim 14 is not obvious in view of Morse, Meade, and
`Krikorian ............................................................................................ 26
`
`1.
`
`Summary of Krikorian ............................................................. 26
`
`-ii-
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`

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`IPR2016-00007
`U.S. Patent 7,787,904
`
`2.
`
`There Is No Reasonable Likelihood That Claim 14
`Would Have Been Obvious Over the Combination of
`Morse, Meade, and Krikorian .................................................. 26
`
`VI. CONCLUSION ............................................................................................. 26
`
`
`
`
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`IPR2016-00007
`U.S. Patent 7,787,904
`
`TABLE OF AUTHORITIES
`
`Cases
`Bicon Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006) ..................................11
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) .................10
`Endo Pharmaceutical, Inc. v. Depomed, Inc., IPR2014-00656 ..............................10
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ..........................................................10
`Macronix Int’l v. Spansion LLC¸ IPR2014-00106 ..................................................10
`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) .............11
`Microsoft Corporation v. Depomed, Inc., IPR2014-00292 .....................................11
`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358 (Fed. Cir. 2007) ......................11
`Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00152 ...10
`
`Statutes
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. §314(a) ....................................................................................................17
`
`Rules
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.6(e) ..................................................................................................... 1
`37 C.F.R. §42.100(b) ...............................................................................................10
`
`
`
`
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`-iv-
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`IPR2016-00007
`U.S. Patent 7,787,904
`
`TABLE OF EXHIBITS
`
`
`Existing Exhibits:
`
`Exhibit No.
`
`Description
`
`1001
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`US Patent No. 7,787,904 B2 to Issa
`
`US Patent No. 7,535,465 B2 to Morse et al.
`
`US Patent Application Publication No.
`2003/0071117 A1 to Meade, II
`
`US Patent Application Publication No. 20040073610
`A1 to Terada et al.
`
`US Patent No. 7,647,614 B2 to Krikorian et al.
`
`IEEE 802.15.1 Standard, June 14, 2005
`
`
`
`
`
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`-v-
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`

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`IPR2016-00007
`U.S. Patent 7,787,904
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`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`Qurio Holdings, Inc. (“Patent Owner”) respectfully submits this Preliminary
`
`Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, in response
`
`to the Petition for Inter Partes Review (Paper 1) of U.S. Patent No. 7,787,904 (“the
`
`‘904 Patent”) filed by DISH Network, LLC (“Petitioner”). Petitioner has requested
`
`review of claims 1-4, 7, 10, 12-18, and 20 of the ‘904 Patent. This Preliminary
`
`Response is timely, as it is being filed within three months of the mailing date of
`
`the Notice of Filing Date Accorded to Petition (Paper 3), mailed October 7, 2015.
`
`I.
`
`INTRODUCTION
`
`A trial should not be instituted in this matter because the references relied
`
`upon in the Petition do not give rise to a reasonable likelihood of the Petitioner
`
`prevailing with respect to the challenged claims of the ‘904 Patent.
`
`Should the Board decide to institute a trial, Patent Owner reserves the right
`
`to present additional arguments in the Patent Owner Response.
`
`II. BACKGROUND OF THE ‘904 PATENT
`
`The ‘904 Patent is generally directed to controlling, via a mobile device,
`
`content played by media devices in a wireless personal area network (“WPAN”).
`
`More particularly, the ‘904 Patent provides a mobile device for controlling digital
`
`content played by a plurality of media devices. Ex. 1001 at 2:57-58.
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`-1-
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`U.S. Patent 7,787,904
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`The media devices include media players and content that may be played by
`
`the media players. Id. at 3:4-6. Exemplary media devices include a personal
`
`computer, a digital video recorder, an audio player such as a Moving Pictures
`
`Experts Group (MPEG) Audio Layer-3 (MP3) player, a digital picture frame, and
`
`the like. Id. at 3:26-31. The media device includes a wireless communication
`
`interface, a control system, and a content database. Id. at 33-35. The wireless
`
`communication interface provides wireless communication via the WPAN between
`
`the media device and the mobile device and may operate according to a wireless
`
`communication standard such as, but not limited to, the Bluetooth wireless
`
`communication standard, the Zigbee wireless communication standard, the
`
`Wireless Fidelity (WiFi) wireless communication standard, or the IEEE 802.11
`
`wireless communication standards. Id. at 3:35-47. The control system includes a
`
`media player that plays content in the content database and a WPAN media server
`
`that instructs the media player to play select content based on instructions for
`
`information received from the mobile device. Id. at 3:47-54, 3:59-62. The content
`
`database may, for example, be any storage device such as, but not limited to, a hard
`
`drive or Random Access Memory (RAM) and operates to store content such as
`
`digital video files, digital audio files, digital images, slideshows of digital images,
`
`or the like. Id. at 3:54-57.
`
`-2-
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`IPR2016-00007
`U.S. Patent 7,787,904
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`Exemplary mobile devices include a mobile phone, Personal Digital
`
`Assistant (PDA), and the like, and a standalone device similar to a remote control.
`
`Id. at 4:4-6. The mobile device includes a wireless communication interface for
`
`communicating via the WPAN with the plurality of media devices and a control
`
`system. Id. at 4:7-9. The wireless communication interface may operate, for
`
`example, according to a wireless communication standard such as, but not limited
`
`to, the Bluetooth wireless communication standard, the Zigbee wireless
`
`communication standard, the Wireless Fidelity (WiFi) wireless communication
`
`standard, or the IEEE 802.11 wireless communication standards. The control
`
`system includes a media client and a media database. Id. at 4:21-22. The media
`
`client provides instructions or information to the media server in order to control
`
`the content played by the media player. Id. at 4:23-27. When the mobile device
`
`enters a WPAN, the media client interacts with the media server to obtain metadata
`
`describing the content in the content database. Id. at 4:27-30. The metadata is
`
`stored in the media database at the mobile device and may include information
`
`such as a file name, file type, and an identifier of the WPAN for each file in the
`
`content database. Id. at 4:30-33. A user associated with the mobile device may
`
`browse information from media database and select content to be played by the
`
`media player using the media database. Id. at 4:38-42. An exemplary media
`
`database is shown in FIG. 5 reproduced below.
`
`-3-
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`IPR2016-00007
`U.S. Patent 7,787,904
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`
`
`As can be appreciated from the above exemplary media database stored in
`
`the mobile device, multiple pieces of information can be associated with the same
`
`media content in the content database in an organized manner to form an organized
`
`collection of information describing the media content residing at the media device
`
`in the content database. Id. at 5:18-45.
`
`Petitioner challenges claims 1-4, 7, 10, 12-18 and 20, of the ‘904 Patent, of
`
`which claims 1 and 16 are independent.
`
`-4-
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`IPR2016-00007
`U.S. Patent 7,787,904
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`Independent claim 1 recites a mobile device for controlling digital content
`
`played by a plurality of media devices comprising: a) a wireless communication
`
`interface for communicating with the plurality of media devices; b) a media
`
`database; and c) a control system adapted to, for each of the plurality of media
`
`devices: i) communicate with the media device when the mobile device is within a
`
`wireless personal area network (WPAN) associated with the media device to obtain
`
`information describing content residing at the media device; and ii) store the
`
`information describing the content residing at the media device in the media
`
`database; wherein desired content is selected from the content at the media device
`
`based on the information in the media database and played at the media device
`
`when the mobile device is within the WPAN associated with the media device.
`
`Claim 2, which depends from claim 1, further recites the control system is
`
`further adapted to select the desired content to play at the media device from the
`
`media database and instruct the media device to play the desired content when the
`
`mobile device is within the WPAN associated with the media device.
`
`Claim 3, which depends from claim 2, further recites the control system is
`
`further adapted to interact with a user such that the user selects the desired content
`
`to play at the media device from the media database.
`
`-5-
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`IPR2016-00007
`U.S. Patent 7,787,904
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`Claim 4, which depends from claim 2, further recites the control system is
`
`further adapted to automatically select the desired content based on predetermined
`
`user preferences.
`
`Claim 7, which depends from claim 4, further recites the user preferences
`
`comprise a predetermined play list for each of the plurality of media devices.
`
`Claim 10, which depends from claim 2, further recites if the mobile device is
`
`simultaneously within the WPAN associated with a first one of the plurality of
`
`media devices and the WPAN associated with a second one of the plurality of
`
`media devices, the control system is further adapted to: select one of the first and
`
`second ones of the plurality of media devices as a select media device; and select
`
`desired content to play for only the select media device from the media database
`
`and instruct only the select media device to play the desired content.
`
`Claim 12, which depends from claim 2, further recites the mobile device is
`
`included within a system further comprising the plurality of media devices,
`
`wherein each of the plurality of media devices comprises: a) a wireless
`
`communication interface for communicating with the mobile device when the
`
`mobile device is within the WPAN associated with the media device; b) a content
`
`database storing the content; and c) a media server adapted to: i) provide the
`
`information describing the content in the content database to the mobile device
`
`when the mobile device is within the WPAN associated with the media device; and
`
`-6-
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`IPR2016-00007
`U.S. Patent 7,787,904
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`ii) instruct a media player to play the desired content in response to receiving an
`
`instruction to play the desired content from the mobile device.
`
`Claim 13, which depends from claim 1, further recites the control system is
`
`further adapted to: store last-played time-stamps for the content residing at each of
`
`the plurality of media devices in the media database; and provide the information
`
`and the last-played time-stamps for the content residing at each of the plurality of
`
`media devices to the media device when the mobile device is within the WPAN
`
`associated with the media device; wherein the media device selects the desired
`
`content based on the information and the last-played time-stamps for the content
`
`residing at each of the plurality of media devices.
`
`Claim 14, which depends from claim 1, further recites the control system is
`
`further adapted to communicate with the media device to perform a validation
`
`process after entering the WPAN associated with the media device for a first time,
`
`wherein the validation process comprises obtaining a passkey from a user
`
`associated with the mobile device and providing the passkey to the media device.
`
`Claim 15, which depends from claim 1, further recites the control system is
`
`further adapted to update the information describing the content from the media
`
`device after leaving the WPAN associated with the media device and returning to
`
`the WPAN associated with the media device.
`
`-7-
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`IPR2016-00007
`U.S. Patent 7,787,904
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`Independent claim 16 recites a method for controlling digital content played
`
`by a plurality of media devices comprising, for each of the plurality of media
`
`devices: obtaining information describing content residing at the media device
`
`when a mobile device is within a wireless personal area network (WPAN)
`
`associated with the media device; storing the information describing the content
`
`residing at the media device in a media database of the mobile device; selecting
`
`desired content to play from the content residing at the media device based on the
`
`media database when the mobile device is within the WPAN associated with the
`
`media device; and playing the desired content at the media device.
`
`Claim 17, which depends from claim 16, further recites selecting the desired
`
`content to play comprises: selecting the desired content from the media database at
`
`the mobile device; and providing an instruction from the mobile device to the
`
`media device instructing the media device to play the desired content when the
`
`mobile device is within the WPAN associated with the media device.
`
`Claim 18, which depends from claim 17, further recites if the mobile device
`
`is simultaneously within the WPAN associated with a first one of the plurality of
`
`media devices and the WPAN associated with a second one of the plurality of
`
`media devices, the method further comprises: selecting one of the first and second
`
`ones of the plurality of media devices as a select media device; selecting the
`
`-8-
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`IPR2016-00007
`U.S. Patent 7,787,904
`
`desired content to play for only the select media device from the media database;
`
`and instructing only the select media device to play the desired content.
`
`Claim 20, which depends from method claim 16, further recites storing last-
`
`played time-stamps for the content residing at each of the plurality of media
`
`devices in the media database; providing the information and the last-played time-
`
`stamps for the content residing at each of the plurality of media devices to the
`
`media device when the mobile device is within the WPAN associated with the
`
`media device; and selecting the desired content at the media device based on the
`
`information and the last-played time-stamps for the content residing at each of the
`
`plurality of media devices.
`
`III. A PERSON OF ORDINARY SKILL IN THE ART
`
`Petitioner alleges that a person having ordinary skill in the art (“PHOSITA”)
`
`would have “either a bachelor of science in computer science, computer
`
`engineering, electrical engineering, or an equivalent field as well as at least 2 years
`
`of academic or industry experience in any type of networking field.” Paper 1 at 7.
`
`For purposes of this paper, Patent Owner submits that a person having
`
`ordinary skill in the art of the invention would have a bachelor’s degree in
`
`computer science and/or electrical engineering and at least two years of relevant
`
`wireless communications experience.
`
`-9-
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`

`
`Patent Owner reserves its rights to present evidence and arguments in this
`
`proceeding or any other proceeding as to an alternative definition as to the level of
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`IPR2016-00007
`U.S. Patent 7,787,904
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`ordinary skill in the field.
`
`IV. CLAIM CONSTRUCTION
`
`In an inter partes review, a claim of an unexpired patent is construed using
`
`the “broadest reasonable construction in light of the specification.” 37 C.F.R.
`
`§42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). Under the BRI standard, “[t]here is a ‘heavy presumption’ that a claim
`
`term carries its ordinary and customary meaning.” Universal Remote Control, Inc.
`
`v. Universal Electronics, Inc., IPR2013-00152 (Paper 8, Aug. 19, 2013) (quoting
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). A
`
`“claim term will not receive its ordinary meaning, however, if the patentee acted as
`
`his own lexicographer and clearly set forth a definition of the disputed claim term
`
`in either the specification or prosecution history.” Macronix Int’l v. Spansion
`
`LLC¸ IPR2014-00106 (Paper 13 at 6, Apr. 24, 2014) (quoting CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, “[a]ny special
`
`definitions for claim terms must be set forth with reasonable clarity, deliberateness,
`
`and precision.” Endo Pharmaceutical, Inc. v. Depomed, Inc., IPR2014-00656
`
`(Paper 12 at 6, September 29, 2014) (citing In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994)).
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`Moreover, claims are to be construed “with an eye toward giving effect to all
`
`terms in the claim.” Endo Pharmaceutical, IPR2014-00656, Paper 12 at 8 (quoting
`
`Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)); see also Merck
`
`& Co. v. Teva Pharms, USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim
`
`construction that gives meaning to all the terms of the claim is preferred over one
`
`that does not do so.”)). Claims should therefore be construed so as not to render
`
`limitations redundant or superfluous. See Endo Pharmaceutical, IPR2014-00656,
`
`Paper 12 at 8 (citing Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed.
`
`Cir. 2007)); see also Microsoft Corporation v. Depomed, Inc., IPR2014-00292
`
`(Paper 33 at 11-12, October 14, 2014).
`
`Should a trial be instituted, the Patent Owner proposes that the Board adopt
`
`the following constructions for the following terms in accordance with the claim
`
`construction standard applicable to inter partes review proceedings. Patent Owner
`
`proposes all other terms be construed in accordance with their plain and ordinary
`
`meaning.
`
`A.
`
`“WPAN”
`
`Each of claims 1 and 11-20 recites the term “WPAN” (wireless personal
`
`area network). Petitioner proposes a construction for “WPAN” of “a short distance
`
`network among a private, intimate group of devices, for example using a Bluetooth
`
`connection.” Paper 1 at 7-8. Patent Owner disagrees with this construction as it is
`
`-11-
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`inconsistent with the ‘904 Patent’s specification. Petitioner relies on extrinsic
`
`evidence in the form of the IEEE 802.15 Standard (Ex. 1008). Id. at 7. The 802.15
`
`Standard, however, uses the term WPAN in a very specific way within the standard
`
`and is not intended to be the only possible use of this phrase. See Id. at 21, “[t]he
`
`term WPAN in this standard refers specifically to a wireless personal area network
`
`as used in this standard.”
`
`Moreover, the ‘904 Patent describes embodiments that fall outside this
`
`definition and further defines the term “WPAN” within the context of these
`
`embodiments. For example, the ‘904 Patent describes “[t]he wireless
`
`communication interface 22 [of the media devices 16 and 18] may operate
`
`according to a wireless communication standard such as, but not limited to, the
`
`Bluetooth wireless communication standard, the Zigbee wireless communication
`
`standard, or the wireless fidelity (WiFi) wireless communication standard, or the
`
`IEEE 802.11 wireless communication standards.” Ex. 1001 at 3:41-47. The ‘904
`
`Patent also describes “[t]he wireless communication interface 32 [of the mobile
`
`device 20] may operate according to a wireless communication standard such as,
`
`but not limited to, the Bluetooth wireless communication standard, the Zigbee
`
`wireless communication standard, or the wireless fidelity (WiFi) wireless
`
`communication standard, or the IEEE 802.11 wireless communication standards.”
`
`Id. at 4:15-20. The ‘904 Patent also describes, for example, “[m]ore specifically,
`
`-12-
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`the first time the mobile device 20 enters the WPAN 12, the mobile device 20
`
`communicates with the media device 16 to obtain metadata defining the content
`
`stored at the media device 16 and then stores the metadata.” Id. at 3:8-12.
`
`Accordingly, the ‘904 Patent defines the term “WPAN” as a network capable of
`
`multiple communication standards and was not intended to be limited to just the
`
`802.15 Standard or to any other such narrower extrinsic definitions. For example,
`
`the ‘904 Patent includes communication standards such as “wireless fidelity (Wi-
`
`Fi) wireless communication standard, or the IEEE 802.11 wireless communication
`
`standards,” both of which are outside the 802.15 Standard. Id. at 3:44-47, 4:19-20.
`
`The ‘904 Patent therefore defines the WPAN to provide communication between
`
`the communication interfaces of the mobile device and media device. The ‘904
`
`Patent also describes, “[w]hen the mobile device enters a Wireless Personal Area
`
`Network (WPAN) associated with a media device, the media client communicates
`
`with the media device to…,” which requires some commonality of location. Id. at
`
`1:33-35. Thus, Patent Owner asserts the broadest reasonable construction in light
`
`of the specification for the term “WPAN” is “a network defined by, and co-located
`
`with, a wireless communication interface.”
`
`B.
`
`“mobile device”
`
`Each of claims 1-20 recites the term “mobile device.” Petitioner proposes a
`
`construction for “mobile device” of “a handheld device, such as a mobile phone,
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`Personal Digital Assistant (PDA), or remote control.” Paper 1 at 8-9. Patent
`
`Owner proposes that “mobile device” be construed in accordance with its plain and
`
`ordinary meaning. To the extent the Board believes the plain and ordinary
`
`meaning will not suffice, Patent Owner proposes the broadest reasonable
`
`construction is “a device designed to be carried in normal use.”
`
`C.
`
`“media device”
`
`Each of claims 1-3, 5-7, and 10-20 recites the term “media device.”
`
`Petitioner proposes a construction for “media device” of “a set of components
`
`capable of playing stored content.” Paper 1 at 9. The Petitioner argues that the
`
`specification of the ‘904 Patent includes, as one of multiple examples, “a digital
`
`video recorder associated with a television,” the definition of media device should
`
`include multiple stand-alone components. A digital video recorder, however, is
`
`capable of playing stored content with or without a TV. Moreover, each of Figs. 1,
`
`2, 4, and 6-9 of the ‘904 Patent show the media devices 16 and 18 each as a single
`
`device that stores and plays resident media. The ‘904 Patent also describes, “the
`
`media devices 16 and 18 include media players and content that may be played by
`
`the media players.” Ex. 1001 at 3:4-6. Patent owner therefore asserts that
`
`Petitioner’s construction requiring “a set of components” is inconsistent with the
`
`specification of the ‘904 Patent. Patent Owner asserts that the broadest reasonable
`
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`construction of “media device” consistent with the specification of the ‘904 Patent
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`is therefore “a device capable of playing resident content.”
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`D.
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`“validation process”
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`Dependent claim 14 recites the term “validation process.” Petitioner
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`proposes a construction for “validation process” of “process by which the mobile
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`device identifies itself to the media device, such as the pairing process described in
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`the Bluetooth specification.” Paper 1 at 9-10. Patent Owner disagrees with this
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`construction as it is inconsistent with the ‘904 Patent’s specification. The ‘904
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`Patent describes:
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`During the validation process, the media client 36 interacts with a user
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`associated with the mobile device to obtain a password or key which
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`may also be referred to as a passkey. Once the passkey is entered by
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`the user, it is provided to the media server 30 and communication
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`between the media client 36 in the media server 30 is established. Ex.
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`1001 at 4:56-62.
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`Accordingly, the ‘904 Patent’s specification describes receiving a user-
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`provided password or passkey from the mobile device, but does not necessarily
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`have to identify the mobile device. Moreover, the ‘904 Patent’s specification
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`offers the Bluetooth pairing process as but one example and should not limit the
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`construction of validation process. Properly interpreted, Patent Owner asserts that
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`the broadest reasonable interpretation of “validation process” consistent with the
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`-15-
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`specification is “a process by which information obtained from a user is provided
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`U.S. Patent 7,787,904
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`to establish communication.”
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`E.
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`“media database”
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`Each of claims 1-3, 10, 13, 16-18 and 20 recites the term “media database.”
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`Petitioner does not provide a proposed construction for “media database.” Patent
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`Owner submits that the broadest reasonable construction of the term “media
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`database” consistent with the specification of the ‘904 Patent is “an organized
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`collection of information describing media content residing at the media device.”
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`This construction is supported by the specification of the ‘904 Patent. For
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`example, the ‘904 Patent describes:
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`As discussed below in more detail, when the mobile device 20 enters
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`one of the WPANs 12, 14, the media client 36 interacts with the
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`media server 30 to obtain metadata describing the content in the
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`content database 26. The metadata is stored in the media database 38
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`and may include information such as a file name, file type, and an
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`identifier of the WPANs 12, 14 for each file in the content database
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`26. Ex. 1001 at 4:27-33.
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`FIG. 5 of the 904 patent also illustrates an exemplary media database.
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`F.
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`“last-played time-stamps”
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`Claims 13 and 20 recite the term “last-played time-stamps.” Petitioner does
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`not provide a proposed construction for “last-played time-stamps.” Patent Owner
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`submits that the broadest reasonable construction of the term “last-played time-
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`stamps” in the context of the ‘904 Patent is “an indication of the time at which
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`content was last played.” The ‘904 patent describes “[t]he last-played time-stamp
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`indicates the time at which the particular file was last played by the media player
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`28 and may be added to the media database 38 by the media client 36. Ex. 1001 at
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`3:29-32. Fig. 5 of the ‘904 patent includes a column with a heading “LAST
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`PLAYED” to illustrate exemplary last-played time-stamps in the exemplary media
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`database 38 illustrated.
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`V. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
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`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition filed
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`under section 311 and any response filed under section 313 shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” 35 U.S.C. §314(a).
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`A. Claims 1-4, 7, 10, 12, and 15-18 are not obvious in view of Morse
`and Meade
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`Claims 1-4, 7, 10, 12, and 15-18 of the ‘904 Patent would not have been
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`obvious in view of the combination of U.S. Patent No. 7,535,465 B2 to Morse et
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`al. (“Morse,” Ex. 1004) and U.S. Patent Application Publication No.
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`2003/0071117 A1 to Meade, II (“Meade,” Ex. 1005). Paper 1 at 10. Petitioner has
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`failed to meet its burden in demonstrating a reasonable likelihood of prevailing
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`with respect to any of the challenged claims based upon Morse and Holloway.
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`1.
`
`Summary of Morse
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`Morse relates to a system that includes a playback unit and a remote control
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`device. Ex. 1004 at 3:34-36. A separate “media content storage device 14 may
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`store digital media in the form of music files, video files, photographs, or the like
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`and the playback unit 32 may retrieve content data that identifies, or is associated
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`with, the media files and communicate the content data to the remote control
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`device 34 for display.” Id. at 3:39-44, Fig. 2. A “user may then select content
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`(selected media) for reproduction or playback on the playback device 31 based on
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`the information provided.” Id. at 3:45-48. The remote control device includes a
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`user interface and display screen that “allow a user to browse (e.g., by artist,
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`album, genre, all tracks, playlist or the like) and select media content stored on the
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`media content storage device 14” (emphasis added). Id. at 4:32-35. “The remote
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`control device 254 includes a user interface 56, a display rendering engine or
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`module 260, a display content cache 262, and an exemplary font table 264.” Id. at
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`9:28-30.
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`2.
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`Summary of Meade
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`Meade relates to a method and system for controlling appliances with a
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`mobile computing device. Ex. 1005 at 0008-9. Mead states:
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`-18-
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`For example, upon entry within a room, the mobile computing device
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`can automatically perform these steps: identify an appliance like a
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`TV; activate the TV; turn the TV to a channel carrying a favorite
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`program; and select a preferred volume level. In the event that the
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`favorite program is not being broadcast, the mobile computing device
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`can supply its own content. In particular, the mobile computing
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`device can retrieve an episode of that program or substitute a program
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`from memory of the mobile computing device, transfer that stored
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`program to the TV, and then command the appliance to play the
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`program. Id. at 0027.
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`3.
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`There Is No Reasonable Likelihood That Claims