Case IPR2016-00794
`Patent No. 8,090,309
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`Paper No.
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`Filed on behalf of Chestnut Hill Sound Inc.
`By: Hamad H. Hamad
`John Austin Curry (pro hac pending)
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`CALDWELL CASSADY CURRY, P.C.
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`Telephone: 214.888.4848
`Facsimile: 214.888.4849
`hhamad@caldwellcc.com
`acurry@caldwellcc.com
`chillsound@caldwellcc.com
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.,
`Petitioner,
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`v.
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`CHESTNUT HILL SOUND INC.,
`Patent Owner
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`
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`Case IPR2016-00794
`Patent No. 8,090,309
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`PATENT OWNER’S PRELIMINARY RESPONSE
`37 C.F.R. § 42.107
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`Case IPR2016-00794
`Patent No. 8,090,309
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`TABLE OF CONTENTS
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`Introduction. ..................................................................................................... 1 
`I. 
`II.  The Petition Should Be Rejected under 35 U.S.C. § 325(d). ........................... 3 
`III.  Overview of the ’309 Patent. ......................................................................... 10 
`A. The “first mode” ...................................................................................... 11 
`B.   The “second mode” .................................................................................. 12 
`IV.  Claim Interpretation. ...................................................................................... 13 
`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. ....................................... 14 
`B. The “remote media source that, in turn, responds . . . by accessing ....... 18 
`C. The “mode” limitations in independent claims 1 and 9. .......................... 19 
`VI.  The Petition fails to establish a reasonable likelihood that the
`claims are obvious over U.S. Patent App. No. 2005/0132405
`(“AbiEzzi”) in view of U.S. Patent No. 8,156,528 (“Baumgartner”). .......... 25 
`A.  Overview of AbiEzzi. .............................................................................. 25 
`B.  Overview of Baumgartner. ...................................................................... 28 
`C.  The Petition fails to identify a motivation to combine AbiEzzi
`and Baumgartner. .................................................................................... 29 
`D.  The Petition fails to show that AbiEzzi in view of Baumgartner
`renders claim 1 obvious ........................................................................... 32 
`1.  The Petition does not identify “a media device operable in
`first and second modes.” .................................................................. 32 
`2.  The Petition does not identify a “media source” that meets
`the limitations of the second mode of claim 1. ................................ 33 
`E.  The Petition fails to show that AbiEzzi in view of Baumgartner
`renders claim 9 obvious. .......................................................................... 35 
`F.  The Petition fails to establish a reasonable likelihood that
`AbiEzzi in view of Baumgartner renders obvious the claims
`dependent on claims 1 and 9 ................... Error! Bookmark not defined. 
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`Patent No. 8,090,309
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`VII.  The Petition fails to establish a reasonable likelihood that the
`claims are obvious over U.S. Patent No. 6,563,769, Van Der
`Meulen (“VDM”) in view of U.S. Patent No. 6,728,729,
`Jawa (“Jawa”) ............................................................................................... 37 
`A.  Overview of VDM ................................................................................... 37 
`B.  Because VDM, just like AbiEzzi in view of Baumgartner,
`is directed to a virtual jukebox, the Petition’s Ground 2
`suffers from much the same failings as discussed with
`respect to Ground 1 ................................................................................. 40 
`C.  The Petition fails to show that VDM discloses a media device
`operable in the “second mode” of claim 1 ............................................. 41 
`1.  The Petition does not identify a “second mode.” ............................. 41 
`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 ............................................................... 43 
`3.  Even under the Petition’s incorrect interpretation of the
`“media source that, in turn, responds . . . by accessing . . .
`and sending . . . to a media output device” , the Petition
`fails to show VDM discloses that limitation ................................... 44 
`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 ................... 46 
`a. 
`“transmitting . . . a request” limitation of the “second
`mode” of claim 1 .................................................................... 47 
`The Petition fails to identify a motivation to combine
`VDM and Jawa ....................................................................... 48 
`“displaying” in the “second mode” of claim 1 ....................... 50 
`“generating a signal” & “sending a corresponding
`signal” limitation of the “second mode” of claim 1 ................ 52 
`D.  The Petition fails to establish a reasonable likelihood that
`claim 9 is obvious over VDM in view of Jawa ..................................... 53 
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`b. 
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`c. 
`d. 
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`Patent No. 8,090,309
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`E.  The Petition fails to establish a reasonable likelihood that
`VDM in view of Jawa renders obvious the claims dependent
`on claims 1 and 9. .................................................................................... 55 
`F.  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 ...................................................................................... 56 
`VIII.    Conclusion .................................................................................................. 57 
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`Case IPR2016-00794
`Patent No. 8,090,309
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`TABLE OF AUTHORITIES
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`Cases
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`Apple Inc. v. Chesnut Hill Sound, Inc.
`IPR2015-01463, slip op. (Jan. 13, 2016) ....................................................5, 48
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`Apple Inc. v. ContentGuard Holdings, Inc.
`IPR2015- 00450, slip op. (Jun. 29, 2015) .................................................34, 57
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`Apple Inc. v. Zilabs Inc.
`IPR2015-00964, slip op. (Sept. 17, 2015) ....................................13, 37, 44, 55
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`Arista Networks, Inc. v. Cisco Sys., Inc.
`IPR2015-01710, slip op. (Mar. 29, 2016) .........................................................3
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`CallCopy v. Verint Americas, Inc.
`IPR2013-00486, slip op. (Feb. 5, 2013) ...................................................35, 57
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`Epistar v. Trustees of Boston University
`IPR2013-00298 (Nov. 15, 2013) ....................................................................24
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`Graham v. John Deere Co.
`383 U.S. 1 (1966) ............................................................................................23
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`InfoBionic, Inc. v. Braemar Mf’g, LLC
`IPR2015-01704, slip op. (Feb. 16, 2016) .........................................................2
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`Jiawei Tech. (HK) Ltd. v. Richmond
`IPR2014-00937, slip op. (Feb. 6, 2015) ...................................................14, 55
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`OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc.
`701 F.3d 698 (Fed. Cir. 2012) ........................................................................24
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`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP
`IPR2015-00114, slip op. (Jan. 28, 2015) ..........................................................4
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`Silicon Labs., Inc. v. Cresta Tech. Corp.
`IPR2014-00809, slip op. (Oct. 24, 2014) ........................................................55
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`Symantec Corp. v. RPost Commc’ns Ltd.
`IPR2014-00355, slip op. (July 15, 2014) ........................................................55
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`Unilever, Inc. v. The Procter & Gamble Co.
`IPR2014-00506, slip. op. (July 7, 2014) ...........................................1, 3, 7, 8, 9
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`Zerto Inc. v. EMC Isr. Dev. Ctr., Ltd.
`IPR2013-00458, slip op. (Jan. 16, 2014) ......................................14, 34, 55, 57
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`Case IPR2016-00794
`Patent No. 8,090,309
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`Statutes
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`35 U.S.C. § 103 .....................................................................................................23
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`35 U.S.C. § 312(a)(3) ............................................................................................34
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`35 U.S.C. § 325(d) ........................................................................................ passim
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`Other Authorities
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`37 C.F.R. § 42.1(b) ..............................................................................................4,8
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`37 C.F.R. § 42.65(a) ...............................................................................................2
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`37 C.F.R. § 42.104(b)(4) ..................................................................................34,56
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`37 C.F.R. § 42.108 ................................................................................................41
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`77 Fed. Reg. 48,612 (Aug. 14, 2012) .......................................................34, 56, 57
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`Introduction.
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`Patent Owner Chestnut Hill Sound Inc. (“Patent Owner” or “Chestnut Hill
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`Patent No. 8,090,309
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`I.
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`Sound”) respectfully opposes the Petition for inter partes review of U.S. Patent
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`No. 8,090,309 (the “’309 Patent”) filed by Petitioner on March 25, 2016. The
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`Petition should be denied for procedural reasons, evidentiary reasons, and
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`substantive reasons.
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`The Petition is procedurally defective and should be denied under § 325(d).
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`The Board has already denied a previous IPR Petition by Petitioner against the
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`ʼ309 Patent. Nonetheless, Petitioner presents art both identical and substantially
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`similar to art that was previously presented in the denied first petition. Petitioner
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`makes no attempt to show that the three “new” references were not available to
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`Petitioner at the time of the first filing. Indeed, it cannot, as one of the “new”
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`references is actually issued to Petitioner. The instant Petition is nothing more
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`than an improper attempt to use the “prior Decision on Institution to bolster
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`challenges that were advanced, unsuccessfully, in the [first] Petition.” Unilever,
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`Inc. v. The Procter & Gamble Co., IPR2014-00506, slip. op. at 8 (July 7, 2014)
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`(Paper 17).
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`The Petition is also defective because it fails to meet its evidentiary burden
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`because it only presents conclusory evidence of unpatentability. The Petition
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`alleges only obviousness against the challenged claims of the ’309 Patent. The
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`Petition’s proposed combinations lack any real support from the documents
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`themselves. Indeed, the Petition relies exclusively on the Declaration of Dr.
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`Mercer for support, and Dr. Mercer’s declaration appears to parrot the Petition
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`almost word-for-word. While such a procedure is not inherently improper, in this
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`instance it should be fatal to the Petition given the unsupported and conclusory
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`nature of Dr. Mercer’s testimony. “Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight.” See 37 C.F.R. § 42.65(a); see also InfoBionic, Inc. v. Braemar Mf’g,
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`LLC, IPR2015-01704, slip op. at 6-7, (Feb. 16, 2016) (Paper 11) (denying
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`institution while affording declaration “little or no weight”). Presenting as a
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`declaration mere conclusions does not transform those conclusions from
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`unsubstantiated argument to evidentiary proof that can be independently evaluated
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`by the Board.
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`Moreover, even if the Mercer Declaration is considered, Petitioners have
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`not carried their burden to institute a trial in this proceeding. Trial should not be
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`instituted for at least the following reasons: (1) lack of evidence that any of the
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`proposed combinations disclose a media device operable in two modes; (2)
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`improper claim interpretation regarding the separate functionality of the media
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`source and the media device; (3) lack of evidence that any prior art references
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`teach or suggest the display of metadata received from the information source; (4)
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`lack of evidence that the actual operation sequence of any of the prior art
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`references discloses claim limitations; and (5) lack of evidence of whether and
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`how a person of ordinary skill in the art would arrive at the proposed
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`combinations to achieve a solution that represents a predictable result. For each of
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`these reasons alone, this Petition should be denied in its entirety.
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`II. The Petition Should Be Rejected under 35 U.S.C. § 325(d).
`Under 35 U.S.C. § 325(d), the Board has the discretion to reject the Petition
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`because it presents “the same or substantially the same prior art or arguments
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`previously…presented to the Office.” (35 U.S.C. § 325(d)). The Board should
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`exercise its discretion and deny the Petition. (Unilever, Inc. v. The Procter &
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`Gamble Co., IPR2014-00506, slip. op. at 6-8 (July 7, 2014) (Paper 17) (rejecting
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`under Section 325(d) a second petition that relied on prior art identical to what
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`was presented in a first petition, that “presents no argument or evidence that the
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`seven newly cited references were not known or available to it at the time of filing
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`of the [first] Petition,” and that “uses our prior Decision on Institution to bolster
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`challenges that were advanced, unsuccessfully, in the [first] Petition”); Arista
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`Networks, Inc. v. Cisco Sys., Inc., IPR2015-01710, slip op. at 3 (Mar. 29, 2016)
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`(Paper 9) (“A petitioner is not entitled to unlimited challenges against a patent.”);
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`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, IPR2015-00114, slip op. at
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`6 (Jan. 28, 2015) (Paper 14) (“[I]t is more efficient for the parties and the Board
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`to address a matter once rather than twice.”); 37 C.F.R. § 42.1(b) (“This part shall
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`be construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.”)). This Petition is just like those petitions that have been rejected by
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`the Board under Section 325(d).
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`Petitioner filed its first IPR against the ʼ309 Patent on June 30, 2015. (Ex.
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`2001, IPR2015-01463, Paper No. 2). Petitioner asserted two primary anticipation
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`references against the independent claims of the ʼ309 Patent, as well as
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`obviousness combinations including those references combined with the concept
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`of wireless networking for certain dependent claims. (Id. at 2-5). One of the
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`anticipation references was U.S. Patent App. No. 2002/0002039 to Quereshy
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`(“Quereshy”) that discloses a computer jukebox. The other anticipation reference
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`was U.S. Patent No. 6,563,769 to Van Der Meulen (“VDM”) that also discloses a
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`virtual jukebox on a personal computer. (Id.).
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`Petitioner had every incentive to set forth its best challenge to the claims of
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`the ʼ309 Patent and to locate the best prior art in support of that challenge.
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`Indeed, Petitioner was so confident in its arguments presented in the previous
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`petition that—in an argument before the district court—counsel for Petitioner
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`guaranteed the first petition would be successful. (Ex. 2002, Oct. 9, 2015 Hr’g
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`Tr., Case No. 15-261, D. Del., at 69:4-71:13 (“Apple is working with my firm
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`now and these IPRs are going to be successful.”) (“THE COURT: So when you
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`were guaranteeing success before the PTO with these IPRs, was this the
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`equivalent of Joe Namath? [COUNSEL FOR PETITIONER]: Exactly, your
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`honor. Joe Namath was correct.”)). Nonetheless, Petitioner’s first IPR petition
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`related to the ʼ309 Patent was not instituted. See Apple, Inc. v. Chestnut Hill
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`Sound, Inc., IPR2015-01463 (Jan. 13, 2016) (Paper No. 11).
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`After the Board decision denying institution, Petitioner attempted to
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`remedy its prior failure by filing this, a second, Petition related to the ʼ309 Patent,
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`asserting both identical and substantially similar prior art. For example, now
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`Petitioner asserts U.S. Patent. App. No. 2005/0132405 to AbiEzzi (“AbiEzzi”),
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`which discloses a virtual DVD jukebox, as a primary obviousness reference. (Ex.
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`1005 ¶ 0006). AbiEzzi is substantially similar to the computer jukebox disclosed
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`in Quereshy, and Apple has no basis for claiming otherwise, other than an attempt
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`to avoid application of Section 325(d).
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`Furthermore, while Petitioner asserted VDM as an anticipatory reference in
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`its first petition, Petitioner now asserts VDM as an obviousness reference in view
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`of U.S. Patent No. 6,728,729 to Jawa (“Jawa”). But Petitioner makes identical
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`arguments related to VDM, relying on Jawa only as an alternative argument for
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`the “transmitting” limitation that the Board found was not disclosed by VDM.
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`(Ex. 2003, the current Petition, highlighting all of the text now presented as
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`argument related to VDM that is identical to argument presented in the first,
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`rejected petition).
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` Petitioner recognizes that it has a problem under Section 325(d), devoting
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`an entire section of the Petition in an effort to argue around the provision. (Pet. at
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`4-7). The arguments Petitioner advances, however, are insufficient.
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`First, Petitioner recognizes that one of its four references is identical to the
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`art presented last time.1 Petitioner also claims that “[a]ll of this prior art (eleven
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`1 (Pet. at 4). While Petitioner claims it is presenting 11 new references, this is
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`incorrect. (Id.). The two Grounds in the Petition only rely on a total of 4 references,
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`and only three of those are new. (Pet. at 3). The remaining 8 references listed in the
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`chart on page 4 of the Petition are not actually asserted references, but are purported
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`to show the state of the art. As such, these references are not asserted grounds of
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`invalidity in this Petition and cannot support institution or support the conclusion that
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`this Petition is substantially different from Petitioner’s prior petition.
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`new references) was unknown to Petitioner at the time of the Previous Petition’s
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`filing, and is the product of continued searching.” (Pet. at 4). This cannot be true.
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`The Jawa reference—again, one of four references actually relied on—is actually
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`assigned to Petitioner. (Ex. 1008 at “Assignee”). Since Jawa was issued to
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`Petitioner on April 27, 2004, Petitioner was aware of this prior art at the time of
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`the first petition’s filing. Moreover, even if Petitioner had not actually discovered
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`AbiEzzi and Baumgartner at the time it filed the first petition, the Petition makes
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`no effort to present “argument or evidence that the [two] newly cited references
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`were not…available to it at the time of filing of the [first] Petition.” (Unilever,
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`Inc. v. The Procter & Gamble Co., IPR2014-00506, slip. op. at 6 (July 7, 2014)
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`(Paper 17).
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`Of course, the fact that AbiEzzi and Baumgartner—as publicly available
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`documents—were available to Petitioner at the time of filing of the first petition
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`completely undoes the policy argument Petitioner makes on pages six to seven of
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`the Petition. (Pet. at 6-7). If Petitioners are allowed to endlessly search for
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`allegedly “new prior art…discovered through continued due diligence within the
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`one-year period” without a corresponding obligation to actually find prior art that
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`is available to Petitioner (or, in this case, issued to Petitioner) by the time the first
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`IPR petition is filed, it would render impossible “the just, speedy, and inexpensive
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`resolution of every proceeding” required by 37 C.F.R. § 42.1(b).2 (Pet. at 6).
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`This is why the Board has recognized an obligation to show evidence that newly
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`presented prior art was originally unavailable when facing a challenge under §
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`325(d). (Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506, slip. op. at
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`6 (July 7, 2014) (Paper 17).
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`Petitioner also claims that “the technological system of the new primary
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`reference−AbiEzzi−is substantially different in many ways from that of the art,
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`for example VDM, included in the Previous Petition.” (Pet. at 4-5). Even
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`assuming that AbiEzzi is “substantially different in many ways” from VDM,
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`Petitioner makes no effort to demonstrate that AbiEzzi is substantially different
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`2 The timing of the filing of this Petition—only after the Board’s denial of institution
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`of the first petition—further undermines Petitioner’s argument. A petitioner should
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`not have the opportunity to locate additional prior art in the event of a denial of
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`institution and then hold that prior art in secret while waiting for the benefit of the
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`Board’s decision on a then-pending petition for IPR. This scenario is precisely why
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`Congress gave the Board discretion to reject follow-on petitions under Section
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`325(d).
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`from the other previous primary reference, Quereshy. And Petitioner could not
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`make that showing, because the two references are, in fact, substantially similar,
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`both disclosing virtual jukebox systems used to manage media files.
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`Finally, the Petition should be denied under Section 325(d) because
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`Petitioner plainly “uses [the] prior Decision on Institution to bolster challenges
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`that were advanced, unsuccessfully, in the [first] Petition.” (Unilever, Inc. v. The
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`Procter & Gamble Co., IPR2014-00506, slip. op. at 8 (July 7, 2014) (Paper 17).
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`As described above, Petitioner makes identical arguments related to VDM using
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`identical text.3 Critically, Petitioner admits that the Petition only “provides new
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`analysis with respect to the Jawa reference, and reasons to combine VDM and
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`Jawa, to address the claim limitation found lacking” by the Board in denying the
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`initial petition. (Pet. at 30) (emphasis added). Petitioner relies on Jawa for no
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`3 (Ex. 2003, highlighting all of the text now presented as argument related to VDM
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`that is identical to argument presented in the first, rejected petition). Again, Petitioner
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`is wrong to claim that the new arguments related to Jawa “could not have been properly
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`raised in the prior proceeding” because Jawa is issued to Petitioner and was available
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`to it when the first petition was filed. (Pet. at 5).
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`other elements. This is precisely the type of improper “bolstering” that Section
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`325(d) is designed to prevent.
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`For the foregoing reasons, the Board should deny the Petition under
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`35 U.S.C. § 325(d).
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`III. Overview of the ’309 Patent.
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`In 2004, Chestnut Hill Sound Inc. (“Patent Owner”) began developing a
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`system for the playback of digital audio content. That effort culminated in the
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`launch of an iPod audio system called GeorgeTM, which achieved widespread
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`distribution through Petitioner’s stores and other retailers like Best Buy. It even
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`won a Best of Show award at the Macworld tradeshow, a “Play of the Year” award
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`from Macworld Magazine, and PC Magazine’s Editor’s Choice Award, all shortly
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`after its launch in 2007. (Ex. 2004 (Chestnut Hill Sound Inc. v. Apple Inc., No.
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`15-261-RGA (D. Del) (Exs.1, 2 and 4 to D.I. 9, Opening Brief in Support of
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`Motion for Preliminary Injunction)).4 Patent Owner’s U.S. Patent No. 8,090,309
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`4 In this related litigation, Patent Owner has asserted that Petitioner used pre-launch
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`meetings with Patent Owner to learn the Patent Owner’s ideas for making a media
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`player more desirable for users, and then misappropriated Patent Owner’s invention to
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`create its own competing product. Petitioner denies this allegation.
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`(“the ’309 Patent”, Ex. 1001) is based on research and development from the
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`GeorgeTM project.
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`The ’309 Patent is directed to a media device useful in a number of ways to
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`control a variety of media sources. Two of these operating modes5 are the subject
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`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-
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`38). The claimed modes offer faster and more flexible access to media through a
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`device that operates in one mode as a media player, allowing a user to select and
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`play co-housed or directly connected media and operates in a second mode as a
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`remote controller allowing a user to select and play remote media. (See e.g., id. at
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`2:2-22, 17:57-61, 17:31-36, 8:33-37).
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`A.
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`The “first mode.”
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`In the first mode, the media device operates as a media player, enabling
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`users to access media from a source that is cohoused with or directly connected to
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`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;
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`see also id. at 14:61-67). In this first mode, control is achieved through a display
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`5 The specification uses the word “mode” in connection with a control unit attached
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`or detached from a base unit. (See e.g., Ex. 1001 at 8:58-9:8). Detachability is not
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`the focus of the claims.
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`of the media device that presents media metadata, information that describes the
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`selectable media available for playback. (Id.; see also id. at 9:24-32). Using this
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`first mode, users can view information about the media cohoused with or directly
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`connected to the media device to select media to be played. (Id.). The media
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`device responds to such a user selection with an indication of what was selected
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`and plays the selected media on the media device. (Id.).
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`B.
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`The “second mode.”
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`In the second mode, the media device operates as a remote controller,
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`enabling users to play music in multiple locations throughout their house, and to
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`control that playback from multiple locations. (See e.g., id. at 4:3-8). This control
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`is implemented by connecting the media device to a remote media source (e.g., a
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`personal computer with an iTunes library) via a network interface, such as a WiFi
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`connection. (Id. at Figs. 1, 2a, 2b, 13, 3:21-31, 8:11-34, 8:37-42, 1:59-63). Over
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`this connection to the remote media source, the media device can transmit and
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`receive messages, including a transmitted request for media metadata that
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`describes the selectable media available at the remote media source. (See e.g., id.
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`at 18:7-11, 17:31-46). The media device receives, from the remote media source,
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`media metadata indicating the media files and media streams that are available at
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`the remote media source. (See e.g., id. at 18:7-11, 17:36-46). Using this media
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`metadata, the media device displays to the user the options for media available at
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`the remote media source, permitting the user to view and select media available at
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`the remote media source. (See e.g., id. at 17:49-55).
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`In response to a user selection from the displayed media metadata, the media
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`device generates a signal and sends a corresponding signal that includes the
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`selected media metadata to the remote media source, relaying the user’s selection
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`to the remote media source. (See e.g., id. at 17:50-55, 18:27-33). The remote
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`media source responds to that signal sent in this remote controller mode by both
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`accessing the identified media and sending the accessed media (the media that was
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`identified by the user selection) to an output device separate from the media device
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`for playback. (See e.g., id. at 18:27-33; 8:11-42).
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`IV. Claim Interpretation.
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`The Petition offers no express claim interpretations. Instead, the Petition
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`implicitly interprets the claims by the way it attempts to map the prior art
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`references to the claims. The Petition provides no support nor any explanation for
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`the implicit claim interpretations it applies.
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`A number of the implicit claim interpretations applied in the Petition are
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`incorrect, as discussed below. Because the Petition does not show that the prior art
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`discloses the correct interpretations, the Petition should be denied. See Apple Inc.
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`v. Zilabs Inc., IPR2015-00964, slip op. at 11-12 (Sept. 17, 2015) (Paper 13)
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`(denying institution because Petitioner’s arguments were inconsistent with proper
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`claim construction); Zerto Inc. v. EMC Isr. Dev. Ctr., Ltd., IPR2013-00458, slip
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`op. at 17-19 (Jan. 16, 2014) (Paper 12) (denying institution because “Petitioner
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`does not direct us to a disclosure” addressing the correct interpretation); Jiawei
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`Tech. (HK) Ltd. v. Richmond, IPR2014-00937, slip op. at 2 (Feb. 6, 2015) (Paper
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`24) (denying rehearing following denial of institution where Petitioner “fail[ed] to
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`offer a construction and analysis of a term critical to understanding the scope of
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`[the] claims”).
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`A.
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`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.
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`Claim 1 of the ’309 Patent requires, in the second mode, that the remote
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`media source respond to a media device signal that includes media metadata
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`identifying at least one media file or media stream to be selected and played, by
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`both (1) accessing the media associated with the identified media metadata and
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`(2) sending that identified media to a media output device separate from the
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`media device. This unmistakably provides that the remote media source responds
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`to the media device by first accessing and then sending the selected media file or
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`media stream to a separate output device. In this way, Claim 1 provisions the
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`second mode of operation.
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`In contrast, the Petition treats this limitation as requiring the media device
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`(as opposed to the required remote media source) send the selected media file or
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`media stream to the output device. (See e.g., Pet. at 53 (“The media device sends
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`the identified media file or stream to a media output device separate from the
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`media . . . .””), 21 (“[T]he media device outputs the audio media stream to the
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`‘audio playback system,’ which is a ‘media output device separate from the media
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`device.’”)). Moreover, the Petition treats the sending of the media file to the
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`output device as disconnected from, and not in response to, the media device signal
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`identifying to the remote media source which media file is to be accessed and sent.
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`(See id.). Yet, Petitioner cites no support in the specification for its interpretation.
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`Petitioner may have arrived at its position by attaching unwarranted
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`significance to a line break in claim 1 (though this is not clear as Petitioner chose
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`not to explain why it interpreted the claims as it did). Focusing on the line break
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`erroneously uncouples the actions of accessing and sending—which are both
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`required of the m