Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: January 13, 2016
`
`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 8,090,309 B2
`_______________
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`CHS Ex. 2011
`Apple v. CHS IPR2016-00794
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: January 13, 2016
`
`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 8,090,309 B2
`_______________
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`CHS Ex. 2011
`Apple v. CHS IPR2016-00794
`
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`IPR2015-01463
`Patent 8,090,309 B2
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`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`an inter partes review of claims 1–14 of U.S. Patent No. 8,090,309 B2
`(Ex. 1001, “the ’309 patent”). Chestnut Hill Sound Inc. (“Patent Owner”)
`filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may be instituted
`only if “the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record we find that Petitioner has
`not established a reasonable likelihood of prevailing with respect to at least
`one challenged claim of the ’309 patent. Accordingly, we deny the Petition
`and decline to institute an inter partes review of the ’309 patent.
`
`A. Related Matter
`The ’309 patent is the subject of Chestnut Hill Sound, Inc. v. Apple
`Inc., Civil Action No. 1:15-cv-00261 (D. Del). Pet. 1; Paper 4, 1.
`In addition, a patent resulting from the same application(s) that led to
`the ’309 patent is involved in IPR2015-01464 and IPR2015-01465. Paper 4,
`1. Lastly, Patent Owner asserts that U.S. Application No. 14/243,915 stems
`from the same application(s) that led to the ’309 patent. Id.
`B. The ’309 Patent
`The ’309 patent describes an audio entertainment system. Figures 1
`and 2B, reproduced below, illustrate an example:
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`Figure 1 is a block diagram of an entertainment system. Ex. 1001, 6:33–34,
`7:34–36.
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`Figure 2B is a pictorial view of the entertainment system. Id. at 5:37–39.
`Entertainment system 100 includes base unit (table unit) 102 and
`control sub-assembly 104. Id. at 3:21–32, 7:34–37. Base unit 102 includes
`audio amplifier 106, loudspeakers 108, and housing 112. Id. at 7:37–40. It
`also may include tuner 114, and/or audio signal source interface sub-
`assembly 116 connectable to one or more detachable devices 118 (Auxiliary
`Source Modules, or “ASMs”). Id. at 7:41–43. Detachable device 118 is
`preferably a digitally controlled device (e.g., “an iPod”) that supplies an
`audio signal, via the interface sub-assembly 116, to audio amplifier 106.
`Id. at 7:47–57. When the ASM is plugged into the interface sub-assembly, it
`provides audio signals to the audio amplifier sub-assembly under the control
`of control sub-assembly 104. Id. at 7:58–60.
`Control sub-assembly 104 may include a detachable control unit 104A
`and an interface 104B, in the base unit. Id. at 7:44–46. Detachable control
`unit 104A preferably includes display device 132, input devices 134A–
`134N, wireless transceiver 136, docking interface port 138, and batteries, in
`a housing or stand 140 designed to mate with base unit 102. Id. at 8:45–49.
`In a first mode (“docked mode”), control unit 104A is electrically connected
`to the audio amplifier and signal source electronics sub-assembly via a set of
`connectors or terminals 142A, 142B, and its wireless transceiver is disabled.
`Id. at 8:58–62. In a second mode (“undocked mode”), the control is
`separated from the base unit and the electrical connectors 142A, 142B are
`broken. Id. at 9:2–5.
`The ’309 patent specification explains that “the system may control a
`remote device (personal computer, etc.) which can then act as a server of
`music and other files to the base unit . . . or as a streaming audio source.”
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`Id. at 8:11–15. In addition, the remote device “may serve up content” from
`an attached portable music player (e.g., such as an iPod device). Id. at 8:25–
`26. The specification further explains that “the remote device and/or its
`music source may be controlled via a local control unit such as a detachable
`control unit 104A.” Id. at 8:27–29. “Thus, for example, a user may be in
`one room of a house with control unit 104A and control the delivery of
`music from a source in that room, in another room (directly via wireless
`operation or via a network), or even from a source external to the house.”
`Id. at 8:29–33. To facilitate operation of the control unit and the selection of
`music to be played, the control unit may operate upon metadata which serves
`to identify music selections by their source. Id. at 8:33–37.
`C. Illustrative Claims
`Petitioner challenges claims 1–14 of the ’309 patent. Claims 1 and 9
`are independent, and claims 2–8 and 10–14 depend, respectively, therefrom.
`Claim 1 is illustrative of the claimed subject matter and recites the
`following:
`
`
`A method of using a media device operable in first and
`1.
`second modes, the first mode comprising operation as a system
`for accessing a media source co-housed with or directly
`connected to said media device, the source configured to stream
`media files or media streams for output by said media device,
`and the second mode comprising operation of the media device
`as a remote controller system for controlling over a network a
`media source remote from the media device, comprising:
`operating the media device in the first mode, wherein when
`operated in the first mode, the media device performs
`operations of
`displaying user-selectable media metadata on a display of
`the media device, at least one media file or stream
`being associated with each displayed media metadata
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`and being available from the media source for playing
`by said media device,
`receiving from a user a selection of media metadata from
`among the displayed media metadata, and indicating
`that said media device should play a media file or
`media stream associated with the selected media
`metadata, and
`outputting the selected media file or media stream; and
`operating the media device in a second mode, wherein when
`operated in the second mode, the media device performs
`operations of
`connecting the media device with the media source, via a
`network interface,
`transmitting a request, using the network interface, for
`media metadata from the media device to the media
`source,
`receiving at the media device, using the network
`interface, media metadata from the remote media
`source, the media metadata indicating at least one
`media file or media stream available from the media
`source,
`displaying at least one received media metadata on a
`media device display,
`generating a signal in response to a user selection of at
`least one said displayed media metadata, and the
`media device sending a corresponding signal from the
`network interface to the media source, wherein the
`corresponding signal includes at least one media file
`or media stream metadata identifying at least one
`media file or media stream available from the media
`source that, in turn, responds to the corresponding
`signal by accessing the identified media file or media
`stream and once accessed, and
`sending the identified media file or media stream to a
`media output device separate from the media device.
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`D. References Relied Upon
`Petitioner relies upon the following prior art references:
`U.S. Publication No. 2002/0002039 A1, pub. Jan. 3, 2002 (Ex. 1005,
`“Qureshey”); and
`U.S. Patent No. 6,563,769 B1, iss. May 13, 2003 (Ex. 1006, “Van Der
`Meulen” or “VDM”).
`Petitioner also supports its petition with the testimony of Melvin
`Mercer, Ph.D. (Ex. 1003, “Mercer Decl.”).
`E. The Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 3):
`Reference(s)
`Basis
`Qureshey
`§ 102
`
`Claim(s) Challenged
`1, 3–9, 12–14
`
`Qureshey
`
`VDM
`
`VDM
`
`
`
`§ 103
`
`§ 102
`
`§ 103
`
`2, 10, 11
`
`1, 3, 5–9, 13, 14
`
`2, 4, 10–12
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`Petitioner does not propose any claim constructions. Pet. 5. Patent
`Owner proposes constructions for the following claim language recited in
`claim 1:
`the media source that, in turn, responds to the corresponding
`signal by accessing the identified media file or media stream
`and once accessed, and sending the identified media file or
`media stream to a media output device separate from the media
`device
`
`Prelim. Resp. 7–12. We note that the formatting of the claim language in the
`patent is different. Ex. 1001, 21:16–21. Also, Patent Owner puts forth the
`claim language at issue with claim language missing. Prelim. Resp. 7.
`Patent Owner argues that this claim language “unmistakably provides
`that the remote media source responds to the media device by first accessing
`and then sending the selected media file or media stream to a separate output
`device.” Id. at 7–8. According to Patent Owner, the recited “sending” at
`column 21, line 21, completes the phrase “‘the media source that, in turn,
`responds to the corresponding signal by accessing the identified media file
`. . . and sending the identified media file . . . to a media output device
`separate from the media device.’” Id. at 9–10 (emphasis omitted). Patent
`Owner further argues that its proposed interpretation is consistent with claim
`language because: (1) it gives the phrase “and once accessed” meaning
`because this phrase indicates when the source sends the identified media file
`or stream; (2) it would be inconsistent to interpret claim 1 as requiring the
`media device to send the media to an output device because this section of
`the claim relates to the remote device acting as “a remote controller system
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`for controlling over a network a media source remote from the media
`device,” and; (3) there is no reasonable interpretation for sending an
`“identified media file or media stream” other than the media file or stream
`the metadata identifies as being “available from the media source.” Id. at
`10. Patent Owner also contends that its proposed construction is consistent
`with the Specification, which according to Patent Owner, “explains that
`media metadata is used to control selection and playback of media at the
`remote output device.” Id. at 10 (citing Ex. 1001, 18:3–6). Thus, Patent
`Owner proposes that “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.” Id. at 11.
`We are not persuaded that the claim language limits performance of
`the recited “sending the identified media file or media stream to a media
`output device” step to the media source, as urged by Patent Owner. As an
`initial matter, claim 1 specifies that “when operated in the second mode, the
`media device performs operations of connecting . . . transmitting . . .
`receiving . . . displaying . . . generating . . . , and sending” (emphasis added).
`Moreover, contrary to Patent Owner’s contention, the claim phrase “and
`once accessed” also has meaning if the media device performs the “sending”
`of the media file or stream because the phrase merely indicates when the
`media file or stream is sent (i.e., after the media file or media stream is
`accessed by the media source). In addition, as Patent Owner acknowledges
`(Prelim. Resp. 10), claim 1 indicates that in the second mode the media
`device operates “as a remote controller system for controlling over a
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`network a media source remote from the media device” (i.e., the remote
`media source).
`
`Accordingly, based on the claim language and the ’309 patent
`specification, we determine under the broadest reasonable interpretation the
`“sending” step may be performed either by the “remote” media source or the
`claimed media device, after the media device obtains the media file from the
`remote media source.
`
`B. Asserted Grounds of Unpatentability
`Petitioner asserts that Qureshey anticipates claims 1, 3–9, and 12–14
`and renders obvious claims 2, 10, and 11. Pet. 3.
`1. Overview of Qureshey
`Qureshey describes a network-enabled “jukebox” for composing and
`listening to playlists of audio content. Ex. 1005, Abstract. Several devices,
`including a PC connected to a server and one or more network-enabled
`audio devices, can be networked in an Internet Personal Audio Network
`(“IPAN”). Id. at Abstract, ¶¶ 46, 146, 124. Figure 15, reproduced below,
`illustrates an example:
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`Figure 15 is a block diagram illustrating a configuration among several
`network-enabled devices. Id. ¶ 46.
`A user accesses server site 1104 with PC 1508 over a network
`connection. Id. ¶ 151. The user composes playlists from the server site
`using IPAN software 1433 and can assign playlists to other devices on the
`network, such as device 1510 and device 1520. Id. The playlists are stored
`on server site 1104 and include URLs indicating the locations from which
`the audio files associated with the song titles in the playlist can be
`downloaded. Id. When device 1510, for example, connects to server site
`1104, the server site assigns a playlist to the device. Id. Device 1510 then
`proceeds to download the songs from the sites specified by the URLs and
`stores the songs in disk space 1512. Id.
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`If all the songs on the playlist assigned to device 1510 already are
`stored on device 1510, the songs are catalogued as being present. Id. at
`¶ 174. Otherwise, server site IPAN software 1433 forms a list of songs not
`present on device 1510 and seeks to complete the list by sending to device
`1510 the URLs of the songs stored on device 1520 or another device. Id.
`Qureshey also states that the IPAN can include a network connection
`between device 1510 and device 1520, for example a home network, “so that
`the first device 1510 and the second device 1520 can have audio files
`downloaded from the first device 1510 to the second device 1520 almost
`instantaneously after the assignment of an audio file to the device 1510”
`without the need to connect to the Internet. Id. at ¶ 179.
`a. Claims 1 and 9
`Independent claim 1, with the claim language at issue emphasized,
`recites:
`when operated in the second mode, the media device performs
`operations of
`
`. . .
`generating a signal in response to a user selection of at least one
`said displayed media metadata, and the media device sending a
`corresponding signal from the network interface to the media
`source, wherein the corresponding signal includes at least one
`media file or media stream metadata identifying at least one
`media file or media stream available from the media source
`that, in turn, responds to the corresponding signal by accessing
`the identified media file or media stream and once accessed,
`and
`sending the identified media file or media stream to a media output
`device separate from the media device.
`
`As discussed above, we construe this language such that the “sending”
`may be performed either by the “remote” media source or the claimed
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`media device, after the media device obtains the media file from the
`remote media source.
`
`
`Petitioner identifies Qureshey’s PC as the claimed “media
`device,” the network-enabled audio devices as the claimed “media
`output device,” and the Internet as the claimed “remote media
`source.” See, e.g., Pet 10–11, 22. It is not clear whether Petitioner
`argues that Qureshey’s PC or an Internet source performs the
`“sending” step. For example, Petitioner argues that Qureshey
`discloses the following:
`The user’s assignment of a playlist to a network-enabled audio
`device separate from the PC causes the device to “download the
`files” in the playlist from the IPAN server “the next time the”
`device connects to the network. Id. at ¶ 0175.
`
`
`to be
`[in an assigned playlist] need
`“If songs
`downloaded’ by a network enabled audio device to which a
`playlist has been assigned, “the server site IPAN 1433 forms a
`list of remaining songs” and “compares the list of remaining
`songs to its records of the songs present on the” PC. See
`Qureshey at ¶ 0174, FIG. 19B; Dec. at 104.
`
`Pet. 20 (emphasis added).
`As Patent Owner argues (Prelim. Resp. 19–20), Qureshey discloses
`that after a playlist is assigned and downloaded to first device 1510, the
`process determines if songs need to be downloaded because they are not
`already present on first device 1510. Ex. 1005, ¶ 174. Contrary to
`Petitioner’s assertion (Pet. 20), however, if songs need to be downloaded,
`the server site PAN software 1433 forms a list of remaining songs and
`compares the list to “its records of the songs present on [] device 1520,” not
`on the PC, “to see if [] device 1520 has some of the necessary songs to
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`complete the playlist formation.” Ex. 1005, ¶ 174 (emphasis added).
`Petitioner fails to persuasively explain how Qureshey’s description of
`obtaining songs from device 1520 discloses obtaining the songs from the PC
`instead. Moreover, referring to paragraph 179, Petitioner implies that if the
`PC has any of the remaining songs that need to be downloaded to first
`device 1510, the PC enables the network-enabled audio device to have the
`audio files downloaded almost instantaneously after the assignment of an
`audio file. Pet. 20. Specifically, Petitioner states that “‘[i]f the PC has any
`of the remaining songs, the URLs of those songs are provided to the
`network-enabled audio device by the IPAN server, enabling the network-
`enabled audio device to ‘have audio files downloaded [] almost
`instantaneously after the assignment of an audio file [].’” Id. (citing
`Ex. 1005, ¶ 179, Fig. 19B). Qureshey, at paragraph 179, however, states
`that “[i]n one embodiment, the IPAN 1100 includes a network connection so
`that [] first device 1510 and [] second device 1520 can have audio files
`downloaded from [] first device 1510 to [] second device 1520 almost
`instantaneously after the assignment of an audio file to [] device 1510.” Ex.
`1005, ¶ 179 (emphasis added). Qureshey does not mention involvement by
`the PC at the disclosure cited by Petitioner, and Petitioner fails to
`persuasively explain how Qureshey’s description of instantaneously
`downloading audio files from device 1510 discloses instantaneously
`downloading audio files from the PC instead.
`Petitioner further asserts:
`As explained above at [1.5.6], the PC (the media device)
`assigns a playlist to a network-enabled audio device (media
`output device) by interacting with the IPAN server, which
`instructs the audio device to either play songs from its local
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`storage, or download audio files from other network-enabled
`audio devices on the network.
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`Pet. 22. Petitioner fails to persuasively explain how Qureshey’s PC
`assigning a playlist to a network-enabled audio device discloses the
`PC or an Internet source sending media content to the audio device.
`In particular, Petitioner does not explain sufficiently how Qureshey’s
`alleged description of the PC instructing the audio device to download
`audio files from other network-enabled audio devices discloses the PC
`or an Internet source “sending the identified media file or media
`stream to a media output device.” See Net MoneyIN, Inc. v. VeriSign,
`Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (stating that to establish
`anticipation, each limitation in a claim must be found in a single prior
`art reference, arranged as recited in the claim). Petitioner also argues
`that:
`
`A file downloaded from the Internet and assigned to the audio
`device is thus downloaded from the Internet (the media source)
`to the PC (the media device), and then to the separate audio
`device (the media output device) for outputting. See Qureshey
`at FIGS. 17I, 19B; Dec. at 108, 105.
`
`Pet. 22. Petitioner, however, does not sufficiently explain or provide
`argument as to how cited figures 17I and 19B disclose the “sending” media
`file or media stream limitation. Id. 1
`
`
`1 We note that we have considered the testimony of Dr. Mercer cited by
`Petitioner throughout its analysis of this claim limitation. See, e.g., Ex. 1003
`¶¶ 105, 108. This testimony, however, does little more than repeat (mostly
`verbatim) the arguments presented in the Petition, without citation to
`additional evidence or provision of additional meaningful explanation.
`Thus, we accord Dr. Mercer’s testimony little weight.
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`Thus, on this record, Petitioner has not persuaded us that Qureshey
`discloses the claimed “sending the identified media file or media stream to a
`media output device separate from the media device” of claim 1.
`
`With respect to claim 9, a Certificate of Correction was filed that
`changed the language “and once accessed, and sending” to “and once
`accessed, sends.” Thus, claim 9 recites “the remote media source that, in
`turn, responds . . . by accessing . . . and once accessed, sends the identified
`media file to a media output device separate from the media device.” In any
`event, Petitioner refers to the same evidence and argument provided for
`claim 1. Pet. 26. Because we determine this evidence and argument is
`unpersuasive, Petitioner also has not persuaded us that Qureshey discloses
`the claimed “sends the identified media file to a media output device
`separate from the media device” of claim 9.
`b. Remaining Claims
`The remaining challenged claims depend from claims 1 and 9.
`Petitioner’s contentions as to the dependent claims do not present argument
`or evidence overcoming the deficiencies noted above as to claims 1 and 9.
`Pet. 22–25, 27–29. Accordingly, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to:
`Claims 1, 3–9, and 12–14 as anticipated by Qureshey; and
`Claims 2, 10, and 11 as obvious over Qureshey.
`2. VDM
`VDM describes a “virtual jukebox,” connected to a network and
`including storage media and playback devices, that provides a system for
`collecting, cataloging, archiving, and retrieving music. Ex. 1006, Abstract.
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`An integrated system, such as shown in Figures 2A and 2B
`(reproduced below), is a single device that has both storage and playback
`capabilities. Id. at 3:22–27.
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`Figures 2A and 2B are front and back views, respectively, of a collection
`management system. Id. at 2:40–41. In figure 2A, CD player 130 is shown
`as part of integrated system 200. Id. at 3:52–53. Control manager 150 (not
`pictured), using conventional disk operating system techniques, can store
`recordings at directly addressable storage locations on hard disk drive 110
`located in one of the bays 210 shown in Figure 2B. Id. at 4:9–16. A user
`interacts with control manager 150 using LCD touch display device 250.
`Id. at 3:65–67. Interconnections 220 can be used to connect to additional
`devices. Id. at 54–55.
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`Entry and retrieval of media from a catalog is illustrated in Figure 4,
`reproduced below:
`
`Figure 4 is a block diagram and flow chart of a collection management
`system. Id. at 3:45–46. Catalog 300 contains information about media
`stored, inter alia, in storage devices 110, 120. Id. at 4:26–36. Information is
`entered into catalog 300 by cataloger 350 and retrieved from catalog 300 by
`search engine 360 and retriever 370. Id. at 4:62–64. Cataloger 350 and
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`retriever 370, together, correspond to collection manager 150, shown in
`Figure 1. Id. at 4:64–66.
`The operation of cataloger 350 to add media to an archive is described
`with respect to content source 310, which may be playback device 130
`(shown in Figure 1), integrated with the system of Figure 2 or connected via
`external connection 220. Id. at 5:3–13. When content source 310 is played,
`receiver 320 receives material 311 (e.g., recorded audio information) and
`identification information from content source 310 or another information
`source 340 (e.g., a user can enter text input about the material or an Internet
`site can provide information about the material). Id. at 5:15–32. Cataloger
`350 receives the identification of the material and any other information
`(e.g., identification 301 and locator 302) and catalogs it in catalog 300.
`Id. at 5:35–44, 7:23–51. The media content 322 itself is processed and
`stored in collection 390. Id. In an “archive while playing back” or “auto-
`archive” mode, the content 322 is sent contemporaneously to rendering
`device 380 for playback. Id. at 6:17–31, 7:66–8:3.
`a. Claims 1 and 9
`Independent claim 1, with the claim language at issue emphasized,
`recites:
`when operated in the second mode, the media device performs
`operations of
`
`. . .
`transmitting a request, using the network interface, for media
`metadata from the media device to the media source
`. . .
`
`Independent 9 includes similar claim language. Petitioner identifies
`the “collection management system 200,” illustrated in Figure 2, as
`the claimed “media device” (Pet. 35), and “media sources and other
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`IPR2015-01463
`Patent 8,090,309 B2
`devices that are distributed throughout a network,” as the claimed
`“media source” (Pet. 35–36).
`For the “transmitting a request” limitation, Petitioner asserts
`that VDM’s receiver is operable to request metadata from one or more
`media sources. Specifically, Petitioner argues that:
`As part of
`this process,
`the media device [“collection
`management system 200”] may use interconnection means 220
`to transmit a request for the media metadata from a remote
`media source (e.g., archive 110, disk/store 120, playback device
`130, and/or content source 310). See VDM at 3:9–13 4:26–
`5:34, FIGS. 3, 4, and 5; Dec. at 42, 22. I
`In more detail, VDM’s media device includes a receiver
`320 module operable to request media content and metadata
`(collectively, material 311) from one or more media sources
`(e.g., content source 310) over the network (e.g., via the
`network connected at interconnection means 220), to provide
`the received content to a rendering device for output (e.g.,
`rendering device 380), and to provide the received metadata to
`an information source 340 and cataloger 350 for cataloging.
`See VDM at claim 1, 3:52–55, 5:9–65, 7:66–67, FIG. 4; Dec. at
`42, 43. The receiver 320, e.g., “receives material 311 from the
`content source 310, the content of the material being dependent
`upon the capabilities of the content source 310.” VDM at 5:5–
`17. If, e.g., “the content source is a CD or DVD, the material
`311 includes the unique identifier that is associated with
`commercial CDs and DVDs” used to look up information about
`the tracks of that disk. VDM at 5:24–34 (emphasis added).
`The unique identifier, identification information 321, by
`virtue of identifying a particular disk and the associated tracks
`of that disk, is therefore media metadata requested from the
`media source using the network interface 220.
`
`Pet. 43 (emphasis added).
`As Patent Owner argues (Prelim. Resp. 51), however, the cited
`disclosure does not describe any request being transmitted from receiver 320
`
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`IPR2015-01463
`Patent 8,090,309 B2
`to a media source. VDM only describes the “receiver” as receiving
`information from content source 310 and sending information to processor
`330, information source 340, cataloger 350, and rendering device 380. For
`example, VDM states that “receiver 320 receives material 311 from []
`content source 310,” such as the recorded audio information or the unique
`identifier that is associated with commercial CDs and DVDs. Ex. 1006,
`5:14–26. The receiver can provide identification 321 to information source
`340 to facilitate the determination of other information related to material
`311. Id. at 5:26–29; 5:38–39, Fig. 4; see Prelim. Resp. 51 (arguing that
`Figure 4 “reflects the difference between the receiver, which merely
`receives, and the retriever, which actively retrieves.”). Petitioner fails to
`persuasively explain how VDM discloses receiver 320 transmits a request
`for metadata to one or more media sources, such as content source 310.
`Thus, on this record, Petitioner has not persuaded us that VDM
`discloses the claimed “transmitting a request, using the network
`interface, for media metadata from the media device to the media
`source” of claim 1. With respect to the similar limitation of claim 9,
`Petitioner references the same evidence and argument relied upon for
`claim 1. Pet. 54. Thus, on this record, Petitioner has not persuaded us
`that VDM discloses the similar limitation of claim 9.
`b. Remaining Claims
`The remaining challenged claims depend from claims 1 and 9.
`Petitioner’s contentions as to the dependent claims do not present argument
`or evidence overcoming the deficiencies noted above as to claims 1 and 9.
`Pet. 57–60. Accordingly, Petitioner has not demonstrated a reasonable
`likelihood that it would prevail with respect to:
`
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`IPR2015-01463
`Patent 8,090,309 B2
`Claims 1, 3, 5–9, 13, and 14 as anticipated by VDM; and
`Claims 2, 4, 10–12 as obvious over VDM and wireless networking.
`
`
`
`III. CONCLUSION
`We decline to institute an inter partes review of claims 1–14.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied.
`FURTHER ORDERED that no inter partes review is instituted.
`
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`IPR2015-01463
`Patent 8,090,309 B2
`For PETITIONER:
`W. Karl Renner
`Joshua A. Griswold
`FISH & RICHARDSON P.C.
`IPR39521-0016IP1@fr.com
`
`
`For PATENT OWNER:
`Edmund J. Walsh
`Gerald B. Hrycyszyn
`WOLF, GREENFIELD & SACKS, P.C.
`EWalsh-PTAB@wolfgreenfield.com
`GHrycyszyn-PTAB@wolfgreenfield.com
`
`
`23
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