Trials@uspto.gov |
`571-272-7822
`
`Paper 7
`Entered: November 10, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
`
`V.
`
`BLACK HILLS MEDIA,LLC,
`Patent Owner.
`
`Case IPR2014-00733
`Patent 8,458,356 B2
`
`Before BRIANJ. McNAMARA, PETERP. CHEN,and
`FRANCESL. IPPOLITO, Administrative Patent Judges.
`
`CHEN,Administrative Patent Judge.
`
`DECISION
`.
`Institution of Inter Partes Review
`37 C.F-R. § 42.108
`
`
`571-272-7822
`
`Paper 7
`Entered: November 10, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
`
`V.
`
`BLACK HILLS MEDIA,LLC,
`Patent Owner.
`
`Case IPR2014-00733
`Patent 8,458,356 B2
`
`Before BRIANJ. McNAMARA, PETERP. CHEN,and
`FRANCESL. IPPOLITO, Administrative Patent Judges.
`
`CHEN,Administrative Patent Judge.
`
`DECISION
`.
`Institution of Inter Partes Review
`37 C.F-R. § 42.108
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`I.
`
`INTRODUCTION
`
`’ Yamaha Corporation of America (“Petitioner”) filed a Petition requesting an
`inter partes review ofclaims 1, 23, and 28 of U.S. Patent No.8,458,356 B2
`(Ex. 1001, “the ’356 patent”). Paper 1 (‘Pet.”). Black Hills Media, LLC (‘Patent
`Owner”) filed a preliminary response. Paper 6 (“Prelim. Resp.”).. Wehave
`jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides as follows:
`
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that
`the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challengedin the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we are
`
`persuaded the information presented by Petitioner has showna reasonable
`
`likelihood that Petitioner would prevail in showing the unpatentability of claims 1,
`
`23, and 28 of the ’356 patent. Accordingly, we grant the Petition and institute an
`
`inter partes review ofthese claims.
`
`A. Related Proceedings
`
`On May22, 2012, the Patent Ownerfiled suit against Petitioner in the U.S.
`District Court for the District of Delaware, alleging infringement of several
`patents. Black Hills Media, LLC v. Yamaha Corp. ofAm., No.’ 1:12-cv-00635-
`
`RGA(D.Del.). The case was subsequently transferred to the Central District of
`
`California, amended to include allegations of infringement of the ’356 patent,
`2
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2.
`
`_ dismissedfor lack ofsubject matterjurisdiction, and thenrefiled, as No. 8:14-cv-
`00101 (C.D. Cal.). Pet. 3-4.
`The °356 patent is a continuation ofthe application that issued as U.S.Patent
`No.8,230,099, which is the subject ofpending cases IPR2013-00597 and
`IPR2014-00711.
`_
`|
`
`B. The ’356 Patent
`The subject matter ofthe challenged claims ofthe ’356 patent relates
`generally to methods and devicesfor sharing playlists, and in particular, to a
`method for presenting a playlist on a wireless handheld remote control for
`selection for playback on a media player device associated with, but separate from,
`
`the remote control. Pet. 5; Ex. 1001, 3:9-18, 9:17—26.
`
`Figure 2 of the °356 patent is reproduced below.
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`413
`
`14
`
`15
`
`16
`
`J REMOTE | DEDICATED
`-|CONTROL
`
`MEOIA PLAYER
`
`v7
`
`18
`
`FIG. 2
`
`Figure 2 depicts an embodimentofthe invention with a playlist communicated
`
`from server 11 to remote control 18 via Internet 12. Ex. 1001, 9:17-—2 1. After the
`
`playlist has been communicated to the remote control, the playlist may be
`
`displayed on the remote control and used to choose whichselection is to be played
`
`by dedicated media player 17. Jd. at 9:22-26. The playlist may be communicated
`further to media player 17. /d. at 9:31-33. “Thus, playlists may be storedin,
`
`displayed upon, and used to makeselections from either dedicated media player
`
`17, remote control 18, or both.” Jd. at 9:38-40. As summarized byPetitioner, the
`
`4
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`
`
`IPR2014-00733 -
`Patent 8,458,356 B2
`
`display of the playlist on the remote control allows the user to select a song to be
`played on the media player without physically making a selection at the media
`
`player. Pet. 6 (citing Ex. 1001, 9:26-40).
`
`C. Illustrative Claim
`
`Claims 1, 23, and 28 are the subject of the Petition. Claims 1 and 23 are ©
`
`independent claims. Independentclaim 1 is reproduced as follows:
`
`_
`
`1.
`
`A method comprising:
`receiving, at a first media player device, a playlist from a
`remote source, the playlist comprising at least one item
`identifier that identifies at least one item;
`communicating the playlist from the first media player device to a
`wireless handheld remote control associated with and separate
`from the media player device;
`receiving, from the wireless handheld remotecontrol, the at least one
`item identifier; and
`rendering, by the first media player device, the at least one item.
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the following fourprior art references.
`
`
`
`pees
`
`
`
`
`
`5
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`E. The Asserted Grounds
`
`Petitioner contends the challenged claims are unpatentable based on four
`
`grounds. Pet. 12-13.
`
`
`
`
`Reference(s)|Basis Claims Challenged
`
`
`
`
`
`
`
`
`
`Berman
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patentare interpreted
`
`according to their broadest reasonableconstruction in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a “heavy
`
`presumption”that a claim term carries its ordinary and customary meaning. CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However,
`a “claim term will not receive its ordinary meaningifthe patentee acted as his own
`lexicographer andclearly set forth a definition of the disputed claim term in either
`
`the specification or prosecution history.” Id.
`
`.
`
`Petitioner correctly states that we previously construed “playlist,” “remote
`source,” and “media player device” in IPR2013-00597, where weinstituted an
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`inter partes review on the ’099 patent (Paper 15, 8-10). The ’356 patentis a
`
`continuation of the application that issued as the ’099 patent, and the two patents
`
`have essentially identical specifications.
`- The Patent Ownerin its Preliminary Response andits accompanying
`exhibits asserts, as it did in IPR2013-00597,that “playlist” means“a list
`
`referencing media items arranged to be played in a sequence.” We have reviewed
`the Preliminary Response and accompanying exhibits, and determinethat for
`purposesofthis Decision, the construction of “playlist” from IPR2013-00597is
`appropriate as the broadest reasonable construction, such that “playlist” is ‘“‘a list of
`media selections.” In addition, Patent Ownerstates that it does not contest the
`
`constructions from IPR2013-00597 of “remote source,” which we construed
`
`therein as “a source ofa playlist that is separate from a remote control,” and
`“media player device,” which we construed therein as “a device capable of playing
`audio or video or a combination of both.” Prelim. Resp. 17; IPR2013-00597,
`
`Paper 15, 9-10. For purposes of this Decision, those constructions are the broadest
`
`reasonable constructions of those two terms.
`
`Petitioner also submits a proposed construction for the claim term, “item
`
`identifier.” The term “item identifier” does not appearin the 356 specification
`
`except in the claims, for example, claim 1 (“the playlist comprising at least one
`
`item identifier that identifies at least one item”). Petitioner submits that the
`
`broadest reasonable constructionis, “any information that in any manneridentifiés
`
`an item ina playlist.” Pet. 11-12. Patent Ownerproposesthat “item identifier”is
`“a reference to a media item ina playlist.” Prelim. Resp. 19-20. We determine
`that for purposes of this Decision, “a reference to” is narrowerthan “any
`
`7
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`
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`IPR2014-00733
`Patent 8,458,356 B2
`
`information that in any manner”andthat the broadest reasonable constructionis,
`
`“any information that in any manneridentifies an item in aplaylist.”
`
`Finally, Patent Owner proposesthat the term “wireless handheld remote
`
`control whichis associated with and separate from the media player device” means
`
`the remote contro] must function independently of the media player device. As
`Patent Owner acknowledges, however, its proposed construction requiring
`independent function is based only on “certain embodiments.” Prelim. Resp. 18-
`
`19. For purposes of this Decision, we do not adopt Patent Owner’s proposed
`
`construction, and determinethat this term requires no express construction.
`
`B. Claims 1 and 23 — Asserted Obviousness over Bi and Wolff
`Petitioner contends claims 1, 23, and 28 are unpatentable under 35 U.S.C.
`§ 103 as obvious over Bi and Wolff. Pet. 10-20.
`Bi (Exhibit 1011)
`|
`Bi is titled, “Interactive Remote Control of Audio or Video Playback and
`Selections.” Petitioner contends Bi discloses a system for an interactive remote
`control, which may be wireless, of an audio or playback application running on a
`personal computeror other computing platform. Pet. 14-16. Figure 2 ofBiis
`reproduced below.
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`Bay
`Fii328
`as
`CSSTE
`
`Sreesreeeteeneemses
`
`Figure 2
`
`Figure 2 depicts data server 102 providing digital audio or video data via the
`Internet orother network 101 to computing platform 100. Navigator 260 is an
`interactive remote control communicating with computing platform 100, including
`
`wirelessly, to control selection of audio or video data. Ex. 10.11 44 0018, 0020.
`
`The software flow in navigator control manager 154 includessteps relating to
`
`browsing and selecting music with the navigator, where “[t]ypically, a browse of
`
`music is based on suchcriteria as music track, album,artist, music genre, and
`
`playlists.” Id. at § 0032, Fig. 7.
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`Wolff
`
`(Exhibit 1012
`
`Wolffis titled, “Remote Console for Network Application Servers”and
`discloses the use ofa controller, such as a PDA,to control selection of music items
`for playing through a “network access appliance” (“NAA”) such asa stereo or car
`
`radio. Pet. 17; Ex. 1012, Fig. 1, 3:25-31. Figure.1 of Wolff is reproduced below.
`
`
`
`FIG. 1
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`Figure 1 depicts a network with remote controller PDA 130 and NAAs 120
`
`(stereo), 125 (radio) and others. Jd. at 3:41-47. Wolff sends an identifier, which
`can be a URL, from controller 130 to NAA. Jd.at Abstract, 3:52—63, 4:12-17.
`
`Analysis
`
`Petitioner contends claims 1, 23, and 28 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Bi and Wolff. In support of this asserted ground of
`unpatentability, Petitioner provides detailed explanations as to howthe subject
`matter of each claim is taught or suggested by Bi and Wolff. Pet. 19-27. As
`Petitioner notes, in IPR2013-00597, we instituted an interpartes review on
`multiple grounds, including anticipation by Bi, of claims 11 and 12 of U.S.Patent
`8,230,099. Those claims are similar to claims 1 and 23 of the ’356 patent, which
`
`further recite that the claimed playlist includes an item identifier that identifies at
`least one item. Pet. 6—7, 19.!
`|
`
`Petitioner explains how the subject matter.of independentclaims 1 and 23 is’
`taught or suggested by Bi and Wolff. Pet. 19-27. For example, for claim 1,
`
`Petitioner’s claim chart cites to Bi’s disclosure of the claimed method where the
`
`media player device (computing platform 100 in Bi, Fig. 2) receives a playlist (as
`construed in section II. A above) from a remotesource (data server 102 in Bi, Fig.
`2); communicatesthe playlist (the results of a music browse command, which
`
`includes playlists) to a wireless handheld remote control (navigator 260 in Bi, Fig.
`2) separate from the media player device, with the playlist being presented on the
`
`' The applicantfiled a terminal disclaimerin the application that issued as the °356
`patent, to avoid a double patenting rejection based on the ’099 patent. Pet. 19,
`citing Ex. 1009.
`
`11
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`wireless handheld remote to a user whoselects an item from the playlist for
`
`playback by the media player device. Pet. 20-24,citing inter alia, Ex. 1011
`4 0018, 0020, 0028, 0031, 0032. Petitioner contends that the item identifier, the
`
`element of claim 1 absent from Bi, is taught by Wolff, e.g., as a URL. Pet. 21-23
`
`(citing Ex. 1012, Abstract, 1:49-58, 3:42—60, 4:12-64, 5:34—40, 6:8-10,
`
`7:62-8:40, 8:64—9:9, and Figs. 1, 5-7.)
`
`Patent Ownercontends Bi does not disclose that a playlist, as construed
`pursuant to Patent Owner’s proposed construction, is sent to navigator 260.
`Prelim. Resp. 32-33. We have determinedfor purposesof this Decision that
`
`~ Patent Owner’s proposedconstructionofplaylist is not the broadest reasonable
`construction, and that a playlist is a list of media selections. See Section II. A
`above. On the record currently before us, we are persuaded that Bi’s “playlist”
`
`(Ex. 1011 0032) discloses the “playlist” of the ’356 patent.
`
`Patent Owner does not argue that Wolff fails to teach or suggest an item
`identifier, and we are persuaded byPetitioner’s evidenceas to this limitation. We
`
`have reviewedthe Petition and the Patent Owner’s Preliminary Response and
`accompanying exhibits, are persuaded on the present record by Petitioner’s
`evidence and arguments on the remaining limitations of independent claims 1 and
`
`23, and determinethat Petitioner has made an adequate showing under 35 U.S.C.
`§ 314(a).
`
`Claim 28 depends from claim 23 andfurtherrecites that the control system
`ofthe media player device of claim 23 “is further adapted to display, on the media
`player device, the playlist.” We have reviewed Petitioner’s contentions and claim
`chart, and determinethat the evidenceis insufficient to describe or showthateither
`
`12
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`Bi or Wolff teaches or suggests the display of the playlist on the media player
`device. See Prelim. Resp. 34-35.
`Accordingly, on the present record, we are persuadedthere is a reasonable
`
`likelihood of Petitioner prevailing in establishing the unpatentability of
`
`independent claims | and 23 of the ’356 patent as obvious over Bi and Wolff. We
`
`are not persuaded of the samefor claim 28.
`C. Claim 28 — Asserted Obviousness overBi, Wolff, and Berman (Exhibit
`
`1014)
`
`Berman (Exhibit 1014)
`
`Bermanis titled, “System for Playback of Network Audio Material on
`
`Demand.” Petitioner contends Bermandiscloses the use of a system with a
`
`playback apparatus with an interface to network audiofiles retrieved in response to
`
`user selection. Pet. 35 (citing Ex. 1014, Fig. 1, and 4:47-53). An embodiment of
`Berman’s systemis depicted in Figure 1, which is reproduced below.
`
`
`
`FIG. 1
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`Figure | is a block diagram of Berman’s playback unit 100. Jd. at 4:17-19.
`
`Playback unit 100 includes display 112 that is used to select and control playback
`
`of audio material. [d. at 5:21-22. Figure 2 of Berman is reproduced below.
`
` 210 212 214 216 218 220 222 224
`
`FIG. 2
`
`‘
`
`Figure 2 depicts the display interface ofplayback unit 100, with touch panel
`screen 202 and various control buttons, including cursor navigation up 222 and
`
`down 224 and function select button 226. Id. at 5:42-62.
`
`Analysis
`
`Petitioner describes how Bermandiscloses the display of the playlist on the
`media player device (playback unit 100) and the rationale for one of ordinary skill
`in the art to have combined Berman with Bi and Wolff. Pet. 42-43. In particular,
`
`Petitioner states that “it would have been obviousto a person of ordinary skill in
`
`the art to combine Bi and Wolff with Bermanto provide a display of the playlist on
`the media player based onat least .
`.
`. the similarity in the types of devices and
`
`applications, and the desire to provide simple user features that provide additional
`
`14
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`options for users.” Jd. at 43. We determinethat Petitioner has made an adequate
`
`showing under 35 U.S.C. § 314(a). Accordingly, on the present record, we are
`
`persuaded there is a reasonable likelihood of Petitioner prevailing as to the
`unpatentability of dependent claim 28 as obvious over Bi, Wolff, and Berman.
`
`D. Other Grounds
`
`Forall other alleged grounds of unpatentability in the Petition, we exercise
`our discretion and determine the remaining grounds are redundantin light of the
`above grounds of unpatentability on which weinstitute review for the same claims.
`
`Il. CONCLUSION
`
`For the foregoing reasons, we are persuaded the information presented in the
`
`Petition establishes a reasonable likelihood that Petitioner would prevail in
`
`establishing unpatentability of claims 1 and 23 of the ’356 patent as obvious over
`
`Bi and Wolff, and of claim 28 as obvious over Bi, Wolff, and Berman.
`
`The Board has not madea final determination on the patentability of any-
`
`challenged claim.
`
`Accordingly,it is
`
`IV. ORDER
`
`ORDEREDthat pursuant to 35 U.S.C. § 314, an inter partes review is
`
`—
`herebyinstituted as to the following claims and grounds:
`1.
`Claims 1 and 23 of the °356 patent are unpatentable under 35
`U.S.C. §-103(a) as obvious over Bi and Wolff;
`
`15
`
`
`
`IPR2014-00733
`Patent 8,458,356 B2
`
`2.
`
`Claim 28 of the ’356 patent is unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Bi, Wolff, and Berman; and
`
`FURTHER ORDEREDthatthetrial is limited to the groundsidentified
`
`above. No other grounds are authorized.
`
`FURTHER ORDEREDthat pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given ofthe institution of a trial; the trial commences on
`
`the entry date of this decision.
`
`PETITIONER:
`
`David L. Fehrman
`patentdocket@mofo.com
`
`Mehran Arjomand
`patentdocket@mofo.com
`
`PATENT OWNER:
`
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Christopher Horgan
`chris.horgan@concerttechnology.com
`
`16
`
`
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