Yamaha Corporation of Americav.Black Hills Media LLC

Patent Trial and Appeal Board

Mar 18, 2015

11563232 (P.T.A.B. Mar. 18, 2015)

Trials@uspto.gov Paper 49
571-272-7822 Entered: March 18, 2015

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 IPR2013-00594
Patent 8,050,652 B2
____________

Before BRIAN J. MCNAMARA, STACEY G. WHITE, and PETER P.
CHEN, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Yamaha Corporation of America (“Petitioner”) filed a Petition
requesting an inter partes review of claims 1–4, 6–8, 10, 11, 13, 14, 21, 22,
24–29, 31, 32, 34, 35, 42–45, 47–50, 52, 53, 55, and 56 of U.S. Patent No.
8,050,652 B2 (Ex. 1001, “the ’652 Patent”) pursuant to 35 U.S.C. §§ 311–
319. Paper 1 (“Pet.”). Black Hills Media, LLC (“Patent Owner”) filed a
Preliminary Response. Paper 10. On March 20, 2014, we instituted an inter
partes review of claims 1–4, 6–8, 10, 11, 13, 21, 22, 24–29, 31, 32, 34, 42–
45, 47–50, 52, and 53, on three of the grounds unpatentability alleged in the
Petition. Paper 17 (“Dec. to Inst.”). After institution of trial, Patent Owner
filed a Patent Owner’s Response (Paper 27, “PO Resp.”), to which Petitioner
filed a Reply to Patent Owner’s Response (Paper 31, “Reply”). Patent
Owner filed a Motion to Exclude (Paper 35, “Mot. to Excl.”), to which
Petitioner filed an Opposition (Paper 40, “Opp. Mot. to Exclude”) and Patent
Owner filed a Reply (Paper 41).
A consolidated oral hearing for IPR2013-00593, IPR2013-00594,
IPR2013-00597, and IPR2013-00598, each involving the same Petitioner
and the same Patent Owner, was held on October 20, 2014. The transcript of
the consolidated hearing has been entered into the record. Paper 46 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Petitioner has shown by a preponderance of the
evidence that challenged claims 1–4, 6–8, 10, 11, 13, 21, 22, 24–29, 31, 32,
34, 42–45, 47–50, 52, and 53 are unpatentable. Patent Owner’s Motion to
Exclude is dismissed as moot.
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A. Related Proceedings
Petitioner indicates that the ’652 Patent is at issue in Black Hills
Media, LLC v. Yamaha Corp. of America, No. 2:13-cv-006054 (C.D. Cal.).
Pet. 2–4. In addition, Patent Owner has pending cases concerning the ’652
Patent in the United States District Court for the District of Delaware and the
Central District of California, and an investigation before the U.S.
International Trade Commission, Certain Digital Media Devices, Including
Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and
Mobile Phones, Components Thereof and Associated Software, Inv. No.
337-TA-882 (USITC). Patent Owner’s Supplemental Mandatory Notice
(Paper 48) 1–3. The ’652 Patent is the subject of two other petitions for
inter partes review.
1
Id. at 3. In addition, U.S. Patent No. 8,045,952 B2 is
related to the ’652 Patent and is the subject of three petitions for inter partes
review.
2
Id.
B. The ’652 Patent
The ’652 Patent is directed to methods and apparatuses that allow
users to receive and play audio from various sources and to assign playlists
over a network to a network-enabled audio device. Ex. 1001, Abstract. The
Specification lists several problems with prior art systems such as the cost
and technical complexity associated with listening to streaming audio over
the Internet and playing songs on a PC. Id. at 1:52–2:12. The ’652 Patent
purports to alleviate such issues “by providing a network-enabled audio

1
Cases IPR2014-00737 and IPR2015-00334.
2
Cases IPR2013-00593, IPR2014-00740 and IPR2015-00340.
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device for listening to a variety of audio sources with substantially equal
convenience.” Id. at 2:15–19.
In Internet radio mode, the inventive device receives and plays a
broadcast from an Internet radio station. Id. at 10:3–12, 10:49–57. The
inventive device also may work in conjunction with a computer. Id. at
16:32–35. In that embodiment, software may be used to assign a playlist of
songs to a network-enabled audio device. Id. This embodiment is illustrated
in Figures 15 and 19B of the ’652 Patent.
Figure 15 is reproduced below:

Figure 15 is a block diagram illustrating the configuration between network-
enabled audio devices and a stereo web site. Ex. 1001, 6:4–6. Figure 15
illustrates two network-enabled audio devices (1510 and 1520) connected to
Internet Personal Audio Network (“IPAN”) server site 1104. Id. at 21:40–
43. Storage spaces (1512 and 1522) of network-enabled audio devices
(1510 and 1520) are used to store IPAN software 1526, playlists (1528 and
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1530), and associated URLs and songs. Id. at 21:43–57. Server site 1104
includes IPAN software 1433 and playlists (1528 and 1530). Id. at 21:52–
57.
Figure 19B of the ’652 Patent is reproduced below:

Figure 19B shows the process for assigning a playlist to a device. Ex. 1001,
6:60–61. At step 1908, a user assigns a playlist to first device 1510. Id. at
28:14–16. The system then determines if the entire playlist is stored on the
hard drive of first device 1510. Id. at 28:20–22. If the entire playlist is not
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stored on the first device 1510, IPAN 1433 will formulate a list of remaining
songs and check the hard drive of second device 1520 to determine whether
any of the remaining songs may be found on that device. Id. at 28:24–30. If
any of the remaining songs is found on second device 1520, then IPAN 1433
will provide first device 1510 a URL for the song (or songs), and first device
1510 will attempt to download the songs from second device 1520. Id. at
28:30–40.
C. Illustrative Claim
Claim 1 of the ’652 Patent (Ex. 1001, 34:6–35), reproduced below, is
illustrative of the claims at issue:
1. An electronic device comprising:
a) a network interface enabling the electronic device to
receive an Internet radio broadcast and being further
adapted to communicatively couple the electronic device
to a central system;
b) a system enabling playback of audio content from a
playlist assigned to the electronic device via the central
system; and
c) a control system associated with the network interface
and the system enabling playback of the audio content
indicated by the playlist, and adapted to:
i) enable a user of the electronic device to select a
desired mode of operation from a plurality of
modes of operation comprising an Internet radio
mode of operation and a playlist mode of
operation;
ii) receive and play the Internet radio broadcast
when the desired mode of operation is the Internet
radio mode of operation; and
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iii) when the desired mode of operation is the
playlist mode of operation:
receive the playlist assigned to the electronic
device from the central system, the playlist
identifying a plurality of songs, wherein
ones of the plurality of songs are not stored
on the electronic device;
receive information from the central system
enabling the electronic device to obtain the
ones of the plurality of songs from at least
one remote source;
obtain the ones of the plurality of songs
from the at least one remote source; and
play the audio content indicated by the
playlist.

D. Alleged Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that
were instituted for inter partes review (Dec. to Inst. 33):

Reference Basis Claims Challenged
Qureshey
3
and Berman § 103
1–4, 6–8, 10, 13, 21, 22, 24–29,
31, 42–45, 47–50, and 52
Qureshey, Berman
4
, and Leeke
5
§ 103 11, 32, and 53
White
6
§ 103
1–4, 6, 7, 13, 21, 22, 24, 25, 27
28, 34, 42–45, 47, and 48

3
WO 99/38266, published July 29, 1999 (Ex. 1011).
4
US 6,502,194 B1, Dec. 31, 2002, filed Apr. 16, 1999 (Ex. 1012).
5
US 6,587,127 B1, July 1, 2003, filed Nov. 24, 1998 (Ex. 1010).
6
US 7,187,947 B1, Mar. 6, 2007, filed Mar. 28, 2000 (Ex. 1014).
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II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim
terms are given their “ordinary and customary meaning” as would be
understood by one of ordinary skill in the art at the time of the invention and
in the context of the entire patent disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
In the Decision to Institute, we construed the terms “playlist,”
“playlist assigned to the electronic device,” and “wherein ones of the
plurality of songs are not stored on the electronic device.” Dec. to Inst. 10–
14. Neither party challenges our construction of the wherein phrase.
Having considered whether the construction set forth in the Decision to
Institute should be changed in light of evidence introduced during trial, we
are not persuaded that any modification is necessary. Therefore, we
maintain the construction of “wherein ones of the plurality of songs are not
stored on the electronic device” as “wherein at least one of the plurality of
songs is not stored on the electronic device.” See id. at 14.
1. “Playlist”
In the Decision to Institute, we construed playlist to mean “a list of
audio files or URLs of where the audio files were retrieved from.” Dec. to
Inst. 13. Patent Owner argues that the term should be construed as “a list
referencing media items arranged to be played in a sequence.” PO Resp. 13.
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Petitioner argues that Patent Owner’s proposed construction is too narrow
and that the proper construction is “a list of audio files.” Reply 4. We are
persuaded by Petitioner’s arguments.
In the Decision to Institute, we based our construction on a passage
from the Specification of the ’652 Patent, which defines “playlist 1528 . . .
[as] a list of audio files and associated URLs of where the audio files were
retrieved from.” Ex. 1001, 21:63-65. Petitioner persuasively argues that the
Specification and the claims reflect that the playlist and associated URLs are
separate items. Reply 5–6. For example, the Specification discusses a
server having “a playlist for the Device 1110” and also “maintain[ing] a list
of URL’s from which the device 1110 received audio files listed in the
playlists.” Ex. 1001, 16:67–17:6; see also Reply 5–6 (citing Ex. 1001,
21:63–65, 21:45–46, 21:49, 21:51–52, Fig. 15) (pointing out examples in the
Specification that discuss the playlist and URLs as separate items); Ex. 2011
¶¶ 68–72, 77, 78, 77–86 (explanation by Patent Owner’s declarant, Mr. Ivan
Zatkovich, as to why a list of URLs is not a playlist). Thus, we are
persuaded that URLs are not part of the playlist. Therefore, the broadest
reasonable construction of playlist is “a list of audio files.”
Patent Owner appears to agree that the playlist is a list of songs (or
media items), but further argues that the construction of the term should go
beyond the content of the list (i.e., songs or media items) to also include the
arrangement of the contents of the playlist. See PO Resp. 18; Ex. 2011 ¶ 31
(describing the’652 Patent’s “centrally-managed playlist, identifying a
plurality of songs aggregated from one or more remote sources”). Patent
Owner argues that the Specification is consistent with its construction. In
particular, Patent Owner points to the discussion of the ’652 Patent’s Figure
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17B, which illustrates the display of an audio player window 1792. PO
Resp. 17 (citing Ex. 1001, 24:31–43). We are not persuaded that this Figure,
depicting a constellation of buttons on an audio player and the description of
the function of those buttons, defines the playlist that may be played on that
device.
Patent Owner also cites a number of extrinsic references that discuss
the sequencing of titles in the playlist. PO Resp. 13–15. Patent Owner’s
declarant, Mr. Ivan Zatkovich, supports Patent Owner’s argument by stating
that one of ordinary skill in the art would have understood that
the term “playlist” denoted a list of media items (e.g., songs) to
be played in a sequence, one after another as a group, without
having to select individual songs for playback. Indeed, the two
parts of the word itself make the meaning of the term self-
evident: “play” and “list.” In all cases, the operative function is
“play,” which means the songs will be played as a group, not
individually. If the songs in a playlist must be selected and
played individually, the purpose of the playlist would be lost.
Ex. 2011 ¶ 60.
Petitioner persuasively argues that this limitation as to the order of
songs is a function of the device used to play the songs on the playlist and
not a defining characteristic of the playlist itself.
MR. FEHRMAN: Oh, certainly a playlist can be employed by a
player to play an order depending upon the nature of the player
and the software that’s used to control it. But the term that’s
being construed is playlist, and what that is. How that playlist
is used and employed is not part and parcel of the playlist,
per se.

Tr. 10:21–25. Indeed, Patent Owner’s counsel questioned Petitioner’s
declarant, Dr. V. Michael Bove, Jr., as to his “aware[ness] of any software
or digital media player that has a playlist function that doesn’t permit one to
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play the items in the list in a continuous fashion.” PO Resp. 15–16 (citing
Ex. 2015, 66:18–22) (emphasis added). Dr. Bove responded that to his
recollection “all [players] will allow playing in a sequence as displayed.” Id.
at 15 (citing Ex. 2015, 66:24–25) (emphasis omitted). Patent Owner
characterizes this exchange about the player functionality as a concession as
to the definition of a playlist. Id.; see also Reply 6 (emphasizing that Dr.
Bove’s testimony stated that “a player determines how songs in the list are
played”). We are persuaded that the manner in which songs are played is a
function of the player and not a defining feature of the playlist itself. Thus,
we do not construe the term playlist to include any limitations as to the order
or sequence of songs on the playlist.
2. “Playlist assigned to the Electronic Device”
In our Decision to Institute, we construed the phrase “playlist assigned
to the electronic device” to be “a list of audio files or URLs of where the
audio files were retrieved from directed to a particular device selected by a
user.” Dec. to Inst. 13. Patent Owner argues that “assigned to the electronic
device” should be construed to mean “directed to the electronic device.” PO
Resp. 24 (citing Ex. 2011 ¶ 87). According to its argument, “the [’652]
Patent specifically contemplates that playlists are assigned without requiring
user selection of a particular device to which the playlist is directed.” Id. at
25 (citing Ex. 2011 ¶ 92). Patent Owner supports this argument by citing a
portion of the Specification that discusses Figure 17I. Id. This discussion,
however, does not support its argument. Figure 17I “shows a display for
allowing a user to add a device to the IPAN.” Ex. 1001, 6:32–33. As
depicted, this is the display for adding a particular device (elements 1771
and 1772 depict the name and serial number of the device) to the network.
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Id. at Fig. 17I. Included in this display is a checkbox that allows the user to
select whether new files should be updated automatically to this specific
device. Id. at 25:53–56. This is in accord with the passages we cited in the
Decision to Institute that show the repeated description of assignment of a
playlist to a particular device selected by the user. Dec. to Inst. 12 (citing
Ex. 1001, 4:57–58, 22:39–40, 24:45–48, 28:16, Figs.19B, 19C1). Thus, in
light of the record, we determine that the broadest reasonable construction of
“playlist assigned to the electronic device” is “a list of audio files directed to
a particular device selected by a user.”
B. Level of Ordinary Skill in the Art
Petitioner proposes that the level of ordinary skill in the art is “at least
a bachelor’s degree in computer science or electrical engineering, and at
least one year of practical experience with networked multimedia.”
Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring a person with a
“Bachelor’s degree in computer science or electrical engineering or its
equivalent and 1–2 years of experience with media file sharing.” PO Resp.
9–10 (citing Ex. 2011 ¶ 26). We find this dispute between the parties to be
of little value. An express definition of the level of ordinary skill is not
required in all situations, as the level of ordinary skill in the art can be
reflected in the cited prior art references. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the
level of skill in the art does not give rise to reversible error where the prior
art itself reflects an appropriate level and a need for testimony is not
shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995). Neither party has provided a sufficient explanation as to
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how their specific proposal regarding the level of ordinary skill (and in
particular the importance of the inclusion or exclusion of “at least”) changes
the analysis in this case. We find the level of ordinary skill in the art to be
reflected in the cited references, and we determine that no express statement
of the level of ordinary skill in the art is required.
C. Obviousness over Qureshey (Ex. 1011) and Berman (Ex. 1012)
Petitioner alleges that claims 1–4, 6–8, 10, 13, 21, 22, 24–29, 31, 42–
45, 47–50, and 52 of the ’652 Patent are unpatentable under 35 U.S.C. § 103
over Qureshey and Berman. Pet. 27–39.
For the reasons discussed below, we conclude that Petitioner has
proved by a preponderance of the evidence that claims 1–4, 6–8, 10, 13, 21,
22, 24–29, 31, 42–45, 47–50, and 52 would have been obvious over
Qureshey and Berman.
1. Overview of Qureshey
Qureshey is directed to “an intelligent radio apparatus that is adapted
to allow a user to receive Web radio broadcasts in a manner similar to the
ease and low cost with which a user receives a regular radio broadcast.” Ex.
1011, 1:28–30.
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Figure 1 is reproduced below:

Figure 1 shows a perspective view of an embodiment of tabletop intelligent
radio 100. Ex. 1011, 5:3, 3:12. A variety of user controls are provided on
the face of radio 100. Id. at 5:9–18. In particular, “[t]he button bar 120
provides buttons to select an audio source, including, for example, ‘AM’
radio, ‘FM’ radio, ‘Web’ radio, ‘Cassette’, and ‘External’ input.” Id. at
5:11–12. Intelligent radio 100 may receive input from other sources
including “an audio CD, a DVD, [or] a digital audio tape unit . . . .” Id. at
6:25–27. The user can select a web radio station from a list of available web
broadcasts. Id. at 4:8–12, 8:18–25, Fig. 3E. In some embodiments, a data
storage device may be used to provide storage for audio material. Id. at
5:24–25. Intelligent radio 100 may be operated using a wireless remote 135
and also may include a wireless transceiver. Id. at 4:26–32, 12:21–13:5,
Fig. 1 (element 135); see also id. at Fig. 10 (depicting an embodiment
including transceiver 1010).
2. Overview of Berman
Berman is directed to a playback unit that retrieves audio data from a
remote server and plays songs that have been selected by the user. Ex. 1012,
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Abstract. An embodiment of Berman’s playback unit is depicted in Figure
1, which is reproduced below:

Figure 1 is a block diagram of Berman’s playback unit 100. Ex. 1012, 4:17–
19. Playback unit 100 receives audio material from audio material server
104 and access rights to this material are controlled by Directory and User
List (“DUL”) server 107. Id. at 4:51–53, 4:63–65. Playback unit 100
includes network interface 110 that facilitates communication with the
servers over the Internet. Id. at 5:11–14. Memory 116 temporarily stores
audio for playback and processing. Id. at 6:6–8. In certain embodiments,
the user may record a song to memory. Id. at 8:4–6. Berman’s playback
unit may receive input from a wireless remote control. Id. at 5:46–49. The
remote control unit may be used to move through the song list and search for
songs. Id. at 5:54–61, 13:51–64, Figs. 2, 13.
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The operation of the playback unit is illustrated in Figures 3 and 4,
which are reproduced below:

Figures 3 and 4 are processing flow diagrams depicting the steps executed to
request and receive audio material. Ex. 1012, 4:22–25. At step 302, the user
selects a music category or type of song. Id. at 6:64–7:4. The playback unit
then contacts the DUL server to confirm that the playback unit’s song list is
up to date. Id. at 7:4–6, Fig. 3 (step 304). If the song list is not up to date,
the DUL server will send an updated song list to the device. Id. at 7:14–19,
Fig. 3 (steps 306 and 308). In certain embodiments, the song list may be
updated to reflect the user’s preferred songs. Id. at 13:9–15. The user
selects a song from the song list. Id. at 7:22–24. The DUL server then sends
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playback unit 100 to the network address or URL for the requested song. Id.
at 7:30–41. Playback unit 100 then uses that URL to obtain the requested
sound file or streaming audio from the appropriate audio material server. Id.
at 7:41–45, 8:32–34, Fig. 4 (steps 402 and 412).
3. Analysis
Petitioner argues that Qureshey and Berman teach or suggest every
limitation of claim 1. Pet. 29–33. Specifically, Petitioner’s obviousness
ground relies on Qureshey’s teachings directed to Internet radio and
Berman’s teachings regarding an on demand system for playing songs from
a playlist via a network. Id. at 27–33. Petitioner asserts that an ordinarily
skilled artisan “would have easily recognized that the Internet radio receiver
of Qureshey could have been improved by including the audio on demand
features of Berman.” Id. at 31. Dr. Bove supports Petitioner’s argument by
opining that at the time of the invention of the ’652 Patent, such an artisan
would have been aware of PCs that access both Internet radio and audio on
demand and would have understood that adding audio on demand to an
Internet radio device “would, for the most part, only involve modifying the
user interface software to allow selecting between the functions, and
programming additional server addresses into the system.” Ex. 1002 ¶ 22.
We agree with Petitioner’s contentions regarding the teachings of Qureshey
and Berman, and we credit Dr. Bove’s testimony regarding the rationale for
combining the teachings of these references.
Patent Owner argues that Petitioner’s asserted ground should fail,
because Berman does not receive a playlist assigned to the electronic device;
instead, Berman merely discloses audio material that is selected and played
on the playback unit itself. PO Resp. 49–50. According to Patent Owner,
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Berman’s song list is not a playlist, because it “merely represents a list of
possible songs that can be selected.” Id. at 50–51 (citing Ex. 2011 ¶ 114).
Patent Owner’s argument is predicated on its proposed construction of
playlist, which we have rejected. See Section II.A.1 (construing playlist to
be “a list of audio files”). We, however, determine that Berman’s song list
falls squarely within our construction of playlist.
Patent Owner also argues that Berman’s song list does not reflect a list
of songs selected for playback on a device. PO Resp. 52–54. This,
however, is not required by our construction. Even if it were required,
Berman does disclose some song selection by the user. Claim 15 of Berman
discloses the user “selecting an available music category” and the system
“sending a current song list version for the selected music category.”
Ex. 1012, 17:60–67. At Oral Hearing, Patent Owner’s counsel described
this claim language from Berman as “loose wording” that does not have any
meaning. Tr. 50:6–25 (“MR. ENGELLENNER: I don’t think it has any
meaning. It’s just describing, perhaps loosely, what’s going on in that
function there.”). The reference’s disclosures are what they are, and we see
no reason to disregard them as “loose wording.” Berman’s song list falls
squarely within our construction of playlist, and, thus, we do not find Patent
Owner’s arguments persuasive.
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that independent claim 1
is unpatentable over Qureshey and Berman. Independent claims 21 and 42
recite limitations similar to those of claim 1 and, therefore, for similar
reasons as to those discussed for claim 1, we determine that Petitioner
has demonstrated by a preponderance of the evidence that claims 21 and
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42 would have been rendered obvious by Qureshey and Berman. See Pet.
27–38.
In regards to dependent claims 2–4, 6–8, 10, 13, 22, 24–29, 31, 43–45,
47–50, and 52, we determine that Petitioner has demonstrated by a
preponderance of the evidence that these claims also would have been
obvious over Qureshey and Berman. See Pet. 27–39. Patent Owner proffers
no additional arguments regarding the patentability of these dependent
claims. PO Resp. 55.
D. Obviousness over Qureshey (Ex. 1011), Berman (Ex. 1012) and
Leeke (Ex. 1010)
Petitioner asserts that claims 11, 32, and 53 of the ’652 Patent would
have been rendered obvious by the teachings of Qureshey, Berman, and
Leeke. Pet. 39. Claims 11, 32, and 53, respectively, depend from claims 1,
21, and 42. These claims each recite that supplemental information related
to a song is received and displayed in response to a request.
Leeke is directed to a content player and server. Ex. 1010, Abstract.
Leeke teaches displaying auxiliary information in response to a user request.
Id. at 14:30–33, 20:64–21:2. “The auxiliary information can include specific
information for the current title such as album cover graphics, liner notes,
tray back images, images of the artist(s), producer and writer credits, and
distribution label information, for example.” Id. at 21:2–6, 14:34–37.
Petitioner asserts that these teachings, in conjunction with those of Qureshey
and Berman, would have rendered obvious dependent claims 11, 32, and 53.
Pet. 39. Dr. Bove opines that it would have been obvious to provide Leeke’s
supplemental information along with Berman’s audio on demand. Ex. 1002
¶ 24. He states that this combination entails applying a known technique to
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a known device. Id. We credit Dr. Bove’s testimony and find Petitioner’s
arguments to be persuasive.
Patent Owner argues that Petitioner’s ground is insufficient because
there is no reason to assume that Leeke’s auxiliary information is obtained
by sending a request to a remote server in real-time while a song is playing
as required by the challenged claims. PO Resp. 56. Mr. Zatkovich opines
that “[i]t is plausible (and far more likely) that Leeke envisioned retrieval of
additional information, such as the song name, artist, etc. from the audio file
itself or local storage.” Ex. 2011 ¶ 127. Petitioner argues that Patent
Owner’s contention is without merit, because Leeke describes the auxiliary
information as being obtained for the current song being played and notes
that there is a discussion of an option to purchase that song. Reply 13–14
(citing Ex. 1010, 14:31–51). We agree with Petitioner’s assertion that,
because the request is for the auxiliary information of the current song, the
information is being requested in real-time. As to Patent Owner’s argument
that Leeke plausibly could have envisioned that the information would be
requested from a local source and not a remote server, we note that in
obviousness determinations the cited references must not be read in
isolation. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1987).
We must instead examine the combined teachings of the references. Berman
describes “a system for playback of network audio material on demand”
whereby a playback unit obtains on demand audio material via a server
connected to the playback unit over the Internet. Ex. 1012, 3:33–39.
Petitioner asserts persuasively that Berman may be modified to include the
information described in Leeke. Pet. 39. Thus, we determine that these
teachings taken together support Petitioner’s contention that requesting such
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audio material from a remote server in real-time would have been obvious.
Therefore, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 11, 32, and 53 would have been
obvious over Qureshey, Berman, and Leeke.
E. Obviousness over White (Ex. 1014)
Petitioner alleges that claims 1–4, 6, 7, 13, 21, 22, 24, 25, 27, 28, 34,
42–45, 47, and 48 of the ’652 Patent are unpatentable under 35 U.S.C. § 103
over White. Pet. 51–59.
For the reasons discussed below, we conclude that Petitioner has
proved by a preponderance of the evidence that claims 1–4, 6, 7, 13, 21, 22,
24, 25, 27, 28, 34, 42–45, 47, and 48 would have been obvious over White.
1. Overview of White
White is directed to a system and method for communicating selected
information to an electronic device. Ex. 1014 ¶ Abstract. Selected
information includes “audio information such as . . . songs, on-line radio
stations, on-line broadcasts, streaming audio, or other selectable
information.” Id. at 3:59–61. White discloses “allow[ing] a radio listener to
create a personal playlist and to listen to this playlist in a wireless
atmosphere while enjoying CD quality sound.” Id. at 2:7–10.
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White’s Figure 4 is reproduced below:

Figure 4 shows graphical user interface 400 for displaying selectable audio
information. Id. at 11:6–15. Interface 400 may be displayed as a web page.
Id. This interface allows users to view radio dial 412 or “a current playlist
selected by the user or the status of [a] wirelessly communicated playlist.”
Id. at 11:26–33. Programming interface 413 is used to specify items to be
displayed by radio dial 412. Id. at 12:29–30. These items may include
Internet and broadcast radio stations or playlists. Id. at 12:30–36.
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White’s Figure 8 is reproduced below:

Figure 8 depicts a method for providing selected audio information to an
electronic device. Ex. 1014, 3:40–42. At step 800, the user accesses a web
page such as the home page shown in Figure 4. Id. at 15:64–67. Then at
step 801, the user selects “a single song, a plurality [of] different songs, an
entire album, a broadcast station, streaming audio, etc. or other selectable
audio information.” Id. at 16:3–6. A playlist is created at step 802 reflecting
the user’s audio selections. Id. at 16:6–9. In certain embodiments, the
playlist may be composed of songs selected by a friend or group of friends.
Id. at 17:56–18:19; see also id. at 12:9–20 (describing an embodiment
whereby a user may send selective audio information to a friend’s device
and noting that a user may access “playlists of songs chosen by the guest DJ
and selectable by a user”). A list of information is compiled at step 803,
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including information associated with the playlist, such as network or URL
locations for the selected audio information. Id. at 16:12–14. At step 804,
the user then selects a device such as “a[n] automobile audio system, a home
stereo system, a home computer, an electronic device coupled to a home
network or computer system, etc.[,] or other locations or devices operable to
receive the selected audio information.” Id. at 16:24–28. The playlist and
associated information are communicated to the electronic device via a
wired or wireless connection. Id. at 16:35–45. Once the information is
communicated to the electronic device, the user may execute the playlist. Id.
at 17:7–18.
White’s electronic device “may be integrated into an audio component
such as a radio receiver” or “coupled to a home audio system, a portable
radio system or other system thereby providing a versatile electronic device
operable to receive wirelessly communicated selected audio information.”
Id. at 9:53–57, 10:38–42. In certain embodiments, White’s electronic device
may be coupled to an optical disc player such as a CD player or “storage
medium 303 such as a high speed buffer, programmable memory, or other
devices operable to store information.” Id. at 18:46–50, 8:46–52; 8:67–9:5.
2. Analysis
Petitioner argues that White would have rendered obvious every
limitation of claim 1. Pet. 15–18. Petitioner asserts that White describes an
electronic device that has a wireless communication module to select and
play digital audio data including playlists of songs and internet radio. Id.
We agree with Petitioner’s arguments regarding the disclosures of White.
Patent Owner asserts that White does not disclose URLs or any other
information enabling White’s device to obtain the songs received by the
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electronic device. PO Resp. 34. In response, Petitioner directs us to White’s
discussion of the audio information sent to White’s device. Reply 14.
White describes that such audio information “may also be ‘a reference to a
network location where an audio file may be stored’ and that system 100
‘may wirelessly communication data or information associated with the
selected audio information to electronic device 103 thereby providing
wireless communication of selected information.’” Id. (quoting Ex. 1014,
4:49–62); see Pet. 54 (citing Ex. 1014, 16:12–19). Petitioner also asserts
that, when the playlist is executed, songs will be downloaded or streamed.
Pet. 55 (citing Ex. 1014, Fig. 8; 16:35–17:18).
Patent Owner also contends that White does not disclose an electronic
device that receives a playlist. PO Resp. 38. Specifically, White does not
indicate that a playlist is ever transmitted or received by the electronic
device; instead, White discloses that “selected audio information” is
received by the device. Id. at 38–39. Petitioner argues that White’s
disclosure expressly describes a playlist being sent to a device. Reply 15.
White describes allowing a user “to create a personal playlist and to listen to
this playlist in a wireless atmosphere while enjoying CD quality sound.”
Ex. 1014, 2:7–10; see also id. at 12:19 (“provide playlists of songs”). A user
of White’s device “may want to view a current playlist selected by the user
or the status of wirelessly communicated playlist.” Id. at 11:31–33. White
also teaches that a “user may also use a select a device feature that allows a
user to select a destination device for communicating selected audio
information. For example, a user may want to communicate a playlist to
several different devices.” Id. at 11:66–12:4. We determine that White
teaches or at least suggests an electronic device that receives a playlist.
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Thus, we find that Petitioner has demonstrated by a preponderance of the
evidence that claim 1 would have been obvious over White.
Independent claims 21 and 42 recite limitations similar to those of
claim 1 and, therefore, for similar reasons as those discussed above we
determine that Petitioner has demonstrated that claims 21 and 42 would have
been rendered obvious by White. See Pet. 51–58. As to dependent claims
2–4, 6, 7, 13, 22, 24, 25, 27, 28, 34, 43–45, 47, and 48, we also find that
Petitioner has demonstrated that those claims would have been obvious over
White by a preponderance of the evidence. See Pet. 51–59.
We are not persuaded by Patent Owner’s argument that White fails to
render obvious claim 13 and 34. PO Resp. 40–41. Claims 13 and 34 depend
respectively from claims 1 and 21, and recite that the claimed system is
further adapted to receive and display a recommended song. Petitioner
asserts that White teaches or suggests this limitation through its discussion
of allowing a user to select songs based on criteria that would cause the
user’s playlist to contain recommended songs. Pet. 55 (citing Ex. 1014,
17:56–18:19, 15:62–16:6). The cited portions of White describe a user
selecting criteria for the creation of a playlist (Ex. 1014, 15:62–16:6), “a
virtual request line . . . for a specific genre of music allowing ‘members’ to
transmit audio information to the group” (id. at 17:60–63), and the option to
“elect to download the same music as another individual” (id. at 18:9–19).
Mr. Zatkovich testifies that the cited passages merely “describe a user
selection process whereby songs can be selected to be played.” Ex. 2011
¶ 169. Neither party directs us to any disclosures within the ’652 Patent that
discuss or define recommending a song. Thus, in accordance with the
ordinary and customary meaning of the term we broadly interpret a
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“recommended song” to be “a song suggested or otherwise selected based on
the input of another.” As such, we disagree with Mr. Zatkovich’s
interpretation of the cited passages. For example, receiving the playlist of a
friend (Ex. 1014, 18:9–11) or celebrity (id. at 18:15–19), as discussed in the
cited passages, would fall within our interpretation of the claim language.
Thus, we determine that Petitioner has demonstrated by a
preponderance of the evidence that dependent claims 2–4, 6, 7, 13, 22, 24,
25, 27, 28, 34, 43–45, 47, and 48 would have been obvious over White.
F. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude Evidence (Paper 35), to which
Petitioner responded (Paper 40) and on which Patent Owner filed a Reply
(Paper 41). Patent Owner’s motion seeks to exclude Exhibits 1017, 1018,
and 1021 as hearsay, irrelevant, lacking foundation, and prejudicial pursuant
to Federal Rules of Evidence (“FRE”) 802, 401, 402, and 403. Mot. to Excl.
1. Patent Owner also seeks to exclude Exhibit 1020 as irrelevant, lacking
foundation, and prejudicial pursuant to FRE 613(b), 401, 402, and 403. Id.
Patent Owner’s Reply on its motion also requests to exclude and expunge
Exhibit 1023, which is a declaration of counsel submitted by Petitioner.
Opp. Mot. to Excl. 4–5.
The moving party has the burden of proof to establish that it is entitled
to the request relief. 37 C.F.R. § 42.20(c), 42.62(a). Exhibits 1017, 1018,
and 1021 were submitted by Petitioner as extrinsic evidence in support of its
proposed construction of “playlist.” Reply 1–4. Our construction of playlist
is based on intrinsic evidence, and we do not rely upon any of these
Exhibits. The motion, therefore, is dismissed as moot as to these Exhibits.
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Exhibit 1020 was submitted by Petitioner to support its proposal for
level of ordinary skill in the art. As stated in Section II.B, our determination
as to the level of ordinary skill in the art is informed by relevant case law
authority, and we do not rely on Exhibit 1020. The motion to exclude is
dismissed as moot for this Exhibit and as to the related Exhibit 1023 as well.
III. CONCLUSION
We conclude Petitioner has demonstrated by a preponderance of the
evidence that:
1. Claims 1–4, 6–8, 10, 13, 21, 22, 24–29, 31, 42–45, 47–50, and 52 of
the ’652 Patent are unpatentable under 35 U.S.C. § 103 over the
teachings of Qureshey and Berman; and
2. Claims 11, 32, and 53 of the ’652 Patent are unpatentable under 35
U.S.C. § 103 over the teachings of Qureshey, Berman, and Leeke;
and
3. Claims 1–4, 6, 7, 13, 21, 22, 24, 25, 27, 28, 34, 42–45, 47, and 48 of
the ’652 Patent are unpatentable under 35 U.S.C. § 103 over the
teachings of White.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claims
1–4, 6–8, 10, 11, 13, 21, 22, 24–29, 31, 32, 34, 42–45, 47–50, 52, and 53 of
the ’652 Patent are unpatentable;
FURTHER ORDERED that, Patent Owner’s Motion to Exclude is
dismissed as moot.
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FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

David L. Fehrman
Mehran Arjomand
MORRISON & FOERSTER LLP
dfehrman@mofo.com
marjomand@mofo.com

PATENT OWNER:

Theodosios Thomas
BLACK HILLS MEDIA, LLC
ted.thomas@sceneralabs.com

Thomas Engellenner
Reza Mollaaghababa
Lana Gladstein
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com
gladsteinl@pepperlaw.com