Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 46
`
`
` 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 IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`Before BRIAN McNAMARA, STACEY G. WHITE, and PETER P. CHEN,
`Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`I.
`
`INTRODUCTION
`
`Yamaha Corporation of America (“Petitioner”) filed a Petition requesting
`
`inter partes review of claims 1, 2, 6, and 9–12 of U.S. Patent No. 8,230,099 B2
`
`(Ex. 1001, “the ’099 patent”). Paper 1 (“Pet.”). Black Hills Media, LLC (“Patent
`
`Owner”) filed a Preliminary Response on December 26, 2013. Paper 10 (“Prelim.
`
`Resp.”). On March 20, 2014, we instituted an inter partes review for all
`
`challenged claims on certain grounds of unpatentability alleged in the Petition.
`
`Paper 15 (“Dec. to Inst.”).
`
`After institution of trial, Patent Owner filed a Motion to Amend, moving to
`
`cancel claims 1 and 9 (Paper 25, “Mot. to Amend”), and a Patent Owner Response
`
`(Paper 26, “PO Resp.”), to which Petitioner filed a Reply (Paper 30, “Pet. Reply”).
`
`In the Reply, Petitioner stated it does not oppose the Motion to Amend canceling
`
`claims 1 and 9. Pet. Reply 1. 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 44
`
`(“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 2, 6, and 10–12 are unpatentable. Patent Owner’s Motion to Amend is
`
`granted, and its Motion to Exclude is dismissed as moot.
`
`
`
`2
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`A. Related Proceedings
`
`
`
`Petitioner indicates that the ’099 Patent is at issue in Black Hills Media, LLC
`
`v. Yamaha Corp. of America, No. 2:13-cv-006054 (C.D. Cal.). Pet. 2–3. In
`
`addition, Patent Owner has pending cases concerning the ’099 Patent in the United
`
`States District Court for the District of Delaware and the Eastern District of Texas,
`
`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). Supplemental Mandatory Notice (Paper
`
`45), 1–3. The ’099 Patent is subject of two other petitions for inter partes review.1
`
`Id.
`
`B. The ’099 Patent
`
`
`
`The subject matter of the challenged claims of the ’099 patent relates
`
`generally to methods and devices for sharing playlists. Ex. 1001, Title. As stated
`
`in the specification:
`
`Playlists for music and movies are well known . . .sharing of playlists
`is also known . . . such playlists and playlist sharing systems . . .
`possess inherent deficiencies . . . Therefore, it is desirable to provide
`a system and method for sharing playlists, wherein the playlists are
`communicated to, stored in, and displayed upon player devices other
`than general purpose computers.
`
`
`1 Cases IPR2014-00711 and IPR2015-00338.
`
`3
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`Ex. 1001, 1:33, 1:64, 2:3–5, 2:21–24. The ’099 patent in particular describes 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. Ex. 1001, 1:25–29, 9:1–8.
`
`Figure 2 of the ’099 patent is reproduced below.
`
`Figure 2 depicts an embodiment of the invention with a playlist communicated
`
`from server 11 to remote control 18 via Internet 12. Ex. 1001, 9:1–23. After the
`
`
`
`4
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`playlist has been communicated to the remote control, the playlist may be
`
`displayed on the remote control and used to choose which selection is to be played
`
`by dedicated media player 17. Id. at 9:5–8. Playlists may be communicated from
`
`remote server 11 to the media player 17 and to remote control 18, either directly
`
`from the server (id. at 9:1–4) or indirectly, through media player 17 to remote
`
`control 18, or through remote control 18 to media player 17. Id. at 9:9–20. Thus,
`
`playlists may be stored in, displayed upon, and used to make selections from either
`
`dedicated media player 17, remote control 18, or both. Id. at 9:21–23; see also id.
`
`at 10:20–43 (communication of playlists in embodiment using peer-to-peer
`
`network). As summarized by Petitioner, the 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. 5 (citing Ex. 1001, 9:9–23).
`
`C. Illustrative Claims
`
`Claims 1, 2, 6, and 9–12 were the subject of the Petition. Independent claim
`
`1 and dependent claim 9 are the subject of Patent Owner’s Motion to Amend
`
`canceling those claims. Of the remaining claims, claims 2 and 6 directly depend
`
`from claim 1, and claims 10-12 are independent claims. Independent claims 1 and
`
`11 are reproduced as follows:
`
`1.
`
`A method comprising:
`receiving, at a wireless handheld remote control, a playlist from
`a remote source; and
`presenting, at the wireless handheld remote control, the playlist
`to a first user associated with the wireless handheld
`remote control such that the first user is enabled to select
`
`5
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`at least one item from the playlist for playback by a
`media player device which is associated with and
`separate from the wireless handheld remote control.
`
`
`
`11. A method comprising:
`receiving, at a media player device, a play list from a remote
`source; and
`communicating the play list from the media player device
`to a wireless handheld remote control associated with
`and separate from the media player device, wherein, at
`the wireless handheld remote control, the playlist is
`presented to a first user associated with the wireless
`handheld remote control and used by the first user to
`select at least one item from the play list for playback by
`the media player device.
`
`D. Prior Art Supporting the Instituted Challenges
`
`
`
`The following three prior art references were asserted in the instituted
`
`grounds:
`
`Reference
`
`Title
`
`Bi
`
`Gladwin
`
`Berman
`
`Ex. No.
`
`Ex. 1008
`
`Ex. 1009
`
`US 2002/0087996 A1
`(pub. July 4, 2002)
`
`WO 01/17142 A2
`(Pub. Mar. 8, 2001)
`
`US 6,502,194 B1
`(issued Dec. 31, 2002)
`
`Ex. 1010
`
`6
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`E. The Instituted Challenges of Unpatentability
`
`The following table summarizes the challenges to patentability on which we
`
`instituted inter partes review.
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Bi
`
`Gladwin
`
`Berman
`
`§ 102(b)
`
`1, 2, 6, and 9–12
`
`§ 102(b)
`
`1, 2, 6, 9, 11, and 12
`
`§ 103(a)
`
`1, 2, 6, 9, 11, and 12
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction 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). Claim terms are
`
`given their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`In the Decision on Institution, we interpreted “playlist” as “a list of media
`
`selections.” Petitioner asserts that our “construction of this term is correct and
`
`should be maintained,” Pet. Reply 3. Patent Owner contends that “playlist” should
`
`be interpreted as “a list referencing media items arranged to be played in a
`
`sequence,” PO Resp. 8-14; see Prelim. Resp. 6–7. The ’099 specification states,
`
`7
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`“[a] playlist is a list of a user’s favorite selections.” Ex. 1001, 1:33–34. Patent
`
`Owner quotes from the specification of the ’099 Patent:
`
`Playlists also facilitate the playing of a plurality of selections in a
`particular order. That is, the playlist may be compiled in an order
`in which the playing of selections therefrom is desired. The selections
`may then be automatically played sequentially from the playlist.
`Typically, selections may also be played randomly from a playlist.
`
`
`PO Resp. 10; Ex. 1001, 1:45–52 (emphasis added).2 As noted by Petitioner, this
`
`passage reflects that a playlist may have a particular order of selections (see Pet.
`
`Reply 6), but also expressly discloses that selections may be played randomly from
`
`a playlist.
`
`
`
`Patent Owner also relies on extrinsic evidence in the form of witness
`
`testimony, which we find unpersuasive. Patent Owner cites to the Declaration of
`
`its expert witness, Dr. Gareth Loy, who opines that one of ordinary skill in the art
`
`would have understood that playing a playlist “means to play a playlist in
`
`sequence.” PO Resp. 9–12; Ex. 2001 ¶ 54. This testimony is contrary to the
`
`above-cited portions of the specification, which expressly define playlist and also
`
`provide that selections may be played randomly. Ex. 1001, 1:33–34, 1:52. Indeed,
`
`the term “sequence” urged by Patent Owner, appears only once in the entire
`
`
`2 Patent Owner misquotes the cited excerpt from the ’099 patent, asserting, “The
`‘099 patent also states: Playlists also facilitate the playing of a plurality of
`selections in a particular sequence. . . .” PO Resp. 10. The word “sequence,”
`however, nowhere appears in that cited excerpt of the ’099 patent. Ex. 1001, 1:48–
`49. We attribute Patent Owner’s insertion of “sequence” into the excerpt to be an
`inadvertent error.
`
`8
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`specification, in an unrelated description of the sequence of steps for constructing
`
`and operating the invention. Id. at 8:4–5. Patent Owner also cites to excerpts of
`
`the deposition testimony of Petitioner’s expert witness, Dr. V. Michael Bove, Jr.,
`
`whose testimony that a playlist may be played in a “sequence” refers to how a
`
`playlist is played by a media player, rather than to what constitutes a playlist. PO
`
`Resp. 12; see Pet. Reply 5; Ex. 2012, 217:1–218:7. Dr. Bove further opines that
`
`the construction in the Decision to Institute is the broadest reasonable construction
`
`consistent with the specification. PO Resp. 13; Ex. 2012, 280:19–281:7.
`
`As we stated in the Decision to Institute, we are persuaded that the
`
`construction proposed by Patent Owner is too narrow and would exclude the
`
`embodiment described in the specification. Accordingly, we decline to adopt
`
`Patent Owner’s proposed construction, and maintain the construction of playlist
`
`from the Decision to Institute, i.e., “a list of media selections.”
`
`Patent Owner’s Response for the first time proposes a construction for “a
`
`wireless handheld remote control which is associated with and separate from the
`
`media player device,” arguing that the term requires “a handheld remote control
`
`that can operate as an independent device relative to the media player that it
`
`control.” PO Resp. 14–16 (emphasis and grammatical error in original); see also
`
`Tr. 70:1–14 (“independent and separate would be synonyms.”). Petitioner argues
`
`that Patent Owner’s proposal is narrow and excludes “a standard remote control for
`
`a device,” Pet. Reply 8–9. We agree, as in addition to the Petitioner’s contentions,
`
`we note the terms “operate” and “independent” do not appear in the ’099 patent.
`
`9
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`We decline to adopt Patent Owner’s proposed construction over the ordinary and
`
`customary meaning of the term.
`
`For the term “remote source,” in the Decision to Institute, we adopted the
`
`Petitioner’s proposed construction (“a source of a playlist that is separate from a
`
`remote control”). Dec. to Inst. 9. Patent Owner has not proposed a construction
`
`for “remote source,” which is a term found only in the claims of the ’099 patent,
`
`where it is not defined. We see no reason to alter the construction from the
`
`Decision to Institute, and maintain the construction for this Final Written Decision.
`
`In the Decision to Institute, we also construed “media player device” as “a
`
`device capable of playing audio or video or a combination of both.” Dec. to Inst.
`
`9–10. Neither party has thereafter discussed this term. We see no reason to alter
`
`this construction, and maintain the construction for this Final Written Decision.
`
`All other claim terms are given their ordinary and customary meaning and
`
`need not be further construed.
`
`B. Motion to Amend
`
`In its Motion to Amend, Patent Owner moves to cancel independent claim 1
`
`and dependent claim 9. Paper 25. Petitioner’s Reply does not oppose the motion.
`
`Pet. Reply 1. We grant the motion to amend, and proceed to analyze the remaining
`
`five claims.
`
`C. 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
`
`10
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`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 and one year of practical experience
`
`with networked media.” PO Resp. 7. The parties dispute Petitioner’s use of the
`
`qualifying phrase “at least” in describing the level of education and work
`
`experience. While we disagree with Patent Owner’s argument that “at least” is
`
`“improper because it is open-ended” (PO Resp. 7–8),3 we determine that an
`
`express definition of the level of ordinary skill is not required.
`
`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). Here, neither party has provided a sufficient
`
`explanation as to how their specific proposal regarding the level of ordinary skill
`
`(and in particular the importance of the inclusion or exclusion of “at least”) affects
`
`the analysis in this case. Therefore, we find the level of ordinary skill in the art to
`
`
`3 There is ample authority upholding the usage of “at least” in describing the level
`of ordinary skill in the art. See, e.g., Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d.
`1352, 1358 (Fed. Cir. 2011); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
`1324, 1332 (Fed. Cir. 2009). The Board similarly has made determinations
`regarding the level of skill in the art without delineating an upper limit on
`experience. See, e.g., Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00010, 2014 WL 869413 (PTAB Feb. 24, 2014); Apple Inc. v. Achates
`Reference Publ’g, Inc., 2014 WL 2530789 (PTAB June 2, 2014).
`11
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`be reflected in the cited references and we determine that no express statement of
`
`the level of ordinary skill in the art is required.
`
`D. Claims 2, 6, 10–12 – Anticipated by Bi
`
`Petitioner contends claims 2, 6, and 10–12 are unpatentable under 35 U.S.C.
`
`§ 102(b) as anticipated by Bi. Pet. 10–20. We have reviewed the Petition, the
`
`Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence
`
`discussed in each of those papers, and are persuaded, by a preponderance of the
`
`evidence, that claims 2, 6, and 10–12 are anticipated by Bi.
`
`Bi (Exhibit 1008)
`
`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 computer or other computing platform. Pet. 11. Ex. 1008, Abstract. The
`
`interactive remote control provides various functions, such as playback of current
`
`digital audio or video content, selection of new audio or video content, and
`
`providing lists of content for playback. Ex. 1008 ¶ 7. Figure 2 of Bi is reproduced
`
`below.
`
`12
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`
`
`
`
`Figure 2 depicts data server 102 that provides digital audio or video data via the
`
`Internet or other network 101 to computing platform 110. Navigator 260 is a
`
`wireless remote control that communicates with computing platform 100 to control
`
`selection of audio or video data. Ex. 1008 ¶ 20. Navigator control manager 154
`
`runs on computing platform 100, and takes user input on navigator 260 and
`
`translates the input 270 into commands and actions for audio or video application
`
`151, and then takes results from actions of audio or video application 151 to
`
`provide user outputs 271, such as updated graphics on navigator 260. Id. ¶ 31.
`
`13
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`Figure 7 of Bi is reproduced below.
`
`
`
`
`
`
`
`Figure 7 is a diagram of the software flow of navigator control manager 154. Ex.
`
`1008 ¶ 31. Steps 188–193 depict the browsing and selection of music utilizing
`
`navigator 260. Pet. 12; Ex. 1008 ¶ 31. In step 188, if there is a browse music
`
`command from navigator 260, then in step 189, navigator control manager 154
`
`checks if the music to browse is local to computing platform 100. Ex. 1008 ¶ 31.
`
`14
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`“Typically, a browse of music is based on such criteria as music track, album,
`
`artist, music genre, and playlists.” Id. If the music to browse is local, in step 191
`
`navigator control manager 154 sends results of local music browse to navigator
`
`260. Id. If the music to browse is not local, navigator control manager 154
`
`requests music information from data server 193 and then sends the results to
`
`navigator 260. Id.
`
`Analysis
`
`In support of this asserted ground of unpatentability, Petitioner provides
`
`explanations of how the subject matter of each claim is disclosed by Bi. Pet. 14–
`
`20.
`
`Claim 2 directly depends from claim 1 and recites that the “playlist is further
`
`communicated from the remote source to the media player device.” Ex. 1001,
`
`11:28–30. Patent Owner contends “the use of the term ‘further’ in claim 2 . . .
`
`supports the interpretation of claim 2 as requiring that the handheld remote control
`
`receive the playlist from a source other than the media player device.” PO Resp.
`
`25. Patent Owner then asserts that Bi’s navigator 260 does not receive a playlist
`
`from data server 102, which is “a source other than the media player device.” PO
`
`Resp. 24–26.
`
`We disagree with Patent Owner’s unduly restrictive construction of claims 1
`
`and 2 as requiring the remote control to receive a playlist directly from a remote
`
`server. In contrast, the ’099 specification discloses that the communication of
`
`playlists, from the remote server to the media player device and to the remote
`
`15
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`control unit, may occur in several different ways, either directly from the server
`
`(Ex. 1001, 9:1–4) or indirectly, through the media player device to the remote
`
`control unit, or through the remote control unit to the media player device (id. at
`
`9:9–20). Thus, Patent Owner’s argument would exclude disclosed embodiments of
`
`the ’099 patent, and we do not construe claim 2 to require a remote control to
`
`receive a playlist directly from a remote server. For claim 2, Petitioner contends
`
`Bi’s data server 102, which is a remote source, communicates a playlist to
`
`computing platform 100, which is a media player device. Pet. 15; Ex. 1008 ¶ 32.
`
`We conclude that Petitioner has shown by a preponderance of the evidence that Bi
`
`anticipates dependent claim 2.
`
`Claim 6 also directly depends from claim 1, reciting that “the remote source
`
`is a central server,” Ex. 1001, 11:50–51. As with claim 2, Patent Owner contends
`
`that claim 6 “should be understood as the handheld remote control receiving a
`
`playlist from a central server without the playlist first being communicated to the
`
`media player device, and then from the media player device to the handheld remote
`
`control.” PO Resp. 32. Again, we reject this argument as unsupported by the ’099
`
`specification, which expressly describes communication of a playlist to a remote
`
`from a central server via a media player device. Ex. 1001, 9:1–23. Petitioner
`
`contends Bi’s data server 102 is the recited central server of claim 6. Pet. 15; Ex.
`
`1008 ¶ 18, Fig. 1. We conclude that Petitioner has shown by a preponderance of
`
`the evidence that Bi anticipates dependent claim 6.
`
`Independent claim 10 recites a wireless handheld remote control that
`
`receives a playlist from a remote source. Ex. 1001, 12:11–17. Independent claim
`
`16
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`11 is a method claim reciting the communication of a playlist from a remote source
`
`to a media player device, and from the media player device to a wireless handheld
`
`remote control. Id. at 12:24–29. Independent claim 12 recites a media player
`
`device that receives a playlist from a remote source and communicates the playlist
`
`to a wireless handheld remote control. Id. at 12:35–44.
`
`On independent claims 10, 11, and 12, Patent Owner asserts Bi’s navigator
`
`does not receive a playlist. PO Resp. 36–37, 39–40, 45. We have construed
`
`“playlist” to be “a list of media selections.” See Section II. A. Petitioner cites to
`
`Figure 7 and paragraph 32 of Bi, which disclose that a browse of music may be
`
`based on criteria including playlists, and that results of a browse of music are sent
`
`to navigator 260. Pet. 17–19; Pet. Reply 9, 15. At the oral hearing, Patent
`
`Owner’s counsel stated that the results of a browse of music sent to navigator 260
`
`are “most likely a list of titles that are being sent to the navigator.” Tr. Oral Hr’g
`
`72:3–20.
`
`Petitioner also notes that Bi discloses its “interactive remote control provides
`
`various functions, such as playback of current digital audio or video content;
`
`selection of new audio or video content; and providing lists of content for
`
`playback.” Pet. 12; Ex. 1008 ¶ 7 (emphasis added). As Petitioner argues, “Bi
`
`discloses that browsing of music can be based upon criteria including playlists. . . .
`
`To browse based upon a playlist, a playlist is necessarily provided to the navigator
`
`260 from the computing platform 100 and displayed on the navigator.” Pet. Reply
`
`15. We agree, and determine that Petitioner has proven that Bi discloses the
`
`recited receipt of a playlist by navigator 260.
`
`17
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`Patent Owner also contends that, with respect to claim 10, “there is no
`
`reason to conclude that such a playlist would be necessarily sent by the data server
`
`102 to the computing platform 100.” PO Resp. 37. Claim 10, however, recites
`
`only the communication of a playlist from a remote source to the remote control,
`
`without any receipt by a media player device. Ex. 1001, 12:11–17. Petitioner
`
`provides evidence that this limitation recited in claim 10 (and claim 1) is disclosed
`
`by Bi. Pet. 14, 17; Ex. 1008, Fig. 7, ¶ 32.
`
`Patent Owner further asserts claim 10’s limitation of the “media player
`
`device is associated with and separate from the wireless handheld remote control”
`
`requires navigator 260 to be “capable of functioning independently of” the media
`
`player device. PO Resp. 38. As set forth above in Section II. A, we do not adopt
`
`Patent Owner’s proposed construction of this limitation. Petitioner’s evidence is
`
`sufficient to show Bi’s navigator as associated with and separate from its
`
`computing platform. Ex. 1008 ¶¶ 31–32, Figs. 5, 7.
`
`Finally, on claims 11 and 12, which include the limitation of the playlist
`
`being communicated from a media player device to a remote control, Patent Owner
`
`argues, “Bi does not disclose that the computing platform 100 communicates the
`
`browse results in the form of a playlist to the navigator 260.” PO Resp. 40, 45–46.
`
`Petitioner contends Bi’s computing platform does communicate the playlist to the
`
`navigator. Pet. 18; Ex. 1008 ¶ 32, Fig. 7. We are persuaded of Bi’s disclosure of
`
`this limitation in claims 11 and 12.
`
`Accordingly, we are persuaded by a preponderance of the evidence of the
`
`unpatentability of claims 2, 6, and 10–12 as anticipated by Bi.
`
`18
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`E. Claims 2, 6, 11, and 12: Anticipated by Gladwin
`
`Petitioner contends claims 2, 6, 11, and 12 are unpatentable under 35 U.S.C.
`
`§ 102(b) as anticipated by Gladwin. Pet. 21–26. We have reviewed the Petition,
`
`the Patent Owner Response, and Petitioner’s Reply, as well as the relevant
`
`evidence discussed in each of those papers, and are persuaded Petitioner has
`
`proven by a preponderance of the evidence that claims 2, 6, 11, and 12 are
`
`anticipated by Gladwin.
`
`Gladwin (Exhibit 1009)
`
`Gladwin is titled, “Structure and Method for Selecting, Controlling and
`
`Sending Internet-Based or Local Digital Audio to an AM/FM Radio or Analog
`
`Amplifier.” Petitioner contends Gladwin discloses a remote device interfacing
`
`with a personal computer that obtains audio “from the Internet or other digital
`
`audio from any web server.” Pet. 21–22 (citing Ex. 1009, 3:1–9). Figure 1 of
`
`Gladwin is reproduced below.
`
`
`
`19
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`In Figure 1, digital audio obtained by host PC 26 via the Internet is selected by
`
`remote device 22 to be played through a radio or stereo amplifier 28 using PC
`
`adapter 24. Ex. 1009, 3–4. The digital audio data is organized as a play list. Id. at
`
`4:13–14. Petitioner contends Gladwin “discloses precisely what was asserted to be
`
`missing from the prior art during the prosecution of the ’099 patent” – a wireless
`
`handheld remote for selecting an item from a playlist for playback on a separate
`
`media player device. Pet. 23–26 (citing Ex. 1009, 3–6, Figs. 1–6).
`
`Analysis
`
`In support of this asserted ground of unpatentability, Petitioner provides
`
`explanations of how the subject matter of each claim is disclosed by Gladwin. Pet.
`
`21–26.
`
`Claim 2 directly depends from cancelled claim 1 and recites that “the
`
`playlist is further communicated from the remote source to the media player
`
`device” (Ex. 1001, 11:28–30). Patent Owner argues Gladwin does not disclose the
`
`receipt of a playlist by a media player device because the PC host of Gladwin is
`
`not a media player device, and the PC adapter of Gladwin, which “broadcasts
`
`analog radio data” (Ex. 1009, 3:28) is a “separate device” from the PC host. PO
`
`Resp. 27–28. Although Petitioner’s Reply is silent on this issue as to claim 2, the
`
`Petition contends the playlist is communicated from a remote server to the Host
`
`PC, which along with “PC adapter 24 constitute a media player device.” Pet. 24;
`
`Ex. 1009, 4:12–14, Figs. 1, 5. Petitioner’s Reply argues as to a similar limitation
`
`in claim 11:
`
`20
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`Patent Owner is thus arguing that a media player device must be a
`unitary device. But there is no such limitation in the claims. Indeed, as
`noted by the Board, the '099 specification states that the player device
`may be a general purpose computer (8:61-62), which would, of
`course, encompass a standard desktop computer having a separate
`computer, keyboard, and monitor.
`
`Pet. Reply 10. We agree with Petitioner that Patent Owner’s argument is not
`
`supported by the claim language or the ’099 specification. We determine that
`
`Gladwin’s PC host and PC adapter disclose the media player device recited in
`
`claim 2, and that Gladwin anticipates dependent claim 2.
`
`Claim 6 also directly depends from cancelled claim 1 and recites that the
`
`remote source is a central server. Ex. 1001, 11:50–51. Patent Owner contends
`
`claim 6 requires Gladwin’s remote device to receive data directly from a web
`
`server. PO Resp. 33. The Reply is silent on this issue as to claim 6, and the
`
`Petition states only that “[p]roxy server 29 and other web servers are central
`
`servers.” Pet. 24; Ex. 1009 4:6–9, Fig. 1. We find, however, that Gladwin
`
`discloses that the proxy server links to digital audio sources on the Internet, and
`
`that digital audio data “is organized as a play list” by the PC, and the play list is
`
`transferred to the remote device. Ex. 1009, 4:6–14. The ’099 patent expressly
`
`describes various direct and indirect communications of playlists from remote
`
`sources to media players and remote controls, Ex. 1001, 9:1–23. Patent Owner’s
`
`argument would exclude disclosed embodiments of the ’099 patent, and we do not
`
`construe claim 6 to require a remote control to receive a playlist directly from a
`
`remote server. Thus, we determine that Gladwin discloses the remote source of
`
`21
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`claim 6 from which the remote control indirectly receives a playlist, and therefore,
`
`anticipates dependent claim 6.
`
`On independent claim 11, Patent Owner first argues that Gladwin does not
`
`disclose the receipt of a playlist by a media player device because the PC host and
`
`PC adapter of Gladwin are “separate devices.” PO Resp. 40–41. Petitioner’s
`
`Reply contends:
`
`Patent Owner is thus arguing that a media player device must be a
`unitary device. But there is no such limitation in the claims. Indeed, as
`noted by the Board, the '099 specification states that the player device
`may be a general purpose computer (8:61-62), which would, of
`course, encompass a standard desktop computer having a separate
`computer, keyboard, and monitor.
`
`Pet. Reply 10. As with claim 2, we agree with Petitioner that Patent Owner’s
`
`argument is not supported by the claim language. Patent Owner also argues that
`
`the PC host and adapter “are not capable of playing music,” (PO Resp. 41), but
`
`Gladwin discloses an audio player in the host PC, and PC software that plays
`
`music. Ex. 1009, 4:15–16, 4:22–24, 5:1–5, Fig. 6. In addition, Patent Owner
`
`asserts Gladwin fails to disclose the communication of a playlist from the media
`
`player device to the remote control (PO Resp. 41), but this argument fails in light
`
`of our finding that the media player device in Gladwin includes the host PC, which
`
`transfers the playlist to the remote control. Pet. 25; Ex. 1009, 4:12–14, 5:13–16,
`
`Figs. 1–4, 8. We conclude that Gladwin anticipates claim 11.
`
`
`
`On independent claim 12, Patent Owner asserts that Gladwin fails to
`
`disclose a media player receiving a playlist from a remote source. PO Resp. 46.
`
`22
`
`
`
`

`

`IPR2013-00597
`Patent 8,230,099 B2
`
`
`As stated above, we find that Gladwin’s media player includes the host PC, and as
`
`the Petition contends, the host PC can receive from the internet, audio “data [that]
`
`is organized as a play list.” Pet. 26; Ex. 1009, 4:12–14, Fig. 5. In addition, as with
`
`claim 11, Patent Owner asserts Gladwin fails to disclose the communication of a
`
`playlist from the media player device to the remote control (PO Resp. 46), but
`
`again, this argument fails in light of our finding that the media player device in
`
`Gladwin includes the host PC, which transfers the playlist to the remote control.
`
`Pet. 26; Ex. 1009, 4:12–14, 5:13–16, Figs. 1–4, 8. We conclude that Gladwin
`
`anticipates claim 12.
`
`F. Claims 2, 6, 11, and 12: Obvious Over Berman
`
`Petitioner contends claims 2, 6, 11, and 12 are unpatentable under 35 U.S.C.
`
`§ 103 as obvious over Berman. Pet. 27–35. We have reviewed the Petition, the
`
`