Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 18
`Entered: February 13, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00711
`Patent 8,230,099 B2
`____________
`
`Before BRIAN J. McNAMARA, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 18
`Entered: February 13, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00711
`Patent 8,230,099 B2
`____________
`
`Before BRIAN J. McNAMARA, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`IPR2014-00711
`Patent 8,230,099 B2
`
`
`I.
`INTRODUCTION
`On November 18, 2014, Black Hills Media, LLC’s (“Patent Owner”)
`filed a Request for Rehearing (Paper 9, “Req.”) of our Decision to Institute
`(Paper 7, “Dec.”), dated November 4, 2014, which instituted inter partes
`review of claims 10–12 of U.S. Patent No. 8,230,099 B2 (Ex. 1001, “the
`’099 patent”).
`In its Request, Patent Owner argues that the Decision to Institute (1)
`applied an erroneous legal standard for the construction of the term
`“playlist” recited in the challenged claims and (2) overlooked Patent
`Owner’s evidence on the ordinary and customary meaning of “playlist.”
`Req. 1–2.
`For the reasons set forth below, the request for rehearing is denied.
`II.
`STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
`(Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
`request must identify, with specificity, all matters that the moving party
`believes the Board misapprehended or overlooked. See 37 C.F.R.
`§ 42.71(d).
`
`
`
`2
`
`
`
`IPR2014-00711
`Patent 8,230,099 B2
`
`
`III.
` DISCUSSION
`For purposes of the Decision to Institute, we construed the term
`“playlist” as “a list of media selections.” Dec. 8–10. As we explained, the
`Specification of the ’099 patent discloses that a “playlist is a list of a user’s
`favorite selections.” Dec. 9 (citing Ex. 1001, 1:33–34). We also considered
`the different proposed constructions and supporting evidence provided by
`the Petitioner and Patent Owner for “playlist.” Id. at 9. In the Decision, we
`adopted Petitioner’s proposed construction, which we had determined to be
`the broadest reasonable construction in Yamaha Corporation of America v.
`Black Hills Media LLC, Case IPR2013-00597, slip op. at 9 (PTAB Mar. 20,
`2014) (Paper 15), also involving the ’099 patent. With respect to Patent
`Owner’s proposal, we were not persuaded that the broadest reasonable
`construction of “playlist” is “a list referencing media items arranged to be
`played in a sequence.” Dec. 9–10.
`Additionally, in the Decision to Institute, we provided the general
`principles governing our claim construction. Dec. 8–9. These general
`principles are that:
`(1)
`claim terms in an unexpired patent are given their broadest
`reasonable construction in light of the specification of the
`patent in which they appear (id. at 8);
`
`(2)
`
`(3)
`
`there is a heavy presumption that claim terms are given their
`ordinary and customary meaning (id. at 9); and
`
`a patentee can act as his own lexicographer and clearly set forth
`a definition for a claim term (id.).
`
`In its Request for Rehearing, Patent Owner argues that the Decision to
`Institute erred by not adopting Patent Owner’s proposed construction of
`“playlist” as “a list referencing media items arranged to be played in a
`
`
`
`3
`
`
`
`IPR2014-00711
`Patent 8,230,099 B2
`
`sequence.” Req. 4. Patent Owner asserts that we did not apply the broadest
`reasonable construction standard because we overlooked the evidence of
`record on the ordinary and customary meaning of “playlist” and enlarged the
`scope of the term beyond the ordinary and customary meaning. Id. at 3.
`Patent Owner also contends that “the items in a playlist – including in the
`context of the ‘099 patent – are arranged in a certain order to be played in a
`sequence unless and until the user changes the order.” Id. at 5 (citing Ex.
`2006 ¶¶ 42, 44, 46, 48, 54, 58).
`We determined that limiting the meaning of “playlist” to those
`examples that specify how the items of a playlist are played, such as the
`order or sequence of the items played, would exclude an embodiment
`described in the Specification that is not limited in this manner. See Dec. 9.
`We continue to be persuaded that, for the purposes of the Decision to
`Institute, “playlist” would have been understood by one of ordinary skill in
`the art as “a list of media selections.”
`We also disagree that the Decision to Institute overlooked any
`evidence provided by the Patent Owner. As discussed above, we considered
`the Preliminary Response and accompanying exhibits, including the
`declaration of Gareth Loy. Id. Based on the current record, we were
`persuaded, and remain persuaded, that the Specification and claim language
`itself requires a broader construction than that espoused by Patent Owner’s
`arguments and extrinsic evidence.
`For the foregoing reasons, Patent Owner has not shown that the Board
`abused its discretion in instituting the instant proceeding on the grounds
`specified in the Decision to Institute.
`
`
`
`4
`
`
`
`IPR2014-00711
`Patent 8,230,099 B2
`
`
`IV. ORDER
`Accordingly, it is hereby ORDERED that Patent Owner’s request for
`rehearing is denied.
`
`
`PETITIONER:
`
`Andrea Reister
`areister@cov.com
`
`Gregory Discher
`gdischer@cov.com
`
`PATENT OWNER:
`
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Christopher Horgan
`chris.horgan@concerttechnology.com
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
