UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent No. 7,787,904
`
`: Attorney Docket No. 081841.0108
`
`Inventors: Alfredo C. Issa
`
`
`
`Filed:
`
`November 9, 2005
`
`
`
`
`
`Claimed Priority: November 9, 2005
`
`:
`
`:
`
`:
`
`Issued:
`
`August 31, 2010
`
`
`
`
`
`: IPR No. Unassigned
`
`Assignee: Qurio Holdings, Inc.
`
`Title:
`
`Personal Area Network Having Media Player and Mobile Device
`Controlling the Same
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 2, 3, 4, 7, 10, 12,
`13, 14, 15, 16, 17, 18, AND 20 OF U.S. PATENT NO. 7,787,904 UNDER 35
`U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ.
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`MANDATORY NOTICES, STANDING, AND FEES .................................. 1 
`
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2 
`
`A.  Publications Relied Upon ........................................................................ 2 
`
`B.  Grounds For Challenge ............................................................................ 3 
`
`III.  OVERVIEW OF THE ’904 PATENT ............................................................ 3 
`
`A.  Summary of the Claimed Subject Matter ................................................ 3 
`
`IV.  SUMMARY OF PRIOR ART AND REFERENCES RELIED ON ............... 4 
`
`A.  Brief Summary of Morse ......................................................................... 4 
`
`B.  Brief Summary of Meade ........................................................................ 5 
`
`C.  Brief Summary of Terada ........................................................................ 6 
`
`D.  Brief Summary of Krikorian .................................................................... 6 
`
`V. 
`
`CLAIM CONSTRUCTION ............................................................................ 6 
`
`A.  Level of Ordinary Skill in the Art ............................................................ 7 
`
`B.  “WPAN” (Claims 1, 2, 10, 12-18, and 20) .............................................. 7 
`
`C.  “mobile device” (Claims 1-4, 10, 12-18, and 20) .................................... 8 
`
`D.  “media device” (Claims 1-3, 10, 12-18, and 20) ..................................... 9 
`
`E. 
`
`“validation process” (Claim 14) .............................................................. 9 
`
`VI.  A REASONABLE LIKELIHOOD EXISTS THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ............................................................ 10 
`
`A.  Ground 1: The ’904 Patent Claims 1-4, 7, 10, 12, and 15-18 are
`obvious over Morse in view of Meade .................................................. 10 
`
`B.  Ground 2: The ’904 Patent Claims 13 and 20 are obvious over
`Morse and Meade in view of Terada ..................................................... 49 
`
`
`
`i
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`C.  Ground 3: The ’904 Patent Claim 14 is obvious over Morse and
`Meade in view of Krikorian ................................................................... 55 
`
`VII.  CONCLUSION .............................................................................................. 58 
`
`
`
`
`
`ii
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`LIST OF EXHIBITS
`
`1001 U.S. Patent No. 7,787,904 by Alfredo C. Issa entitled “High-Speed WAN
`to Wireless LAN Gateway” (the “’904 Patent”)
`
`1002 File History for U.S. Patent No. 7,787,904
`
`1003 Declaration of Jeffrey Fischer
`
`1004 U.S. Patent No. 7,535,465 to Morse et al. entitled “Method and System
`to Display Media Content Data” (“Morse”)
`
`1005 U.S. Patent Publication No. 2003/0071117 by Meade, entitled “System
`and Method for Determining Priority Among Multiple Mobile
`Computing Devices to Control an Appliance” (“Meade”)
`
`1006 U.S. Patent Publication No. 2004/0073610 by Terada et al. entitled
`“Contents Reproducing System” (“Terada”)
`
`1007 U.S. Patent No. 7,647,614 by Krikorian et al. entitled “Fast Start
`Streaming and Buffering of Streaming Content for Personal Media
`Player” (“Krikorian”)
`
`1008
`
`IEEE 802.15.1 WPAN standard published in 2005
`
`1009  Complaint, Qurio Holdings, Inc. v. DISH Network Corporation et al.,
`No. 14-CV-7504 (N.D. Ill.) 
`
`1010  First Amended Complaint, Qurio Holdings, Inc. v. DISH Network
`Corporation et al., No. 14-CV-7504 (N.D. Ill.) 
`
`1011  Qurio Holding, Inc.’s Proposed Claim Constructions as served in the
`District Court Litigation for U.S. Patent No. 7,787,904 (as redacted by
`Qurio) 
`
`1012 Service of Complaint on DISH Network L.L.C. and DISH Network
`Corporation
`
`1013 Defendants’ Proposed Claim Constructions as served in the District
`Court Litigation
`
`
`
`iii
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`1014 Qurio Holding, Inc.’s Infringement Contentions for U.S. Patent No.
`7,787,904, as served in the District Court Litigation
`
`
`
`iv
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`I. MANDATORY NOTICES, STANDING, AND FEES
`Real Party-in-Interest: Petitioner DISH Network L.L.C. (“DISH” or
`
`“Petitioner”) along with non-parties EchoStar Corporation, EchoStar Technologies
`
`L.L.C., and Sling Media, Inc. (collectively, “EchoStar”) and DISH Network
`
`Corporation are real parties-in-interest to this petition.
`
`Related Matters: U.S. Patent No. 7,787,904 is currently involved in a
`
`pending lawsuit involving Petitioner, entitled Qurio Holdings, Inc. v. DISH
`
`Network L.L.C., 3-15-CV-930-HSG (N.D. Cal.) (the “District Court Litigation”).
`
`See Ex. 1008 & 1009. The ‘904 Patent is also asserted in Qurio Holdings, Inc. v.
`
`DirecTV, LLC, et al., 3-15-cv-01986-HSG (N.D. Cal.), and Qurio Holdings, Inc. v.
`
`Comcast Cable Communications, LLC, 2-15-cv-03334-JRS (E.D. Pa.), and is
`
`challenged in the PTAB in IPR2015-01991, filed by unrelated-party Unified
`
`Patents (“’991 Petition”). No Petitioner or real party-in-interest to this Petition is a
`
`real party-in-interest or in privity with Unified Patents.
`
`Lead Counsel and Request for Authorization: Pursuant to 37 C.F.R.
`
`§§ 42.8(b)(3) and 42.10(a), Petitioner designates the following: Lead Counsel is
`
`Eliot D. Williams (Reg. No. 50,822) of Baker Botts L.L.P.; Back-up Counsel is G.
`
`Hopkins Guy III (Reg. No. 35,886) of Baker Botts L.L.P.
`
`Service information is as follows: Baker Botts L.L.P., 1001 Page Mill Rd.,
`
`Palo Alto, CA 94304-1007 Tel. 650-739-7500; Fax 650-736-7699. Petitioner
`
`consents to service by electronic mail at eliot.williams@bakerbotts.com and
`
`1
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`hop.guy@bakerbotts.com.
`
`Certification of Grounds for Standing: Petitioner certifies that the ’904
`
`Patent is eligible for inter partes review and that the Petitioner and each real party-
`
`in-interest is not barred or estopped from requesting inter partes review on these
`
`grounds.
`
`Fees: The Office is authorized to charge the fee set forth in 37 C.F.R.
`
`§ 42.15(a) to Deposit Account No. 02-0384 as well as any additional fees that
`
`might be due in connection with this Petition.
`
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Petitioner challenges claims 1–4, 7, 10, 12–18, and 20 of U.S. Patent No.
`
`7,787,904 by Alfredo C. Issa (the “’904 Patent”), titled “Personal Area Network
`
`Having Media Player and Mobile Device Controlling the Same.” See Ex. 1001.
`
`A.
`Publications Relied Upon
`Petitioner relies upon the following patents and publications:
`
`Exhibit 1004—U.S. Patent No. 7,535,465 to Morse et al. (“Morse”). Morse
`
`is prior art under at least 35 U.S.C. §§ 102(a) and 102(e) because it was filed on
`
`September 2, 2003. published on March 17, 2005, and issued into a U.S. patent on
`
`May 19, 2009.
`
`Exhibit 1005—U.S. Patent Publication No. 2003/0071117 by Meade
`
`(“Meade”). Meade is prior art under at least 35 U.S.C. §§ 102(b) and 102(e)
`
`because it was filed on October 16, 2001 and published on April 17, 2003.
`
`Exhibit 1006—U.S. Patent Publication No. 2004/0073610 by Terada et al.
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`(“Terada”). Terada is prior art under at least 35 U.S.C. §§ 102(b) and 102(e)
`
`because it was filed September 22, 2003 and published on April 15, 2004.
`
`Exhibit 1007—U.S. Patent No. 7,647,614 by Krikorian et al. (“Krikorian”).
`
`Krikorian is prior art under at least 35 U.S.C. § 102(e) because it was filed on June
`
`7, 2005 and issued into a U.S. Patent on January 12, 2010.
`
`B. Grounds For Challenge
`Petitioner requests cancellation of the claims on the following grounds:
`
`1.
`
`Claims 1–4, 7, 10, 12, and 15–18 are obvious over Morse in view of
`
`Meade.
`
`2.
`
`Claims 13 and 20 are obvious over Morse and Meade in view of
`
`Terada.
`
`3.
`
`Claim 14 is obvious over Morse and Meade in view of Krikorian.
`
`III. OVERVIEW OF THE ’904 PATENT
`A.
`Summary of the Claimed Subject Matter
`Petitioner is not aware at this time of any basis for an assertion of a priority
`
`date for the ‘904 Patent earlier than Nov. 9, 2005. The ‘904 Patent (Ex. 1001)
`
`states that the “invention provides a system for controlling content played by a
`
`number of media devices.” Id. at 2:57-58. The ‘904 specification discloses using a
`
`mobile device to communicate with one or more media devices through “wireless
`
`personal area networks (WPANs).” Id. at 2:59-60. The mobile device “may be a
`
`mobile phone, Personal Digital Assistant (PDA), or the like,” or “a standalone
`
`3
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`device similar to a remote control,” that uses the WPAN to obtain metadata
`
`information describing content available for playback by the media device. Id. at
`
`3:9-14, 4:4-7.
`
`With reference to Figure 2, the ‘904
`
`specification discloses
`
`that
`
`the “media
`
`devices 16 and 18 may be a personal
`
`computer … an audio player such as an [MP3] player…or the like” (id. at 3:26-31),
`
`and “includes a media player 28 and a WPAN media server 30.” Id. at 3:48-49.
`
`The “wireless communication interface 22” may be a “stand-alone device” used to
`
`facilitate communication between the media device and a mobile device. Id. at
`
`3:33-39; Fig. 2. The media device may also include a “content database 26,”
`
`storing content for playback by the media player. Id. at 3:50-52; Fig. 2.
`
`IV. SUMMARY OF PRIOR ART AND REFERENCES RELIED ON
`None of the prior art discussed below was considered by the Patent Office
`
`during prosecution of the ‘904 Patent. Secondary considerations do not support a
`
`finding of nonobviousness. There is no evidence that the Patent Owner will be
`
`able to show any secondary consideration. Should the Patent Owner introduce
`
`evidence of secondary considerations, Petitioners respectfully request an
`
`opportunity to respond.
`
`A.
`Brief Summary of Morse
`Morse discloses a remote control system for displaying “media content data
`
`4
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`for playback on a playback device,” for selection by a user. Id. at 1:31-48. For
`
`example, Morse discloses a portable “hand-held” remote control with a display that
`
`allows “a user to browse … and select media content stored on the media content
`
`storage device 14.” Id. at 4:36-39. The “remote control device” is in wireless
`
`communication with media components, including a “playback unit,” connected to
`
`a “media content storage device.” Id. at 3:26-36; Fig. 2. The “playback device 31,”
`
`may be a television. Id. The “remote control device 34” and “playback unit 32”
`
`may communicate using “radio frequency interfaces, optical interfaces (e.g.,
`
`infrared),” which may have a “low power” and “an operating range suitable for use
`
`in a domestic dwelling.” Id. at 4:42-47, 6:36-39.
`
`The remote control of Morse may control content storage and playback of
`
`multiple media systems. Id. at 5:16-30; 9:52-56, Figs. 4, 15. The remote control
`
`also stores “content data,” in a “media content data stack” database. Id. at 8:37-40.
`
`B.
`Brief Summary of Meade
`Meade also teaches systems and methods for controlling a plurality of video
`
`device and audio device “appliances,” with “a mobile computing device, such as a
`
`personal digital assistant.” Ex. 1005 at ¶ 8. Meade discloses the mobile computing
`
`device may wirelessly communicate in a protocol that “permits direct one-to-one
`
`communication,” for example, “Wireless Application Protocol (WAP), Bluetooth,
`
`Infrared (IrDA, FIR), 802.11,” or “UltraWideBand (UWB).” Id. at ¶¶ 46-47. When
`
`in range, the mobile computing device “automatically or manually selects content
`
`5
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`available through appliance 13 for performance on appliance 13.” Id. at ¶ 36; Fig. 3.
`
`In addition, the mobile computing device may maintain “a list of video
`
`and/or TV programs that can be selected for viewing on video device 14.” and
`
`specify “desired recording of programs to be recorded from TV (and other sources)
`
`as well as designating playback of those recorded programs.” Id. at ¶ 73.
`
`C.
`Brief Summary of Terada
`Terada teaches a “contents reproducing system” including a PDA 202 to
`
`control storage and playback of content. Ex. 1006 at ¶¶ 2, 48. Terada teaches
`
`storing a “bookmark” with the PDA to allow resuming content on another device.
`
`Id. at ¶¶ 87-88; Ex. 1003 at ¶ 82. For example, the bookmark may be used to
`
`“watch and listen to a first part of a content on the server 100 and then watch and
`
`listen to a subsequent part thereof on the client 200.” Id.
`
`D. Brief Summary of Krikorian
`Krikorian discloses a “personal broadcaster” for use in a home, where “users
`
`can view and control their A/V source components, such as a personal video
`
`recorder (PVR) or a cable set-top box, from any desktop PC, notebook PC, PDA,
`
`or other network devices.” Ex. 1007 at 4:7-10; Ex. 1003 at ¶ 83.
`
`V. CLAIM CONSTRUCTION
`For purposes of this proceeding only, Petitioner proposes constructions
`
`under the appropriate regulatory standard of “broadest reasonable interpretation.”
`
`6
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`37 C.F.R. § 42.100(b). 1 Petitioner submits that any terms not specifically
`
`construed in this section should be given their plain and ordinary meaning.
`
`A.
`Level of Ordinary Skill in the Art
`A person of ordinary skill in the art would have either a Bachelor of Science
`
`in Computer Science, Computer Engineering, Electrical Engineering, or an
`
`equivalent field as well as at least 2 years of academic or industry experience in
`
`any type of networking field. Ex. 1003 at ¶ 20.
`
`B.
`“WPAN” (Claims 1, 2, 10, 12-18, and 20)
`The ‘904 Patent does not define the term “wireless personal area network
`
`(WPAN).” Ex. 1003 at ¶ 55. At the time of filing, this term had a specific meaning
`
`in the field of art as describing a network operating under the 802.15 Standard
`
`published by the IEEE, which originally coined the term “WPAN.” Ex. 1003 at
`
`¶ 55. The IEEE published a revision of the 802.15 Standard on June 14, 2005
`
`(“802.15 Standard”). Ex. 1008 at p. 1; Ex. 1003 at ¶ 56. In the overview, the
`
`802.15 Standard states that “[w]ireless personal area networks (WPANs) are used
`
`to convey information over short distances among a private, intimate group of
`
`participant devices. Unlike a wireless local area network (WLAN), a connection
`
`
`1 Petitioner reserves the right to seek different claim constructions than those
`
`determined or sought in a different forum that applies more narrow standards of
`
`proof and analysis (in the District Court Litigation, applying the Phillips standard).
`
`7
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`made through a WPAN involves little or no infrastructure or direct connectivity to
`
`the world outside the link. This allows small, power-efficient, inexpensive
`
`solutions to be implemented for a wide range of devices.” Ex. 1008 at p. 21; Ex.
`
`1003 at ¶ 56.
`
`The ‘904 Patent also states that the mobile device and the media device may
`
`communicate “according to the Bluetooth wireless communication standard.” Ex.
`
`1001 at 5:1-31; Ex. 1003 at ¶ 57. The Bluetooth standard is specifically included in
`
`the 802.15 Standard as a type of WPAN. Ex. 1008 at 5:1-31; Ex. 1008 at pp. 21, 25,
`
`35-36; Ex. 1003 at ¶ 57. Thus, at the time of the application’s filing, one of
`
`ordinary skill in the art would have understood the term “WPAN” consistent with
`
`its well-known meaning in the art. The broadest reasonable interpretation of the
`
`term “WPAN” is therefore “a short distance network among a private, intimate
`
`group of devices, for example using a Bluetooth connection.” See Ex. 1008 at p. 21;
`
`Ex. 1003 at ¶ 58.
`
`C.
`“mobile device” (Claims 1-4, 10, 12-18, and 20)
`The ‘904 Patent states that “[t]he mobile device 20 may be a mobile phone,
`
`Personal Digital Assistant (PDA), or the like. Alternatively, a stand-alone device
`
`similar to a remote control.” Ex. 1001 at 4:4-7; Ex. 1003 at ¶ 59. Each of these
`
`example devices are designed to be used while hand-held, consistent with the
`
`typical use of the term “mobile device” as used by those in the field at the time, in
`
`contrast to a set-top box or laptop computer that may be moved but was not
`
`8
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`commonly referred to as a “mobile device.” Ex. 1003 at ¶ 59. Therefore, the
`
`broadest reasonable interpretation of the term “mobile device” is “a hand-held
`
`device, such as a mobile phone, Personal Digital Assistant (PDA), or remote
`
`control.” Ex. 1003 at ¶ 59.
`
`D.
`“media device” (Claims 1-3, 10, 12-18, and 20)
`The specification makes no constraining the components of the media device
`
`to be in one unitary assembly, but instead supports the opposite proposition. For
`
`example, the ‘904 specification states that, “the wireless communication interface
`
`22 may be a stand-alone device communicatively coupled to the control system.”
`
`Ex. 1001 at 3:34-38; Ex. 1003 at ¶ 63. In addition, the specification states that the
`
`“media device” may be “a digital video recorder associated with a television,”
`
`which are stand-alone components. Ex. 1001 at 3:26-28; Ex. 1003 at ¶ 63.
`
`Therefore, the broadest reasonable interpretation of the term “media device” is “a
`
`set of components capable of playing stored content.” Ex. 1003 at ¶ 63.
`
`E.
`“validation process” (Claim 14)
`The ‘904 Patent describes the term “validation process” as a process by
`
`which the mobile device identifies itself to the media device prior to establishing
`
`further communication between the devices. Ex. 1001 at 4:56-62; Ex. 1003 at ¶ 60.
`
`In addition, the ‘904 Patent provides that in an embodiment where the mobile
`
`device and media device use Bluetooth wireless communication, “the validation
`
`process is the pairing process described in the Bluetooth specification.” Ex. 1001 at
`
`9
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`4:66-5:4. Therefore, the broadest reasonable interpretation of “validation process”
`
`is a “process by which the mobile device identifies itself to the media device, such
`
`as the pairing process described in the Bluetooth specification.” Ex. 1003 at ¶ 60.
`
`VI. A REASONABLE LIKELIHOOD EXISTS THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1: The ’904 Patent Claims 1-4, 7, 10, 12, and 15-18 are
`obvious over Morse in view of Meade
`‘904 Claim 1 Morse (Ex. 1004) in view of Meade (Ex. 1005)
`See, e.g., Morse, Ex. 1004 at 1:40-44: “The remote control
`1[p] A mobile
`device may be used to select the digital media for playback on
`device for
`the playback device and include a complemental remote control
`controlling
`communication interface for bi-directional communication with
`digital content
`the remote control communication interface of the playback
`played by a
`unit.”
`plurality of
`media devices
`comprising:
`
`Id. at 4:39-41: “In one embodiment, the remote control device
`34 includes a hand-held housing 35 which is shaped and
`dimensioned to render the remote control device 34 portable.”
`
`Id. at Fig. 6, 2:13-14: “FIG. 6 a shows schematic view of an
`exemplary remote control device, in accordance with the
`invention[.]”
`
`
`Id. at 3:26-31: “Referring in particular to FIG. 2, reference
`numeral 30 generally indicates a system, in accordance with the
`invention, to control playback of digital media on a playback or
`
`10
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`reproduction device 31. The playback device 31 may be a
`television set, a stereo or any other playback device for playing
`back media content (digital and/or analog).”
`
`Id. at Fig. 2:
`
`
`Id. at 7:7-15: “Referring in particular to FIG. 10, reference
`numeral 150 generally indicates an exemplary system, in
`accordance with the invention, for controlling the playback of
`media data sourced from a plurality of media content storage
`devices. In the system 150, the media content storage devices
`are shown to be in the form of a plurality of servers 152, 154,
`156, and 158. The servers 152 to 158 are connectable to one or
`more playback units 160, 162, and 164 via one or more
`networks 166, 168, and 170. Further, each playback unit 160,
`162, 164 may communicate with one or more remote control
`devices 172, 174, and 176. The servers 152 to 158, the networks
`166 to 170, the playback units 160 to 164, and the remote
`control devices 172 to 176 may resemble or be substantially
`similar to the media content storage device 14, the network 20,
`the playback unit 32, and the remote control device 34,
`respectively, as described above.”
`
`Id. at Fig. 10:
`
`11
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`
`Id. at 7:56-63: “As shown in FIG. 12, each exemplary playback
`unit 160 to 164 may include a hardware layer 190 (see, for
`example, FIG. 3), common drivers 192, for example, to
`interface the playback units 160 to 164 to playback devices (for
`example the playback or reproduction device 31 as described
`above), a common middleware layer 194, and playback device
`application code 196 that may, for example, execute the method
`90 (see FIG. 5).”
`
`See, e.g., Meade, Ex. 1005 at ¶¶ 40-41: “In another aspect of the
`invention, as shown in FIG. 4, an appliance control system of
`the present invention includes audiovisual subsystem 80
`comprising mobile computing device 12 interacting with
`appliances 13, such as video device 14 and audio device 28.
`
`Video device 14 preferably includes a television, movie player,
`or video display monitor while audio device 28 preferably
`includes a stereo system, CD player, or other audio media
`player. Mobile computing device 12 preferably includes a
`personal digital assistant, or another computing device such as a
`handheld computer, laptop computer, etc.”
`
`Id. at Fig. 4:
`
`12
`
`

`
`
`
`Petitionn for Inter Partes Review of U..S. Patent NNo. 7,787,,904
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MMorse disccloses a ssystem “too control
`
`
`
`playback
`
`of digita
`
`
`
`
`l media oon a
`
`
`
`playbacck or reproduction deevice 31,” uusing a “reemote conttrol device
`
`
`
`
`
`
`
`
`
`
`
`
`
`” to “selecct the
`
`
`
`
`
`
`
`
`
`004 at 1:440-42, 3:277-29;
`
`
`
`
`
`a componeents capab
`
`le of
`
`a “playba
`
`
`
`ck unit” aand a
`
`
`
`digital mmedia for pplayback oon the playyback deviice.” Ex. 1
`
`
`
`
`
`Ex. 10003 at ¶ 86.
`
`
`
`Morse disccloses a seet of conneected medi
`
`
`
`
`
`
`
`h include content annd playbacck the content, which
`
`
`
`
`
`
`storing
`
`“media
`
`
`
`“media ddevices” bbecause tthese
`
`
`
`content
`
`
`
`storage ddevice” wwhich are
`
`
`
`
`
`
`
`componnents store
`
`
`
`and play bback (respeectively) ddigital conttent. Ex. 10004 at 3:399-48;
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. 10003 at ¶¶ 89--94.
`
`
`
`
`
`TThe remotee controls the storaage and pplayback oof content
`
`
`
`
`
`
`
`
`
`
`
`devices
`
`through
`
`
`
`a “remote control ccommunicaation interrface 52”
`
`
`
`
`
`
`
`
`
`at the mmedia
`
`
`
`in the remmote
`
`
`
`control,, and a corrrespondinng “remote control coommunicaation interfface 38” inn the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`media ddevices (e..g “playbaack unit 322”). Ex. 10004 at 3:558-61; Ex.
`
`
`
`
`
`
`
` 1003 at ¶¶ 91.
`
`13
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`Morse also discloses that a plurality of “playback units 160 to 164” may “interface”
`
`with a plurality of “playback devices (for example the playback or reproduction
`
`device 31 as described above)” Ex. 1004 at 7:56-63; Ex. 1003 at ¶¶ 96-97. Morse
`
`also discloses that the remote control device may be used “for controlling the
`
`playback of media data sourced from a plurality of media content storage devices.”
`
`Ex. 1004 at 7:9-10, Fig. 10; Ex. 1003 at ¶ 96. Morse further discloses that the
`
`remote control device is “portable” and “hand-held.” Ex. 1004 at 4:39-41, Fig. 6;
`
`Ex. 1003 at ¶¶ 86-87.
`
`To the extent that the broadest reasonable interpretation for this claim
`
`element required explicit disclosure of a “media device” within the same assembly,
`
`then the combination of Morse and Meade would render this claim limitation
`
`obvious at least because Meade discloses content storage and playback by self-
`
`contained “video device 14” and/or “audio device 28,” each of which may be
`
`controlled by a “mobile computing device 12.” Ex. 1005 at ¶¶ 40-41, Fig. 4; Ex.
`
`1003 at ¶¶ 101-102.
`
`Further, to the extent the broadest reasonable interpretation for this claim
`
`element required “a plurality of media devices” to be distinct and separate without
`
`connections directly between components of neighboring media devices, then
`
`Meade discloses this limitation, at least because Meade discloses a plurality of
`
`stand-alone media devices (including video device 14 and/or audio device 28)
`
`controlled by a “mobile computing device 12.” Ex. 1005 at ¶¶ 40-41, Fig. 4; Ex.
`
`14
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`1003 at ¶ 102-103. Therefore, the combination of Morse and Meade discloses each
`
`limitation of this element, to the extent it is limiting. Ex. 1003 at ¶ 105.
`
`A person of ordinary skill in the art would have been specifically motivated
`
`to combine Morse with Meade because each prior art reference is from the same
`
`field of art (user controlled storage and reproduction of digital multimedia content),
`
`are directed to solving the same problem as the ‘904 patent (providing a user with
`
`greater information and control over the playback of stored content), and are
`
`directed to systems where content is selected for playback on a particular media
`
`player using information stored at a hand-held mobile device (see, for example, Ex.
`
`1004 at 4:39-41, Fig. 6; Ex. 1005 at ¶ 26, Fig. 2). Ex. 1003 at ¶ 106.
`
`In addition, the use of a unitary “video device” including a “program
`
`recorder,” “program receiver,” “memory,” and “wireless communicator” to receive,
`
`store, and reproduce video content as disclosed in Meade was obvious to try given
`
`that the collection of “playback unit,” “media content storage device,” and
`
`“playback device” system for storing and reproducing media content in Morse had
`
`very few options for otherwise operating as a system to control playback of digital
`
`media (for example, either these components can be integrated into one assembly
`
`or housing, or they can be stand-alone components requiring a single mobile
`
`device to control them). Ex. 1003 at ¶ 107.
`
`Further, the combination yields the completely predictable result that the
`
`single “video device” of Meade enables the set of components of Morse to act as a
`
`15
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`whole and perform the disclosed step recited for this claim element even where the
`
`media content storage device streams content to the playback device for display.
`
`Ex. 1003 at ¶ 107. In addition, as discussed by Meade, a unitary video device
`
`including components capable of storing content, playing content, and controlling
`
`the storage and playback of content in response to a control signal (e.g., from a
`
`remote control) was well known in the art in 2005 (e.g., TiVo or VCRs) using a
`
`remote control device. Ex. 1003 at ¶ 107.
`
`See discussion of Meade, supra at element [1p].
`
`‘904 Claim 1 Morse (Ex. 1004) in view of Meade (Ex. 1005)
`See discussion of Morse, supra at element [1p].
`[1a] a) a
`wireless
`communication
`interface for
`communicating
`with the
`plurality of
`media devices;
`
`See, e.g., Morse, Ex. 1004 at 4:25-38: “The remote control
`device 34 includes a complemental remote control
`communication interface 52 to communicate in a bi-
`directional fashion with the remote control communication
`interface 38 of the playback unit 32.”
`
`Id. at 4:42-44: “The remote control communication
`interfaces 38 and 52 may be radio frequency interfaces,
`optical interfaces (e.g. infrared), or any other
`communication interface. For example, the communication
`interfaces 38, 52 may be low power devices having a range
`suitable for use within a domestic dwelling.”
`
`Id. at Fig. 3.
`
`Morse discloses the remote control device includes a “remote control
`
`communication interface 52” for communicating with corresponding “remote
`
`control communication interface 38” in each of a plurality of playback units. Ex.
`
`1004 at 4:25-38, Figs. 3, 10; Ex. 1003 at ¶¶ 108-109. Morse discloses these
`
`16
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`“remote control communication interfaces 38 and 52 may be radio frequency
`
`interfaces, optical interfaces (e.g. infrared), or any other communication interface.”
`
`Ex. 1004 at 4:42-44; Ex. 1003 at ¶ 108..
`
`‘904 Claim 1 Morse (Ex. 1004) in view of Meade (Ex. 1005)
`See, e.g., Morse, Ex. 1004 at 4:22-25: “The user interface 56 and
`[1b] b) a
`media
`the display screen 36 allow a user to browse (e.g., by artist,
`database; and
`album, genre, all tracks, playlist or the like) and select media
`content stored on the media content storage device 14.”
`
`Id. at 3:39-44: “For example, the media content storage device
`14 may store digital media in the form of music files, video files,
`photographs, or the like and the playback unit 32 may retrieve
`content data that identifies, or is associated with, the media files
`and communicate the content data to the remote control device
`34 for display on the display screen 36.”
`
`Id. at 8:30-46: “In one embodiment of the invention, the remote
`control devices 172 to 176 are substantially similar to the remote
`control device 30 (see FIG. 2). Each remote control device 172
`to 176 may thus include a display screen 36 on which media
`content data (e.g., Z items) is displayed to the user. However, it
`will be appreciated that the display screen 36 may be limited in
`the amount of media content data that it can display to the user
`(Z<Y<N<A). Accordingly, in one embodiment, each remote
`control device 172 to 176 stores media content data received
`from a playback unit 160 to 164 in the media content data stack
`and only a portion (Z items) of the media content data that is
`available on the remote control unit 172 to 176 or displayed on
`the display screen 36. As described in more detail below, a user
`may then use the exemplary user interface 56 (see FIG. 6) to
`scroll through media content data (e.g., text) provided in a media
`content stack (see, for example, the content hierarchy 126 of
`FIG. 7).”
`
`Id. at Fig. 7:
`
`17
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,787,904
`
`
`Id. at 6:52-61: “Reference numeral 120 (see FIG. 8) generally
`indicates an exemplary graphic user interface presented to the
`user on the display screen 36 to select digital media stored on,
`and served from, the digital media storage device 14. In the
`exemplary embodiment shown in FIG. 8, a user may select group
`descriptions such as "Favorite Playlists", "Music Library",
`"Setup", and "Info". It will however be appreciated that the
`information displayed by the graphic user interface 120 may be
`dependent upon the digital media available from the digital
`media storage device 14.”
`
`Morse discloses the remote control device “stores media content data
`
`received from a playback unit 160 to 164 in the media content data stack. Ex. 1004
`
`at 8:38-40; Ex. 1003 at ¶ 115. Morse discloses that “the content data may include
`
`audio track titles, album names, video clip titles, photograph tiles, and so on that
`
`reside on the media content storage device 14,” where the “media content data”
`
`may be stored at the remote control device in the form of