Yamaha Corporation of Americav.Black Hills Media, LLC

Patent Trial and Appeal Board

Mar 18, 2015

11563227 (P.T.A.B. Mar. 18, 2015)

Trials@uspto.gov Paper 56
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 IPR2013-00593
Patent 8,045,952 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 9, 10, 13, and 14 (“challenged
claims”) of U.S. Patent No. 8,045,952 B2 (Ex. 1001, “the ’952 Patent”)
pursuant to 35 U.S.C. §§ 311319. Paper 1 (“Pet.”). Black Hills Media,
LLC (“Patent Owner”) filed a Preliminary Response. Paper 14. On March
20, 2014, we instituted an inter partes review of claims 9, 10, 13, and 14 on
three of the grounds unpatentability alleged in the Petition. Paper 22 (“Dec.
to Inst.”). After institution of trial, Patent Owner filed a Patent Owner’s
Response (Paper 34, “PO Resp.”), to which Petitioner filed a Reply (Paper
38, “Reply”). Patent Owner filed a Motion to Exclude (Paper 42, “Mot. to
Excl.”), to which Petitioner filed an Opposition (Paper 47, “Opp. Mot. to
Exclude”) and Patent Owner filed a Reply (Paper 48).
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 53 (“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 9, 10, 13, and 14 are unpatentable. Patent
Owner’s Motion to Exclude is dismissed as moot.
A. Related Proceedings
Petitioner indicates that the ’952 Patent is at issue in Black Hills
Media, LLC v. Yamaha Corp. of America, No. 2:13-cv-006054 (C.D. Cal.).
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Pet. 2–4. In addition, Patent Owner has pending cases concerning the ’952
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). Supplemental Mandatory Notice (Paper 55) 1–3.
The ’952 Patent is the subject of two other petitions for inter partes review.
1

Id. In addition, U.S. Patent No. 8,050,652 B2 is related to the ’952 Patent
and is the subject of three petitions for inter partes review.
2
Id.
B. The ’952 Patent
The ’952 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 ’952 Patent is
purported to alleviate such issues “by providing a network-enabled audio
device for listening to a variety of audio sources with substantially equal
convenience.” Id. at 2:15–19.
The inventive device may be used with a computer. Id. at 16:32–35.
In that embodiment, software may be used to assign a playlist of songs to a

1
Cases IPR2014-00740 and IPR2015-00340.
2
Cases IPR2013-00594, IPR2014-00737, and IPR2015-00334.
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network-enabled audio device. Id. This embodiment is illustrated in Figures
15 and 19B of the ’952 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. Id. at 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
1530), and associated URLs and songs within the playlist. Id. at 21:43–57.
Server site 1104 includes IPAN software 1433 and playlists (1528 and
1530). Id. at 21:5257.
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Figure 19B of the ’952 Patent is reproduced below:

Figure 19B shows the process for assigning a playlist to a device. Id.
at 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
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
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any of the remaining songs is found on second device 1520, then IPAN 1433
will provide first device 1510 with URLs for those songs, and first device
1510 will attempt to download the songs from second device 1520. Id. at
28:30–43.
C. Illustrative Claim
Claim 9 of the ’952 Patent is the sole independent claim at issue in
this Petition and is illustrative of the claims at issue:
9. A method comprising:
receiving, at an electronic device, a playlist assigned to the
electronic device, the playlist identifying a plurality of
songs, wherein ones of the plurality of songs are not
stored on the electronic device;
receiving, at the electronic device, information enabling the
electronic device to obtain the ones of the plurality of
songs from at least one remote source; and
obtaining the ones of the plurality of songs from the at
least one remote source.
D. Alleged Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that
were instituted for inter partes review:
Reference Basis Claim(s) Challenged
Berman
3
§ 102 9, 10, 14
Berman § 103 13
Wolff
4
§ 102 9, 10, 14

3
US 6,502,194 B1, Dec. 31, 2002, filed Apr. 16, 1999 (Ex. 1012).
4
US 7,472,353 B1, Dec. 30, 2008, filed July 31, 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).
For purposes of 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.
12–15. 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 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.”
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.
Petitioner argues that Patent Owner’s proposed construction is too narrow
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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 ’952 Patent, which defined “playlist 1528 . . .
[as] a list of audio files and associated URL’s 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. 2012
¶¶ 66–71, 75–76, 81–84 (explanation by Patent Owner’s declarant 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. 2012 ¶ 31
(describing the ’952 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 Figure 17B, which
“illustrates the display of an audio player window 1792.” PO Resp. 17
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(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. Id. at 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. 2012 ¶ 58.
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. 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 play the
items in the list in a continuous fashion.” PO Resp. 15–16 (citing Ex. 2016,
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66:18–25) (emphasis added). Dr. Bove responded that to his recollection
“all [players] will allow playing in a sequence as displayed.” Id. at 20
(emphasis omitted). Patent Owner characterizes this exchange about the
player functionality as a concession as to the definition of a playlist. Id. at
19–20; see also Reply 6–7 (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 mean “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. 14. Patent Owner argues that “assigned to the electronic
device” should be construed to mean “directed to the electronic device.” PO
Resp. 25 (citing Ex. 2012 ¶ 85). According to its argument, “the [’952]
Patent specifically contemplates that playlists are assigned without requiring
user selection of a particular device to which the playlist is directed.” Id. at
26 (citing Ex. 2012 ¶ 90). 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.
Id. at Fig. 17I. Included in this display is a checkbox that allows the user to
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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. 13 (citing
Ex. 1001, 4:57–58, 22:39–40, 24:45–48, 28:16, Figs.19B, 19C1). Thus, in
light of the record and our construction of playlist, above, 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 practical experience with media file sharing.”
PO Resp. 9–10 (citing Ex. 2012 ¶¶ 26–29). 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. Anticipation by Berman (Ex. 1012)
Petitioner alleges that claims 9, 10, and 14 of the ’952 Patent are
unpatentable under 35 U.S.C. § 102 over Berman. Pet. 15–21.
For the reasons discussed below, we conclude that Petitioner has
proved by a preponderance of the evidence that claims 9, 10, and 14 are
anticipated by Berman.
1. Overview of Berman (Ex. 1012)
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,
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
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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.
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
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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). The user selects a song from the song list. Id. at
7:22–24. The DUL server then sends playback unit 100 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 1012, 7:41–45, 8:32–34, Fig. 4
(steps 402 and 412).
2. Analysis
Petitioner argues that Berman discloses every limitation of claim 9.
Pet. 15–18. Specifically, Petitioner argues that Berman discloses a playback
unit that receives a song list from the DUL server. Pet. 17 (citing Ex. 1012,
Fig. 3 (step 308)); see also id. at 10:23–28 (describing song list packet sent
to playback unit with a user ID “to confirm that the updated song list
information was sent to and received by the correct playback unit”).
Petitioner also asserts that the songs identified in the song list are stored on
audio material server 104, and, thus, the songs are not stored on the playback
unit. Id. at 18 (citing Ex. 1012, 4:5152). The playback unit receives URLs
for songs on the song list from the audio material server. Id. (citing Ex.
1012, Fig. 3 (step 314), 7:22–54). Finally, Petitioner asserts that the
playback unit obtains songs from the audio material server. Id. (citing Ex.
1012, Fig. 4 (step 412), 8:31–34). We agree with Petitioner’s arguments
regarding the disclosures of Berman.
Patent Owner asserts that Berman’s “song list” is not a “playlist” as
recited by claim 9. PO Resp. 33–40. As discussed above in Section II.A.1,
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we reject Patent Owner’s proposed construction and construe “playlist” to
mean “a list of audio files.” Patent Owner describes Berman’s song list as
“a catalog of all available songs,” and, thus, it falls within our construction
of playlist. See id. at 36. Patent Owner also argues that Berman’s song list
does not reflect a list of songs selected for playback on a device. Id. at 37–
38. 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 did 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 9 is unpatentable over Berman.
Claims 10 and 14 of the ’952 Patent depend from claim 9. Petitioner
also asserts that these claims are anticipated by Berman. Pet. 15–20.
Petitioner’s arguments and evidence are persuasive as to these dependent
claims. See Dec. to Inst. 19–20. Patent Owner does not assert any
additional arguments regarding the patentability of claims 10 and 14. PO
Resp. 40. We determine that Petitioner has demonstrated by a
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preponderance of the evidence that dependent claims 10 and 14 are
unpatentable over Berman.
In summary, Patent Owner’s arguments are unpersuasive to overcome
the evidence presented by Petitioner that claims 9, 10, and 14 are anticipated
by Berman. Based on the foregoing, we determine that Petitioner has
proven by a preponderance of the evidence that claims 9, 10, and 14 are
unpatentable as anticipated by Berman.
D. Obviousness over Berman (Ex. 1012)
Petitioner asserts that claim 13 of the ’952 Patent would have been
rendered obvious by the teachings of Berman. Pet. 34–35. Claim 13
depends from 9 and adds further limitations regarding the useage of web
sites, which is not disclosed expressly by Berman. Petitioner asserts that it
would have been obvious to one of ordinary skill in the art to use a web site
as a remote source in place of Berman’s servers. Pet. 20–21. Dr. Bove
supports Petitioner’s argument by testifying that “[i]t would have been well
known to one of ordinary skill in the art in 2000 that music files could be
provided by a Web server. As one example, the MP3.com music server site
launched in 1997.” Ex. 1002 ¶ 19. We credit Dr. Bove’s testimony and find
Petitioner’s arguments to be persuasive. Patent Owner does not proffer any
additional arguments directed to the patentability of claim 13. PO Resp. 40.
We determine that Petitioner has demonstrated by a preponderance of the
evidence that dependent claim 13 would have been obvious over Berman.
E. Anticipation by Wolff (Ex. 1014)
Petitioner alleges that claims 9, 10, and 14 of the ’952 Patent are
unpatentable under 35 U.S.C. § 102 over Wolff. Pet. 29–33.
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For the reasons discussed below, we conclude that Petitioner has
proved by a preponderance of the evidence that claims 9, 10, and 14 are
anticipated by Wolff.
1. Overview of Wolff (Ex. 1014)
Wolff is directed to a system and method for organizing and retrieving
multimedia objects. Ex. 1014, Abstract. A remote controller is provided
that allows users to retrieve media objects including “Moving Picture Expert
Group (MPEG) video[], MPEG audio Layer-3 (MP3), music compact discs
(CD), etc.” Id. at 3:19–25. In one embodiment, the remote controller is a
Personal Digital Assistant (“PDA”) that allows users to select remotely
media objects from a Network Access Appliance (“NAA”). Id. at 3:25–30.
The remote controller sends one or more URLs or media items to the NAA,
and the NAA plays each item in order. Id. at 3:6164. The user may create
a playlist containing a plurality of songs and upload that playlist from the
remote controller to the server and that playlist may be examined by the
NAA. Id. at 8:16–33. In addition, a remote controller can send a playlist to
another remote controller or another user. Id. at 8:59–63. The NAA may
have memory to store media, but if the media is not stored in memory, the
NAA will retrieve the requested selection from a server. Id. at 3:34–41,
5:2832. Wolff’s system may include a plurality of NAAs and servers. Id.
at Fig. 1. Each user of the remote controller has a personalized server to
keep track of all services associated with the remote controller. Id. at 4:40–
43. The personalized server may keep a copy of each media item, or the
media objects may be located at different sites in the network. Id. at 4:51–
53, 4:62–64.
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2. Analysis
Petitioner contends that Wolff discloses every element of claim 9 of
the ’952 Patent. Pet. 29–33. Specifically, Petitioner asserts that Wolff
discloses using a remote controller to create a playlist. Pet. 31–32 (citing
Ex. 1014, Fig. 1, 4:37–64, 7:62–8:34). Petitioner argues that Wolff
discloses uploading the playlist to the personalized server. Id. Petitioner
also argues that Wolff discloses a playlist assigned to each NAA. Id. at 32
(citing Ex. 1014, 8:31–33). In addition, Petitioner maintains that the songs
in the playlist are associated with resource identifiers that enable the NAA to
obtain the songs from servers. Id. (citing Ex. 1014, 3:30–41, 4:29–36, 4:58–
64, 8:1633).
Patent Owner argues that Wolff does not disclose or suggest
“receiving, at an electronic device, a playlist assigned to the electronic
device, the playlist identifying a plurality of songs.” PO Resp. 46.
According to Patent Owner, this asserted ground fails because “[r]ather than
sending a playlist to the NAA, the remote controller merely sends the
‘resource identifier’ (e.g., URL) ‘to request the NAA . . . to play the media
object associated with the resource identifier.’” Id. at 47. We agree with
Patent Owner’s assertion that sending a URL is insufficient to anticipate the
claimed playlist. See Ex. 2012 ¶ 133. Wolff, however, describes a
“scrollable list” of media objects on a remote controller from which users
may make selections to create a “play list containing the user[‘s] favorite
songs.” Ex. 1014, 8:7–22. The remote controller and personalized server
are synchronized and the play list is updated. Id. at 8:23–26. The NAA then
examines the stored playlist and accesses and stores any media objects in
order to allow the user to play the playlist without having to wait for
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individual media items to be downloaded. Id. at 8:27–35. Patent Owner’s
expert Mr. Zatkovich testifies that “there is no indication in Wolff that its
play list that is stored in the personalized server (110) is transferred to or
received by the NAA, for the purpose of examination or otherwise.” Ex.
2012 ¶ 123. This statement, however, is contradicted by Wolff’s claim 16
that explicitly states that “the controller sends one play list to the appliance
to request the one play list be played by the appliance.” Ex. 1014, 10:35–37;
Tr. 85:8–15. Patent Owner argues that the language of Wolff’s claim 16 is
“short hand to refer to the media objects ultimately played by the appliance .
. . [and that] one skilled in the art would appreciate that the songs indicated
by the play list are received and played, but a play list itself . . . is not
received by the NAA.” PO Resp. 52 (citing Ex. 2012 ¶ 130). Here again,
we are not persuaded by Patent Owner’s argument that we ignore the plain
language of the reference. Wolff specifically discusses URLs, media
objects, and playlists. We see no reason to believe that Wolff’s explicit
reference to a playlist in claim 16 should be construed as anything other than
a playlist. Thus, we do not find Patent Owner’s arguments to be persuasive.
For the foregoing reasons, we determine that Petitioner has demonstrated by
a preponderance of the evidence that independent claim 9 is unpatentable
over Wolff.
Claims 10 and 14 depend from claim 9. Petitioner also asserts that
these claims are anticipated by Wolff. Pet. 29–33. Petitioner’s arguments
and evidence are persuasive as to these dependent claims. See Dec. to Inst.
24–25. Patent Owner does not assert any additional arguments regarding the
patentability of claims 10 and 14. PO Resp. 53. We determine that
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Petitioner has demonstrated by a preponderance of the evidence that
dependent claims 10 and 14 are unpatentable over Wolff.
F. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude Evidence (Paper 42), to which
Petitioner responded (Paper 47) and on which Patent Owner filed a Reply
(Paper 48). Patent Owner’s motion seeks to exclude Exhibits 1019, 1020,
and 1023 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 1022 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 1025, 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 1019, 1020
and 1023 were submitted by Petitioner as extrinsic evidence in support of its
proposed construction of “playlist.” Reply 6–10. 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.
Exhibit 1022 was submitted by Petitioner to support its proposal for
level of ordinary skill in the art. As stated in Section II. D, 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 1022. The motion
to exclude is dismissed as moot for this Exhibit and as to the related Exhibit
1025 as well.
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Patent 8,045,952 B2

21
III. CONCLUSION
We conclude Petitioner has demonstrated by a preponderance of the
evidence that:
1. Claims 9, 10, and 14 are unpatentable under 35 U.S.C. § 102 as
anticipated by Berman; and
2. Claim 13 is unpatentable under 35 U.S.C. § 103 as obvious over
Berman.
3. Claims 9, 10, and 14 are unpatentable under 35 U.S.C. § 102 as
anticipated by Wolff.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claims 9,
10, 13 and 14 of the ’952 Patent are unpatentable;
FURTHER ORDERED that, Patent Owner’s Motion to Exclude is
dismissed as moot.
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.

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Patent 8,045,952 B2

22

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