- Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00593 · APJ Stacey G White · IPR · Final written decision
Claims 9, 10, and 14 are unpatentable as anticipated by Berman and Wolff; claim 13 is unpatentable as obvious over Berman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“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, 21:6365. 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.”” slip op. at 8
- Skill levelOther
“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 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.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“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, 4:5152). 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.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“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.” slip op. at 16
Patent outcomesUS 8,045,952 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,045,952 - Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00597 · APJ Peter P Chen · IPR · Final written decision
Claims 2, 6, and 10–12 are unpatentable: Bi anticipates claims 2, 6, and 10–12; Gladwin anticipates claims 2, 6, 11, and 12; Berman renders claims 2, 6, 11, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“[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. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“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 We decline to adopt Patent Owner’s proposed construction over the ordinary and customary meaning of the term.” slip op. at 9
- Skill levelOther
“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” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“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.” slip op. at 10
Patent outcomesUS 8,230,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,099
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.