DCT

2:13-cv-05980

Black Hills Media LLC v. Pioneer Corp

Key Events

Amended Complaint

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Black Hills Media, LLC (Delaware)
- Defendant: Pioneer Corporation (Japan); Pioneer Electronics (USA) Inc. (Delaware)
- Plaintiff’s Counsel: Rader, Fishman & Grauer PLLC
Case Identification: 1:12-cv-00634, D. Del., 09/12/2012
Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendants have committed acts of patent infringement in the district and because Defendant Pioneer Electronics (USA) Inc. is a Delaware corporation.
Core Dispute: Plaintiff alleges that Defendant’s networked AV receivers, Blu-ray players, and home theater systems infringe six patents related to systems for obtaining, managing, caching, and sharing media playlists and content over a network.
Technical Context: The technology at issue addresses the architecture for delivering personalized media streams and playlists to consumer electronic devices, a foundational technology for modern internet radio and media streaming services.
Key Procedural History: The complaint is a First Amended Complaint. Post-filing records attached to the provided patent documents indicate that numerous asserted claims across all six patents-in-suit were subsequently cancelled in Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board between 2014 and 2018. This includes, for example, the cancellation of asserted claim 9 of the ’952 Patent and asserted claims 1, 21, and 42 of the ’652 Patent. The invalidation of these asserted claims would be a dispositive issue for the majority of the infringement counts as pleaded.

Case Timeline

Date	Event
1998-01-22	Priority Date for ’952 and ’652 Patents
1998-03-02	Priority Date for ’686 Patent
2000-08-22	Issue Date for U.S. Patent No. 6,108,686
2000-09-07	Priority Date for ’694 Patent
2004-05-05	Priority Date for ’099 and ’873 Patents
2006-01-10	Issue Date for U.S. Patent No. 6,985,694
2011-10-25	Issue Date for U.S. Patent No. 8,045,952
2011-11-01	Issue Date for U.S. Patent No. 8,050,652
2012-07-03	Issue Date for U.S. Patent No. 8,214,873
2012-07-24	Issue Date for U.S. Patent No. 8,230,099
2012-09-12	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,045,952 - "Method and Device for Obtaining Playlist Content Over a Network"

Issued: October 25, 2011

The Invention Explained

Problem Addressed: The patent describes the difficulty for consumers in playing music from various sources (e.g., disk files, CDs, internet streams) in a unified, convenient manner without the cost and complexity of a personal computer ('952 Patent, col. 2:1-12).
The Patented Solution: The invention proposes a dedicated, network-enabled audio device that simplifies this process. The device connects to the internet to access a server, which provides playlists that can reference content from multiple sources. The device can then obtain and play the content referenced in the playlist, creating a user experience similar to a jukebox. ('952 Patent, Abstract; col. 2:16-45).
Technical Importance: The technology conceptualized a dedicated consumer appliance for network media aggregation, abstracting away the PC's operational complexity at a time when PC-based software was the dominant model for accessing internet content ('952 Patent, col. 2:13-18).

Key Claims at a Glance

The complaint asserts independent claim 9 (Compl. ¶16).
Claim 9 recites a method with the essential elements:
- Receiving, at an electronic device, an assigned playlist identifying multiple songs, where some songs are not stored on the device.
- Receiving information that enables the device to obtain the non-stored songs from a remote source.
- Obtaining the non-stored songs from the remote source.
The complaint states infringement of "at least claim 9," reserving the right to assert other claims (Compl. ¶16).

U.S. Patent No. 8,050,652 - "Method and Device for an Internet Radio Capable of Obtaining a Playlist Content From a Content Server"

Issued: November 1, 2011

The Invention Explained

Problem Addressed: As with the related ’952 Patent, the invention aims to solve the problem of accessing diverse audio sources conveniently without requiring a traditional PC ('652 Patent, col. 2:1-15).
The Patented Solution: The patent describes an "Internet radio" device with a control system that allows a user to switch between different modes, such as a live "Internet radio mode" and a "playlist mode." In playlist mode, the device obtains a playlist from a content server and then retrieves the specified content for playback, creating a personalized listening experience. ('652 Patent, Abstract; col. 2:16-34).
Technical Importance: The invention describes moving internet-based audio from a purely PC-centric experience to a dedicated consumer electronics form factor, mirroring the usability of a traditional radio while adding network-based personalization ('652 Patent, col. 2:50-58).

Key Claims at a Glance

The complaint asserts independent claims 1, 21, 42, and 63 (Compl. ¶24).
Independent claim 1 recites an electronic device with the essential elements:
- A network interface to receive an Internet radio broadcast and couple to a central system.
- A system for playing audio from a playlist assigned by the central system.
- A control system that enables a user to select between an "Internet radio mode" and a "playlist mode."
- In playlist mode, the device receives a playlist, receives information to obtain songs not stored locally, obtains those songs, and plays them.
The complaint states infringement of "at least" these claims, reserving the right to assert others (Compl. ¶24).

U.S. Patent No. 6,985,694 - "Method and System for Providing an Audio Element Cache in a Customized Personal Radio Broadcast"

Issued: January 10, 2006
Technology Synopsis: The patent addresses a system for creating a customized radio broadcast by predicting content a user will want based on their profile, retrieving a subset of that content from a file server, and storing it in an "audio element cache." This caching mechanism allows for rapid assembly and transmission of a personalized audio stream to a remote listener. (’694 Patent, Abstract).
Asserted Claims: At least claim 1 (Compl. ¶32).
Accused Features: The complaint accuses the streaming services on Defendant's products, which allegedly deliver customized audio content to users (Compl. ¶¶32, 34).

U.S. Patent No. 6,108,686 - "Agent-Based On-Line Information Retrieval and Viewing System"

Issued: August 22, 2000
Technology Synopsis: The patent describes a system where multiple users can each define a unique set of "search rules" for a specific subject area. A software "agent" then automatically accesses remote databases according to these rules, retrieves the relevant information, and stores it in a local database while maintaining its original structure. This allows for personalized, automated information gathering. (’686 Patent, Abstract).
Asserted Claims: At least claims 1, 20, and 29 (Compl. ¶40).
Accused Features: The complaint targets the streaming services on Defendant's products, which are alleged to retrieve and present information to users over a network (Compl. ¶¶40, 42).

U.S. Patent No. 8,230,099 - "System and Method for Sharing Playlists"

Issued: July 24, 2012
Technology Synopsis: This patent describes a method for playlist sharing and discovery. A user's profile is compared to other profiles stored on a server to find users with similar tastes. Based on these matches, one or more playlists from the similar users are communicated to the user's device. This facilitates collaborative filtering for music discovery. (’099 Patent, Abstract; Fig. 3).
Asserted Claims: At least claims 11 and 12 (Compl. ¶48).
Accused Features: The streaming services on Defendant's products are accused of infringing, presumably by offering features for playlist sharing or music recommendations (Compl. ¶¶48, 50).

U.S. Patent No. 8,214,873 - "Method, System, and Computer-Readable Medium for Employing a First Device to Direct a Networked Audio Device to Render a Playlist"

Issued: July 3, 2012
Technology Synopsis: The technology involves a two-device system. A "first device" (e.g., a handheld remote, PDA) is used to select a playlist and songs. This first device then directs a separate, "networked audio device" (e.g., a stereo system, set-top box) to retrieve the selected content from a server and play it. This covers the concept of using a personal device as a remote control for a separate media renderer. (’873 Patent, Abstract; Fig. 4).
Asserted Claims: At least claim 1 (Compl. ¶56).
Accused Features: The complaint accuses Defendant's products that work with control applications, pointing to iTunes links for Pioneer's "iControl" apps which allow a smartphone or tablet to direct the operation of an AV receiver (Compl. ¶¶56, 59).

III. The Accused Instrumentality

Product Identification

The complaint identifies a range of Pioneer-branded networked products, including AV receivers (e.g., VSX-1122-K), networked Blu-ray players (e.g., BDP-430), and home theater systems (e.g., HTZ-BD32) (Compl. ¶14).

Functionality and Market Context

The complaint alleges that the accused products are capable of connecting to the internet to access streaming media (Compl. ¶¶18, 26). The functionality is described as either having "pre-loaded streaming services" or providing users with "detailed instructions... on how to download streaming services to the accused products" (Compl. ¶18). The complaint also points to Pioneer's product webpages and mobile applications available on Apple's iTunes store, such as "iControlAV2," which are alleged to provide instructions that encourage infringing use (Compl. ¶¶19, 59). A reference to the Defendant's product webpage for the SC-57 receiver directs the user to review specifications under a "Handheld and Internet" tab (Compl. ¶19). A reference to the iTunes store page for the "iControlAV2" application suggests a functionality where a separate device directs the operation of the accused products (Compl. ¶19).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or provide a detailed mapping of accused product features to specific claim limitations. The following summary is based on the general infringement theories articulated in the complaint.

’952 Patent Infringement Allegations

Claim Element (from Independent Claim 9)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
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;	The accused products allegedly operate with streaming services that provide playlists of songs that are not stored locally on the Pioneer devices (Compl. ¶¶16, 18).	¶18	col. 4:1-53
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	The accused products allegedly use data from the playlist to identify and locate the song files on remote internet servers (Compl. ¶¶18, 19).	¶19	col. 4:36-45
obtaining the ones of the plurality of songs from the at least one remote source.	The accused products are alleged to connect to remote servers over a network to stream or download the song content for playback (Compl. ¶¶18, 19).	¶19	col. 4:36-45

’652 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
An electronic device comprising: a network interface enabling the electronic device to receive an Internet radio broadcast and being further adapted to communicatively couple the electronic device to a central system;	The accused products are networked devices that allegedly connect to central servers to receive streaming internet radio and other content (Compl. ¶¶24, 26).	¶26	col. 4:30-34
a system enabling playback of audio content from a playlist assigned to the electronic device via the central system;	The accused products allegedly play audio content from playlists provided by internet-based streaming services (Compl. ¶¶26, 27).	¶27	col. 4:1-5
a control system... adapted to: i) enable a user of the electronic device to select a desired mode of operation... comprising an Internet radio mode of operation and a playlist mode of operation;	The accused products and associated control software (e.g., iControlAV2 app) allegedly allow users to choose between different types of streaming content, such as live radio or on-demand playlists (Compl. ¶¶26, 27).	¶27	col. 8:14-20
iii) when the desired mode of operation is the playlist mode of operation: ... obtain the ones of the plurality of songs from the at least one remote source; and play the audio content...	In a playlist-based mode, the accused products allegedly obtain and play songs from remote servers over the internet as specified by a given playlist (Compl. ¶¶26, 27).	¶27	col. 8:14-20

Identified Points of Contention

Technical Questions: The complaint's allegations are high-level and lack specific evidence of how the accused products' internal software architecture operates. A central question will be what evidence demonstrates that the accused products' general ability to access third-party streaming services performs the specific steps and contains the particular components (e.g., a "control system" with distinct "modes") as required by the claims.
Scope Questions: The infringement theory suggests a broad reading of claim terms like "playlist" and "obtaining." A point of contention may be whether a transient data stream from a service like Pandora qualifies as "obtaining" a "song" from a "playlist" in the manner described and claimed in the patents, which were filed in an era of file downloads and user-managed MP3 collections.

V. Key Claim Terms for Construction

’952 Patent

The Term: "playlist" (Claim 9)
Context and Importance: The definition of "playlist" is fundamental. The infringement theory appears to equate any list of media from a streaming service with a "playlist." Practitioners may focus on whether the term requires a user-compiled list of discrete files from potentially varied sources, as the specification's "jukebox" analogy suggests, or if it can be construed more broadly to cover ephemeral, service-generated queues of streamed content.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly limit the source or composition of the playlist, referring only to "a playlist... identifying a plurality of songs" ('952 Patent, col. 28:26-28).
- Evidence for a Narrower Interpretation: The specification repeatedly describes a user composing playlists from diverse sources like "disk files, CD's, Internet streaming audio broadcasts, online music sites, and other audio sources," akin to a jukebox, which may suggest a more structured, user-curated collection ('952 Patent, Abstract; col. 3:6-9).

’652 Patent

The Term: "control system" (Claim 1)
Context and Importance: Identifying the "control system" is critical to determining infringement. The complaint's references to the "iControlAV2" mobile application suggest Plaintiff may argue the "control system" is a combination of the receiver and a separate device running an app. This raises questions of direct versus indirect infringement, as the Defendant may not make, use, or sell the complete "control system" if it requires a user's smartphone.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires the control system to be "associated with the network interface and the system enabling playback," which does not foreclose the possibility of components operating on separate but networked devices ('652 Patent, col. 34:10-12).
- Evidence for a Narrower Interpretation: Figures in the patent depict the user controls as being physically part of the audio device itself, which could support an argument that the "control system" must be fully contained within the accused device ('652 Patent, Fig. 1; col. 8:36-40).

VI. Other Allegations

Indirect Infringement: The complaint alleges inducement of infringement for all six patents. The basis for this allegation is that Defendants allegedly encourage and instruct third parties (i.e., end users) to use the accused products in an infringing manner by shipping them with pre-loaded streaming services and providing instructions on their website and through mobile applications on how to access such services (Compl. ¶¶18-19, 26-27, 34-35, 42-43, 50-51, 58-59).
Willful Infringement: Willfulness is alleged for all six patents. The allegations are based on Defendants' knowledge of the patents and their infringement, which the complaint asserts began at least upon the filing of the original or amended complaints in the action (Compl. ¶¶21, 29, 37, 45, 53, 61).

VII. Analyst’s Conclusion: Key Questions for the Case

A core issue will be one of technical specificity: will the Plaintiff be able to produce evidence showing that the accused Pioneer products, when using third-party streaming services, practice the specific architectural and methodological limitations of the asserted claims, or is there a fundamental mismatch between the generic function of streaming and the detailed processes described in the patents?
A second key question will be one of definitional scope: can terms rooted in the technical context of the late 1990s and early 2000s, such as "playlist" (implying user-curated file lists) and "agent" (implying automated rule-based retrieval), be construed broadly enough to cover the functionalities of modern, cloud-based streaming ecosystems?
A dispositive threshold question is the viability of the asserted claims: given that post-filing IPR proceedings resulted in the cancellation of a significant number of the asserted claims, a central issue for the continuation of the case would be whether any valid and infringed claims remain to support the allegations.