Trials@uspto.gov
`571-272-7822
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` Paper 19
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` Entered: April 27, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00118
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
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` Paper 19
`
`
`
` Entered: April 27, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00118
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00118
`Patent 8,155,342 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Unified Patents Inc., filed a Petition requesting an inter
`
`partes review of claims 1–25, 49, 73, 97, 120, and 121 of U.S. Patent No.
`
`8,155,342 B2 (Ex. 1001, “the ’342 patent”). Paper 1 (“Pet.”). In response,
`
`Patent Owner, Blitzsafe Texas, LLC, filed a Preliminary Response. Paper
`
`11 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
`
`provides that an inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`Upon consideration of the arguments and evidence presented by
`
`Petitioner and Patent Owner, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing the
`
`unpatentability of any one of claims 1–25, 49, 73, 97, 120, and 121 of the
`
`’342 patent. For reasons discussed below, we deny the Petition as to all
`
`challenges.
`
`A. Related Matters
`
`The ’342 patent is involved in the following on-going litigations: (1)
`
`Blitzsafe Texas, LLC v. Nissan Motor Co., Ltd. et al., 2-15-cv-01276, TXED,
`
`July 16, 2015; (2) Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2-15-
`
`cv-01277, TXED, July 16, 2015; (3) Blitzsafe Texas, LLC v. Volkswagen
`
`Group of Am., Inc. et al., 2-15-cv-01278, TXED, July 16, 2015; (4) Blitzsafe
`
`Texas, LLC v. Hyundai Motor Co. et al., 2-15-cv-01275, TXED, July 16,
`
`2015; (5) Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et al., 2-15-cv-
`
`2
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`IPR2016-00118
`Patent 8,155,342 B2
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`01274, TXED, July 16, 2015; (6) Marlowe Patent Holdings LLC v. Dice
`
`Elects., LLC, et al., 3-10-cv-01199, NJD, March 5, 2010; and (7) Card
`
`Verification Solutions, LLC v. JP Morgan Chase & Co., 1-13-cv-006338,
`
`ILND, September 4, 2013. Pet. 1–2.
`
`Patent Owner also identifies other petitions requesting inter partes
`
`review of the ’342 patent based on different prior art references, including:
`
`(1) Toyota Motor Corp. v. Blitzsafe Texas, LLC, IPR2016-00418, Petition
`
`for Inter Partes Review, (Dec. 30, 2015); and (2) Toyota Motor Corp. v.
`
`Blitzsafe Texas, LLC, IPR2016-00419, Petition for Inter Partes Review,
`
`(Dec. 30, 2015).
`
`B. Real Party-in-Interest1
`
`Petitioner certifies that Unified Patents Inc. is the real party-in-
`
`interest, and “further certifies that no other party exercised control or could
`
`exercise control over Unified’s participation in this proceeding, the filing of
`
`this petition, or the conduct of any ensuing trial.” Pet. 1. In support of this
`
`assertion, Petitioner files “Voluntary Interrogatory Responses,” signed by its
`
`counsel and verified by its CEO. Ex. 1019.
`
`
`
`1 Patent Owner contends that the Petition fails to identify all real parties-in-
`interest, as required under 35 U.S.C. § 312(a)(2). Prelim. Resp. 4–10.
`However, because we do not institute inter partes review, we need not
`address the real-parties-in-interest (RPI) issue substantively.
`3
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`IPR2016-00118
`Patent 8,155,342 B2
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`
`C.
`
`The ’342 Patent
`
`The ’342 patent relates to a multimedia device integration system that
`
`allows a plurality of “after-market” portable devices to be integrated into an
`
`existing car audio/video (stereo) system, via an “integration subsystem,”
`
`while allowing information to be displayed on, and control to be provided
`
`from, the car audio/video system. See Ex. 1001, 2:44–54; Abstract.
`
`Examples of these portable devices include CD players, CD changers, digital
`
`media devices (e.g., MP3 players, Apple iPod, WMV players, portable
`
`media centers, and other devices), satellite receivers, DAB receivers,
`
`auxiliary input sources, video devices (e.g., DVD players), cellular
`
`telephones, or any combination thereof. Id.
`
`The ’342 patent claims are directed to certain embodiments where
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`wireless integration is provided between a car audio/video system and a
`
`portable device, via an integration subsystem. Ex. 1001, 33:43–46.
`
`Figure 18 shows an integration subsystem positioned within a portable
`
`device, and Figure 19 shows an integration subsystem positioned within a
`
`car audio/video system, as reproduced below.
`
`4
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`IPR2016-00118
`Patent 8,155,342 B2
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`
`
`
`Figures 18 and 19 of the ’342 patent show integration subsystems 932 and
`1032 positioned, respectively, within portable device 924 or within car
`audio/video system 1010.
`
`As shown in Figure 18, integration subsystem 932 positioned within
`
`portable device 924 allows information (data and control signals) to be
`
`exchanged between portable device 924 and car audio/video system 910, and
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`processes and formats data accordingly so that instructions and data from car
`
`audio/video system 910 are processed by portable device 924, and vice
`
`versa. See id. at 33:43–35:62; Fig. 18. Similarly, as shown in Figure 19,
`
`integration subsystem 1032 positioned within car audio/video system 1010
`
`allows information (data and control signals) to be exchanged between
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`5
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`Patent 8,155,342 B2
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`portable device 1024 and car audio/video system 1010, and processes and
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`formats data accordingly so that instructions and data from car audio/video
`
`system 1010 are processed by portable device 1024, and vice versa. See id.
`
`at 33:43–35:62; Fig. 19.
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 1, 25, 49, 73, 97, 120, and 121 are
`
`independent. Claims 2–24 depend, directly or indirectly, from claim 1.
`
`Claim 1, reproduced below, is illustrative.
`
`1. A multimedia device integration system, comprising:
`
`an integration subsystem in communication with a
`portable device, the portable device external to a car audio/video
`system; and
`
`a first wireless interface in communication with said
`integration subsystem, said first wireless interface establishing a
`wireless communication link with a second wireless interface in
`communication with the car audio/video system,
`
`wherein said integration subsystem obtains information
`about an audio file stored on the portable device, transmits the
`information over said wireless communication link to the car
`audio/video system for subsequent display of the information on
`a display of the car audio/video system, instructs the portable
`device to play the audio file in response to a user selecting the
`audio file using controls of the car audio/video system, and
`transmits audio generated by the portable device over said
`wireless communication link to the car audio/video system for
`playing on the car audio/video system.
`
`Ex. 1001, 39:5–25:24.
`
`
`
`Claim 25 is substantially identical to claim 1, except that the audio file
`
`is “received by” instead of “stored on” the portable device. Id. at 40:50–
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`6
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`41:2. Similarly, claim 49 is substantially identical to claim 1, but leaves out
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`the phrase “integration subsystem in communication with the portable
`
`device,” and recites the second wireless interface as being with the portable
`
`device, instead of with the car audio/video system. Id. at 42:29–49. Claim
`
`73 is substantially identical to claim 49, except that the audio file is
`
`“received by” instead of “stored on” the portable device. Id. at 44:4–23.
`
`Claim 97 is similar to claim 1, but adds that the car stereo control
`
`commands are in a format incompatible with the portable device, and are re-
`
`formatted for purposes of compatibility. Id. at 45:45–63. Likewise, claim
`
`120 is similar to claim 1, but adds that the data from the portable device is in
`
`a format incompatible with the car audio/video device, and is then re-
`
`formatted for purposes of compatibility. Id. at 46:63–47:18. Claim 121 is
`
`also similar to claim 1, but requires separate wireless links with both the
`
`portable device and the car audio/video system. Id. at 47:19–48:20.
`
`E. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references:
`
` US 2001/0028717 A1 Oct. 11, 2001
`Ohmura
` US 2002/0084910 A1 July 4, 2002
`Owens
` WO 02/096137 A1
`Nov. 28, 2002
`Ahn
`
` US 6,539,358 B1
`Mar. 25, 2003
`Coon
` US 6,175,789 B1
`Jan. 16, 2001
`Beckert
` US 2003/0025830 A1 Feb. 6, 2003
`Perry
` US 2001/0029415 A1 Oct. 11, 2001
`Flick
` US 7,493,645 B1
`Feb. 17, 2009
`Tranchina
` US 2002/0196134 A1 Dec. 26, 2002
`Lutter
`McConnell US 6,608,399 B2
`Aug. 19, 2003
`Eiche
` US 2002/0137505 A1 Sept. 26, 2002
`
`
`(Ex. 1004)
`(Ex. 1005)
`(Ex. 1006)
`(Ex. 1007)
`(Ex. 1008)
`(Ex. 1010)
`(Ex. 1011)
`(Ex. 1012)
`(Ex. 1013)
`(Ex. 1014)
`(Ex. 1015)
`
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`Petitioner also relies on the Declaration of Dr. Prasant Mohapatra
`
`(“Mohapatra Decl.”). Ex. 1002.
`
`F. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1–25, 49, 73, 97, 120, and 121 of the
`
`‘342 patent under 35 U.S.C. § 1022 and § 103(a) on the following grounds:
`
`Challenged Claims
`
`Basis
`
`References
`
`Claims 1–4 and 49
`
`§ 102
`
`Ohmura
`
`Claims 1–4 and 49
`
`§ 103(a) Owens and Ahn
`
`Claims 25 and 73
`
`§ 103(a) Ohmura and Anh
`
`Claims 5 and 97
`
`§ 103(a) Ohmura and Flick
`
`Claims 5 and 97
`
`§ 103(a) Owens, Ahn, and Flick
`
`Claims 6 and 120
`
`§ 103(a) Ohmura and Tranchina
`
`Claims 6 and 120
`
`§ 103(a) Owens, Anh, and Tranchina
`
`Claims 7–10
`
`Claims 7–10
`
`Claim 11
`
`Claim 11
`
`Claims 12–18, 20–21,
`and 23–24
`Claims 12–18, 20–21,
`and 23–24
`
`§ 103(a) Ohmura and Coon
`
`§ 103(a) Owens, Ahn, and Coon
`
`§ 103(a) Ohmura and Lutter
`
`§ 103(a) Owens, Ahn, and Lutter
`
`§ 103(a) Ohmura and McConnell
`
`§ 103(a) Owens, Ahn, and McConnell
`
`Claim 19
`
`§ 103(a) Ohmura and Beckert
`
`
`
`2 Petitioner does not identify the subsection of 35 U.S.C. § 102 for
`anticipation based on Ohmura. Nevertheless, in this case no such
`identification is necessary because the reference does not disclose all
`elements of any claim.
`
`8
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`IPR2016-00118
`Patent 8,155,342 B2
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`
`Challenged Claims
`
`Basis
`
`References
`
`Claim 19
`
`Claim 22
`
`Claim 22
`
`Claim 121
`
`Claim 121
`
`§ 103(a) Owens and Ahn
`
`§ 103(a)
`
`§ 103(a)
`
`Ohmura, McConnell, and
`Tranchina
`Owens, Ahn, McConnell, and
`Tranchina
`
`§ 103(a) Ohmura and Eiche
`
`§ 103(a) Owens, Ahn, and Eiche
`
`II. ANALYSIS
`
`A. Claim Construction
`
`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 also In re Cuozzo
`
`Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir. 2015), cert.
`
`granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.)
`
`(2016). Even under the rule of broadest reasonable interpretation, claim
`
`terms are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`Petitioner proposes constructions for two claim terms: (1) “integration
`
`subsystem” and (2) “multimedia device integration system” as recited in
`
`challenged claims 1–25, 49, 73, 97, 120, and 121. Pet. 15–16. The term
`
`“multimedia device integration system” is recited as a preamble of each of
`
`independent claims 1, 25, 49, 73, 97, and 120, whereas the term “integration
`
`9
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`IPR2016-00118
`Patent 8,155,342 B2
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`subsystem” is recited in the body of each independent claim 1, 25, 49, 73,
`
`97, 120, and 121.
`
`Petitioner proposes that the term “integration subsystem” means “a
`
`processor and associated software and memory.” Pet. 15. According to
`
`Petitioner, the ’342 patent simply shows a box labelled “integration
`
`subsystem” positioned within the portable device or within the car
`
`audio/video system, shown in Figures 18–23, and describes “integration” as
`
`being handled by a microcontroller to perform the functions: “obtaining
`
`information about the audio file, transmitting a control command to select a
`
`file, and instructing the audio device to transmit the file.” Id. at 15 (citing
`
`Ex. 1001, 8:64–9:19, 13:9–19).
`
`Patent Owner responds that a construction of “integration subsystem”
`
`is not necessary, but if such a construction were necessary, Petitioner’s
`
`proffered construction of “integration subsystem” is incorrect and
`
`inconsistent with its ordinary and customary meaning in light of the claims
`
`and Specification of the ’342 patent. Prelim. Resp. 11–13. Specifically,
`
`Patent Owner argues Petitioner’s proposed construction fails to account for
`
`the special definition of the term “integration” described in the ’342 patent’s
`
`Specification and the plain meaning of the term “subsystem” itself, which
`
`requires that the subsystem be subordinate to another system. Id. at 12–13.
`
`We agree with Patent Owner that a proper construction of “integration
`
`subsystem” must serve the purpose of “integration” and must be a
`
`“subsystem” as described in the ’342 patent and as recited in the claims. Id.
`
`at 13. At the outset, we note the term “integration” is expressly defined in
`
`the ‘342 patent as follows:
`
`10
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`IPR2016-00118
`Patent 8,155,342 B2
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`
`As used herein, the term “integration” or “integrated” is
`intended to mean [1] connecting one or more external
`devices or inputs to an existing car stereo or video system
`via an interface, [2] processing and handling signals,
`audio, and/or video information, [3] allowing a user to
`control the [external] devices via the car stereo or video
`system, and [4] displaying data from the devices on the car
`stereo or video system.
`
`Ex. 1001, 8:64–9:3 (emphasis added) (brackets added).
`
`When the specification of a patent contains a “special definition given
`
`to a claim term by the patentee,” that definition controls interpretation of the
`
`term as it is used in the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1316
`
`(Fed. Cir. 2005) (en banc).
`
`The term “integration subsystem” is used in the ‘342 patent in relation
`
`to wireless integration embodiments between an existing car audio/video
`
`system and a portable device, shown in Figures 18–24. Ex. 1001, 33:43–
`
`38:67, Figs. 18–24. In particular, the ’342 patent’s Specification describes
`
`the “integration subsystem” as being positioned within the portable device,
`
`shown in Figure 18, or within the car audio/video system, shown in Figure
`
`19. Ex. 1001, 34:9–13, 35:23–28; Figures 18–19.
`
`
`
`Based on the special definition of the term “integration” provided by
`
`the ’342 patent, we construe the term “integration subsystem” as meaning:
`
`A subsystem to perform at least: (1) connecting one or more
`portable devices or inputs to the car audio/video system via an
`interface, (2) processing and handling signals, audio, and/or
`video information, (3) allowing a user to control the one or more
`portable devices via the car audio/video system, and (4)
`displaying data from the one or more portable devices on the car
`audio/video system.
`
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`11
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`With respect to the term “multimedia device integration system,”
`
`Petitioner proposes that term as meaning “a system that provide [sic] audio
`
`or video and a display.” Pet. 15–16. Patent Owner responds that a
`
`construction of “multimedia device integration system” is not necessary, but
`
`if such a construction were necessary, Petitioner’s proffered construction of
`
`“integration subsystem” is incorrect for failure to account for the
`
`“integration” limitation. Prelim. Resp. 14.
`
`We agree with Patent Owner. Nevertheless, having construed the
`
`term “integration subsystem,” we are not persuaded that an express
`
`construction of the term “multimedia device integration system” is necessary
`
`except to say simply that the integration system must perform the
`
`“integration” function defined in the Specification of the ’342 patent. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”)
`
`B. Legal Standard for 35 U.S.C. §§ 102 & 103(a)
`
`Having considered the meaning of the claims, we turn next to whether
`
`claims 1–25, 49, 73, 97, 120, and 121 of the ’342 patent are unpatentable
`
`under 35 U.S.C. §§ 102 & 103(a) in view of the prior art submitted by
`
`Petitioner. A claim is anticipated only if each and every element as set forth
`
`in the claim is found, either expressly or inherently described in a single
`
`prior art reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628,
`
`631 (Fed. Cir. 1987).
`
`12
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`Obviousness is determined on the basis of underlying factual
`
`inquiries, including: (1) the scope and content of the prior art; (2) differences
`
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`skill in the art; and (4) secondary considerations of nonobviousness.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A patent claim is
`
`unpatentable under 35 U.S.C. § 103 if the differences between the claimed
`
`subject matter and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains. KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (emphasis added).
`
`However, a conclusion of obviousness “cannot be sustained with mere
`
`conclusory statements; instead, there must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of
`
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`
`For this decision, we determine that no express finding on the level of
`
`ordinary skill in the art is necessary, and that the level of ordinary skill in the
`
`art is reflected by the prior art of record. See Okajima v. Bourdeau,
`
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`C. Alleged Anticipation of Claims 1–4 and 49 based on Ohmura
`
`Petitioner contends that claims 1–4 and 49 are anticipated by Ohmura
`
`under 35 U.S.C. § 102. Pet. 17–24. To support its contentions, Petitioner
`
`provides a claim chart and detailed explanations as to how Ohmura allegedly
`
`meets each claim limitation. Id. at 21–22. Petitioner also relies upon a
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`Declaration of Dr. Prasant Mohapatra, who has been retained as an expert
`
`witness by Petitioner for the instant proceeding. Ex. 1002. For the reasons
`
`that follow, Petitioner has not shown a reasonable likelihood that it would
`
`prevail in establishing anticipation of any one of claims 1–4 and 49 by
`
`Ohmura.
`
`(1) Ohmura: Exhibit 1004
`
`Ohmura discloses car audio/video system 100 mounted in vehicle 1
`
`and portable devices 200a–200b carried into vehicle 1 by passengers that
`
`communicate wirelessly with car audio/video system 100, shown in Figures
`
`1 and 2. Ex. 1004 ¶ 56, Abstract. Ohmura’s Figures 1 and 2 are reproduced
`
`below with additional markings inserted, in red, for illustration.
`
`Ohmura’s Figure 1 shows car audio/video system 100 with display 24
`mounted in vehicle 1 and portable devices 200a–200b that communicate
`wirelessly with car audio/video system 100.
`
`
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`
`
`Ohmura’s Figure 2 shows car audio/video system 100 with display 24 that
`communicates wirelessly with portable devices 200a–200b, via Bluetooth.
`
`As shown in Ohmura’s Figure 2, car audio/video system 100 and
`
`portable devices 200a–200b transmit/receive music data to/from each other
`
`via transmission/reception modules 110, 2053 using a short-range radio such
`
`as Bluetooth, and allow car audio system 100 to control portable devices
`
`200a–200b. Ex. 1004 ¶¶ 84–85, 89.
`
`Ohmura describes the use of an “audio menu” on display 24 of car
`
`audio/video system 100, as shown in Figure 7, to provide a visual display of
`
`a playlist of music data (e.g., music titles, artist names and data volumes) for
`
`
`
`3 In Ohmura’s Figure 2, only portable device 200a is shown in detail.
`However, it is understood that portable device 200b has the same
`transmission/reception module as portable device 200a.
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`user selection of music data from a music source (e.g., FM, AM, car-
`
`mounted CD or external portable devices A–D) for an output destination
`
`(e.g., car-mounted speakers or external portable devices A–D). Ex. 1004
`
`¶¶ 113–115. Figure 7 of Ohmura is reproduced below with additional
`
`markings inserted, in red, for illustration.
`
`
`
`Ohmura’s Figure 7 shows an “audio menu” screen provided on display 24 of
`car audio/video system 100 to allow a user to select music data from a music
`source D11 (portable devices 200a–200b) for an output destination D13.
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`(2) Analysis of Anticipation
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`
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`Independent claims 1 and 49 each recite a “multimedia device
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`integration system” which comprises: [A] “an integration subsystem” and
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`[B] first and second wireless interfaces, and requires the [A] “integration
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`subsystem” inter alia: [C] “instructs the portable device to play the audio
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`file in response to a user selecting the audio file using controls of the car
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`audio/video system, and [transmits/receives] audio generated by the
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`portable device over said wireless communication link to the car audio/video
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`system for playing on the car audio/video system.” Ex. 1001, 39:6–24
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`(emphasis added).
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`Based on its own proffered construction of “integration subsystem” as
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`“a processor and associated software and memory” and Dr. Mohapatra’s
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`testimony (Ex. 1002 ¶¶ 20–24), Petitioner argues that (1) the claimed [A]
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`“integration subsystem” is met by Ohmura’s operating system 106 and CPU
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`101 of the car audio/video system 100 or the operating system 207 and CPU
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`203 of the portable device 200a–200b and its inherent associated memory,
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`shown in Figure 2; and (2) the claimed [B] “first and second wireless
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`interfaces” are met by the “transmission/reception modules” 110 (car
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`audio/video system) and 205 (portable device). Pet. 8–9.
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`Patent Owner does not dispute Ohmura’s “transmission/reception
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`modules” 110, 205 as the claimed [B] “first and second wireless interfaces.”
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`However, Patent Owner argues that: (1) Ohmura’s operating system does not
`
`constitute “software” and (2) there is no memory inherently present in
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`Ohmura’s CPU. Prelim. Resp. 18–19. According to Patent Owner,
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`Ohmura’s operating system can also be implemented purely as hardware
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`such as a field-programmable gate array (FPGA). Id. at 18.
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`Neither party sufficiently addresses the claim limitation at issue. As
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`previously discussed, our construction of “integration subsystem” is:
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`A subsystem to perform at least: (1) connecting one or more
`portable devices or inputs to the car audio/video system via an
`interface, (2) processing and handling signals, audio, and/or
`video information, (3) allowing a user to control the one or more
`portable devices via the car audio/video system, and (4)
`displaying data from the one or more portable devices on the car
`audio/video system.
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`Based on our construction, we are not sufficiently persuaded that
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`Ohmura’s CPU 101, 203 positioned within car audio system 100 or portable
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`device 200a–200b, shown in Figures 2 and 7, alone can be said to meet the
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`“integration subsystem” recited in independent claims 1 and 49. Petitioner
`
`does not account for or direct us to where each of the functions performed
`
`by the claimed “integration subsystem” is found in Ohmura’s CPU as is
`
`required by 37 C.F.R. § 42.104(b)(4).
`
`Claims 1 and 49 also require that the [A] “integration subsystem …
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`[C] instructs the portable device to play the audio file in response to a user
`
`selecting the audio file using controls of the car audio/video system, and
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`[transmits/receives] audio generated by the portable device over said
`
`wireless communication link to the car audio/video system for playing on
`
`the car audio/video system.” Ex. 1001, 39:14–24, 42:37–47 (emphasis
`
`added). In claim 1, the integration subsystem instructs the portable device to
`
`play an audio file and transmits the audio generated by the portable device
`
`over a wireless link to the car audio/video system. In claim 49, the
`
`integration subsystem also instructs the portable device to play an audio file,
`
`but the integration subsystem receives the audio generated by the portable
`
`device over the wireless link for playing on the car audio/video system.4 In
`
`both claims, the “audio generated by the portable device” is the result of
`
`
`
`4 The difference between Claims 1 and 49 is that in Claim 1, the integration
`subsystem is connected to the car audio/video system by a wireless link,
`whereas in Claim 49, the integration subsystem is connected to the portable
`device by a wireless link. In both claims, however, the portable device plays
`the audio file. Ex. 1001, 39:14–24, 42:37–47.
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`playing the audio file. We refer to the requirement that audio generated by
`
`the portable device as the result of playing the audio file as “the audio
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`generated by the portable device” limitation.
`
`Petitioner contends that the additional [C] functions of the claimed
`
`[A] “integration subsystem” are met by Ohmura’s CPU 101 and associated
`
`functions, shown in Figure 4, including user selection of an audio file from a
`
`play list from the portable device, via “audio menu” screen provided on
`
`display 24 of the car audio/video apparatus 100, shown in Figure 7,
`
`described in paragraphs 84, 99, 111, 113, and 204 as outlined in a claim
`
`chart at pages 21–22 of the Petition. Pet. 19–22 (citing Ohmura ¶¶ 84, 99,
`
`111, 113, 204). In particular, Petitioner argue that the additional [C]
`
`functions “of controlling the portable device with the car stereo controls is
`
`shown in paragraph 111” of Ohmura. Id. at 20.
`
`Patent Owner responds that Ohmura does not disclose the “audio
`
`generated by the portable device” limitation as recited in the challenged
`
`claims 1 and 49. Prelim. Resp. 19–22. According to Patent Owner, Ohmura
`
`does not disclose that the portable device plays an audio file because
`
`Ohmura teaches that audio data (“music file”) is stored on the car
`
`audio/video system and played at the car audio/video system. Id. at 20
`
`(citing Ex. 1004 ¶¶ 68–69). Likewise, the cited paragraphs of Ohmura
`
`outlined in the claim chart only describe: (1) user selection of an audio file
`
`from a list of audio files and (2) audio generated by the car audio/video
`
`system. Id. at 20–22 (citing Exhibit 1004 ¶¶ 69, 84, 113). The cited
`
`paragraphs of Ohmura do not describe the “audio generated by the portable
`
`device” limitation as recited in the challenged claims 1 and 49. Id.
`
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`We agree with Patent Owner. According to Ohmura, when music is
`
`selected by a user from a portable device 200a–200b, for an output
`
`destination D13, i.e., speakers in the vehicle shown in Ohmura’s Figure 7,
`
`music data (i.e., music file) is sent from the portable device 200a–200b and
`
`received at the car audio/video system 100. See Ex. 1004 ¶¶ 71, 113. That
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`music data (music file) is temporarily stored in an information storage unit
`
`of the car audio system 100 and is then reproduced or outputted as music
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`(audio) from the speakers 28 in the vehicle. Ex. 1004 ¶¶ 119–122. In other
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`words, Ohmura’s music data, i.e., the music file, is transferred from the
`
`portable device to the car audio/video system. Id. at ¶ 84. According to
`
`Ohmura, audio is generated on the car audio/video system by playing a
`
`transferred music file and not generated on the portable device by playing a
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`music file on the portable device as is required by the claims.
`
`
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`Because Ohmura does not disclose the “integration subsystem” and
`
`the “audio generated by the portable device” limitations, we are not
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`persuaded that Petitioner has established a reasonable likelihood that
`
`independent claims 1 and 49 and dependent claims 2–4 are anticipated by
`
`Ohmura under 35 U.S.C. § 102(b).
`
`D. Alleged Obviousness of Remaining Claims 5–25, 73, 97, 120, and
`121 based on Ohmura and Various Secondary References,
`including Ahn, Coon, Beckert, Flick, Tranchina, Lutter,
`McConnell, and Eiche.
`
`
`Claims 25, 73, 97, 120, and 121 are independent and each also recites
`
`the “integration subsystem” and the “audio generated by the portable
`
`device” limitations of challenged claims 1 and 49 in addition to other
`
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`limitations not disclosed by Ohmura. For example, claims 25 and 73 each
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`further require the audio file to be “received by” instead of “stored on” the
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`portable device (e.g., the portable device that streams or receives music).
`
`Ex. 1001, 40:50–41:2. Claim 97 further requires the car stereo control
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`commands to be in a format incompatible with the portable device, and to be
`
`re-formatted for purposes of compatibility. Id. at 45:45–63. Likewise, claim
`
`120 further requires the data from the portable device is in a format
`
`incompatible with the car audio/video device, and is then re-formatted for
`
`purposes of compatibility. Id. at 46:63–47:18. Claim 121 further requires
`
`the integration subsystem have separate wireless links with both the portable
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`device and the car audio/video system. Id. at 47:19–48:20.
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`Petitioner contends these additional features are disclosed in several
`
`secondary references. For example, Petitioner alleges: (1) music streaming
`
`feature recited in claims 25 and 73 is allegedly disclosed by Ahn (Pet. 34–
`
`35); (2) conversion of incompatible control signals recited in claim 97 is
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`allegedly disclosed by Flick (Pet. 35–37); (3) conversion of incompatible
`
`data recited in claim 120 is allegedly disclosed by Tranchina (Pet. 37–39);
`
`and (4) separate wireless links with both the portable device and the car
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`audio system recited in claim 121 are allegedly disclosed by Eiche (Pet. 55–
`
`56) in order to support the conclusion of obviousness. Pet. 34–39, 55–56.
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`Because Ohmura does not disclose the “integration subsystem” and
`
`the “audio generated by the portable device” limitations and these secondary
`
`references do not remedy the deficiencies of Ohmura, we are not persuaded
`
`that Petitioner has established a reasonable likelihood that the remaining
`
`independent claims 25, 73, 97, 120, and 121 are unpatentable under
`
`21
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`35 U.S.C. § 103(a) as obvious over Ohmura in view of these secondary
`
`references.
`
`Similarly, claims 5–24 depend, directly or indirectly, from
`
`independent claim 1, and each further recites additional aspects of
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`integration, control signals and data format conversion, voice recognition,
`
`speech synthesizer, and different types of portable devices. Petitioner
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`contends these additional features are disclosed by Flick (Pet. 37), Tranchina
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`(Pet. 37–40, 53), Coon (Pet. 40–42), Lutter (Pet. 44–45), McConnell (Pet.
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`46–52), and Beckert (Pet. 52–53). Again, because Ohmura does not disclose
`
`the “integration subsystem” and the “audio generated by the portable
`
`device” limitations and these secondary references do not remedy the
`
`deficiencies of Ohmura, we are not persuaded that Petitioner has established
`
`a reasonable likelihood that dependent claims 5–24 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Ohmura in view of these secondary
`
`references.
`
`E. Alleged Obviousness of Claims 1–4 and 49 based on Owens and
`
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