UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION,
`
`Petitioner,
`
`
`
`v.
`
`
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner
`
`
`
`Case IPR2016-00418
`
`Patent 8,155,342
`
`
`
`PETITIONER'S RESPONSE TO PATENT OWNER'S
`
`MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION
`
`OF TOYOTA'S REPLY WITNESS DR. MATHESON
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION,
`
`Petitioner,
`
`
`
`v.
`
`
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner
`
`
`
`Case IPR2016-00418
`
`Patent 8,155,342
`
`
`
`PETITIONER'S RESPONSE TO PATENT OWNER'S
`
`MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION
`
`OF TOYOTA'S REPLY WITNESS DR. MATHESON
`
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Scheduling Order (Paper 14), Petitioner Toyota Motor
`
`Corporation (“Toyota” or “Petitioner”) timely submits its Response to Patent
`
`Owner's Motion for Observations on Cross-Examination of Toyota's Reply
`
`Witness Dr. Matheson (Paper 27).
`
`II.
`
`PETITIONER'S RESPONSE TO OBSERVATIONS
`1. Observations Relevant to Clayton's Disclosure of the "Audio
`Generated by the Portable Device Over Said Wireless
`Communication Link" Limitation
`
`Observation #A.1.
`
`Patent Owner incorrectly alleges on pages 1-2 of Paper 27 that Dr.
`
`Matheson's cross-examination testimony regarding a hypothetical scenario within
`
`Clayton's disclosure "contradicts and undermines the credibility of his opinions"
`
`that "unencoded is synonymous with decoded" and that "[i]f unencoded audio
`
`content is wirelessly transmitted, and that content originates from an MP3 file as
`
`the patent says it may, then a PHOSITA would understand that the portable device
`
`must first decode the MP3 file before wirelessly transmitting it." Ex. 1027 at 4 and
`
`5.
`
`This observation should be disregarded as Dr. Matheson's testimony was in
`
`fact fully consistent with his declaration opinions and noted that Clayton is not
`
`limited to the hypothetical scenario.
`
`
`
`
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`For example, in Ex. 2013, on page 16, lines 7 through 171, Dr. Matheson
`
`referred to Exhibit 1002 (Clayton) and testified: "Yes, and I use the word 'content'
`
`the same way that Clayton does, which refers to, in other places in the Clayton
`
`document, encoded or unencoded audio as well. So when I say 'content,' I'm not
`
`narrowing it the way I believe Dr. Stern attempted to do. Clayton expressly talks
`
`about content simply being audio, and so in paragraph 55 when he's talking about
`
`transmitting content, that content includes both encoded and unencoded audio, and
`
`it talks about transmitting that in an encoded or unencoded format."
`
`In Ex. 2013, on page 19, lines 4 through 6, Dr. Matheson referred to Exhibit
`
`1002 and testified: "Q. Can audio files be transmitted in unencoded form in
`
`Clayton? A. Yes they may."
`
`In Ex. 2013, on page 23, lines 18 through 25, Dr. Matheson referred to
`
`Exhibit 1002 and testified: "Clayton talks about sending various types of content,
`
`as defined by Clayton, in encoded or unencoded format. Your hypothetical
`
`includes a couple of those types in different conditions, and your hypothetical
`
`
`1 Unless otherwise noted, emphasis has been added and, for conciseness, objections have been
`removed.
`
`2
`
`
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
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`matches or is covered by or considered by Dr. Clayton or Mr. Clayton in paragraph
`
`55, but it's not limited to that."
`
`In Ex. 2013, on page 20, lines 11 through 20, Dr. Matheson referred to
`
`Exhibit 1002 and testified: "Q. What about MP3 files; can MP3 files be
`
`transmitted in Clayton in encoded form? A. Yes. Q. And they can be transmitted
`
`in unencoded form as well, correct? A. That's correct. To be accurate, to transmit
`
`an MP3 file in unencoded form means you first have to decode it, and then you
`
`are able to transmit it in unencoded form."
`
`
`
`Observation #A.2.
`
`Patent Owner incorrectly alleges on page 2 of Paper 27 that Dr. Matheson's
`
`cross-examination testimony regarding a "target device" as used in the Clayton
`
`reference "contradicts and undermines the credibility of his opinions regarding the
`
`bases for his interpretation of the Clayton reference."
`
`This observation should be disregarded as Dr. Matheson's testimony
`
`regarding a "target device" was in fact consistent with his declaration opinions.
`
`For example, in Ex. 2013, on page 43, lines 9 through 17, Dr. Matheson
`
`referred to Exhibit 1002 (Clayton) and testified: "So as I said, I'm glad I took a
`
`3
`
`
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
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`second look. It looks like Clayton does include a car stereo as being a type of a
`
`target device. He defines target device quite broadly to include, include both the
`
`portable devices and the car stereo itself. You'll note, however, that the car stereo
`
`is not shown as receiving content from the network and the content service."
`
`
`
`Observation #A.3.
`
`Patent Owner incorrectly alleges on pages 2-3 of Paper 27 that Dr.
`
`Matheson's cross-examination testimony that Clayton discloses a portable device
`
`that need not be an MP3 player "contradicts and undermines the credibility of his
`
`opinions" that "unencoded is synonymous with decoded" and that "[i]f unencoded
`
`audio content is wirelessly transmitted, and that content originates from an MP3
`
`file as the patent says it may, then a PHOSITA would understand that the portable
`
`device must first decode the MP3 file before wirelessly transmitting it." Ex. 1027
`
`at 4 and 5.
`
`This observation should be disregarded as Dr. Matheson's testimony was in
`
`fact consistent with his declaration opinions, and noted that his opinions are based
`
`on an embodiment in Clayton whereby the portable device transmits a stored MP3
`
`file as unencoded content.
`
`4
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
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`For example, in Ex. 2013, on page 46, line 16 through page 47, line 2, Dr.
`
`Matheson referred to Exhibit 1002 (Clayton) and testified: "Q. Okay. In a
`
`situation where the cellular telephone does not include an MP3 player, how would
`
`an MP3 file, as indicated in paragraph 5 of your declaration, be transmitted to a
`
`target device? A. I'm not addressing that hypothetical in paragraph 5. I am saying
`
`that the audio content may be audio from MP3 files in Clayton and providing
`
`citation to this paragraph as support for the notion that it may be from MP3 files.
`
`I'm not addressing when they're not MP3 files in this paragraph."
`
`In Ex. 2013, on page 20, lines 11 through 20, Dr. Matheson referred to
`
`Exhibit 1002 and testified: "Q. What about MP3 files; can MP3 files be
`
`transmitted in Clayton in encoded form? A. Yes. Q. And they can be transmitted
`
`in unencoded form as well, correct? A. That's correct. To be accurate, to transmit
`
`an MP3 file in unencoded form means you first have to decode it, and then you
`
`are able to transmit it in unencoded form."
`
`
`
`Observation #A.4.
`
`Patent Owner incorrectly alleges on page 3 of Paper 27 that Dr. Matheson's
`
`cross-examination testimony regarding A2DP "contradicts and undermines the
`
`5
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
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`credibility of his support for his statement" that "[i]f unencoded audio content is
`
`wirelessly transmitted, and that content originates from an MP3 file as the patent
`
`says it may, then a PHOSITA would understand that the portable device must first
`
`decode the MP3 file before wirelessly transmitting it." Ex. 1027 at 4.
`
`This observation should be disregarded as Dr. Matheson's testimony was in
`
`fact consistent with his declaration opinions, and noted that the opinions in
`
`paragraph 4 of his declaration were with respect to a different embodiment than
`
`A2DP.
`
`For example, in Ex. 2013, on page 60, line 19 through page 61, line 2, Dr.
`
`Matheson referred to Exhibit 1002 (Clayton) and testified: "A. Actually, I was
`
`referring to a different embodiment than the A2DP embodiment. Q. Which
`
`embodiment were you referring to? A. One where the MP3 player would decode
`
`the MP3 file into decoded audio and transmit that wirelessly. In that case, the
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`decoder in the interface would have nothing to do and would not do any decoding.
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`That's different from the way things work with A2DP."
`
`
`
`6
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`Observations #A.5 and #A.6.
`
`Patent Owner incorrectly alleges on pages 3-4 of Paper 27 that Dr.
`
`Matheson's cross-examination testimony that transcoding need not always be
`
`performed in A2DP "contradicts and undermines the credibility of his support for
`
`his statement" that "[i]f the portable device wishes to send MP3 audio data to a
`
`sink device that does not support MP3, then it must include an MP3 decoder to
`
`decode the MP3 audio to an unencoded format before reencoding it for
`
`transmission in a default format… A PHOSITA would understand that to comply
`
`with A2DP, such a decoder would be present in the portable device." Ex. 1027 at
`
`7. This observation should be disregarded as Dr. Matheson's testimony was in fact
`
`consistent with his declaration opinions that any source device implementing
`
`A2DP must have a decoder for A2DP transmission and must be configured to use
`
`that decoder in certain circumstances.
`
`For example, in Ex. 2013, on page 66, lines 4 through 16, Dr. Matheson
`
`referred to Exhibit 1002 (Clayton) and testified: "Q. What would be required in
`
`order to transmit an MP3 file by A2DP to a wireless adapter that includes an MP3
`
`decoder to transcode the MP3 file into SBC? A. It -- well, it depends. First of
`
`all, it's required that there be a decoder in the source. Whether or not that
`
`7
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
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`decoder is used in this particular case where A2DP is the transport profile depends
`
`upon whether the source and the SNK are aware of the mutual existence of that
`
`decoder and make an agreement that they will use that decoder. If they fail to do
`
`those things, then it would default to SBC."
`
`In Ex. 2013, on page 105, line 21 through page 106, line 20, Dr. Matheson
`
`referred to Exhibit 1002 (Clayton) and testified: "Q. Okay. So in this situation
`
`where the source device does not perform a transcoding, is the source device still
`
`required to have a decoder for A2DP streaming? A. Oh, yes, yes. In fact, I point
`
`to the relevant section in my declaration where it says it has to have a decoder. Q.
`
`So the source device in the A2DP embodiment of Clayton is required to have a
`
`decoder for A2DP streaming; is that correct? A. Yes. Q. Okay, and in the
`
`situation where the source device does not perform transcoding for audio
`
`streaming, must the SNK device such as the car stereo of Clayton have an SBC
`
`decoder? A. Yes. In fact, SBC is always required. Q. So whether transcoding is
`
`performed or not, is the source device of Clayton structurally configured or capable
`
`of performing transcoding for wireless streaming? A. Yes. Q. And whether
`
`transcoding is performed or not, is the SNK device of Clayton structurally
`
`configured or capable to receive transcoded audio? A. Yes."
`
`8
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`In Ex. 2013, on page 107, lines 6 through 21, Dr. Matheson referred to
`
`Exhibit 1002 (Clayton) and testified: "Q. Okay, and in this situation where there
`
`is no transcoding for streaming, is the source device structurally configured or
`
`capable to perform transcoding for wireless streaming? A. Let me make sure I
`
`follow you. It's not transcoding, and you're asking does the source device have
`
`the ability to transcode? Q. That's right. A. The A2DP requirement or
`
`specification, rather, requires that it have that ability. The answer is yes. Q.
`
`And in this situation where there is no transcoding, in this hypothetical situation, is
`
`the SNK device structurally capable of receiving transcoded audio over A2DP? A.
`
`Yes."
`
`
`
`2. Observations Relevant to the '667 Application's Lack of
`Support for the "Audio Generated by the Portable Device
`Over Said Wireless Communication Link" Limitation in the
`'342 Patent
`
`Observation #B.1.
`
`Patent Owner incorrectly alleges on pages 4-5 of Paper 27 that Dr.
`
`Matheson's cross-examination testimony regarding a wired interface in the '667
`
`Application "contradicts and undermines the credibility of his statement" that the
`
`9
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`'667 Application does not support the "audio generated by the portable device over
`
`said wireless communication link" limitation. This observation should be
`
`disregarded as Dr. Matheson's testimony was in fact consistent with his declaration
`
`opinions, and noted that the '667 Application only provides support for
`
`transmitting generated audio over a wired connection and not wirelessly.
`
`In Ex. 2013, on page 97, line 1 through page 100, line 18, Dr. Matheson
`
`referred to Exhibit 1009 (the '667 Application) and testified: "Yes, and again that
`
`'yes' is in the context of this particular paragraph talking about a wired interface.
`
`… Q. So do you understand from this sentence that it is being disclosed that the
`
`audio that was channeled from the MP3 player, as we just read, can be channeled
`
`using Bluetooth. A. I do not, and let me explain why… Clearly the paragraph is
`
`talking about control signals… When I look on page 55, well, the context once
`
`again is talking about control. It's not talking about audio communication. So I
`
`conclude, first of all, that this… does not disclose possession of wireless
`
`transmission of audio, because it's talking about wireless transmission of
`
`control. Even if it did talk about wireless transmission of audio, merely
`
`mentioning Bluetooth is totally insufficient, a person of ordinary skill would
`
`relaize, to simply replace, for instance, the CD-based interface that you referred me
`
`10
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`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`to earlier from the MP3 player with BlueTooth. Bluetooth has, last I looked, like
`
`three dozen different profiles. There's lots of different ways of communicating lots
`
`of different things. Simply mentioning BlueTooth does not necessarily mean
`
`audio transmission, so I don't find support for it there. It just says wireless and
`
`BlueTooth in the context of control... ."
`
`
`
`3. Observations Relevant to the Clayton Provisional's
`Disclosure of the "Audio Generated by the Portable Device
`Over Said Wireless Communication Link" Limitation
`
`Observation #C.1.
`
`Patent Owner incorrectly alleges on page 5 of Paper 27 that Dr. Matheson's
`
`cross-examination testimony regarding one embodiment in the Clayton Provisional
`
`"contradicts and undermines the credibility of his statement" that the Clayton
`
`Provisional discloses the "audio generated by the portable device over said
`
`wireless communication link" limitation. This observation should be disregarded
`
`as Dr. Matheson's testimony was in fact consistent with his declaration opinions,
`
`and noted that the Clayton Provisional is not limited to that one embodiment and
`
`discloses other embodiments whereby unencoded/decoded audio is transmitted.
`
`11
`
`
`
`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`In Ex. 2013, on page 116, lines 8 through 9, Dr. Matheson referred to
`
`Exhibit 1003 (the Clayton Provisional) and testified: "This is one of many
`
`embodiments that are in this volume of pages."
`
`In Ex. 2013, on page 123, lines 2 through 6, Dr. Matheson referred to
`
`Exhibit 1003 (the Clayton Provisional) and testified: "Q. And a .WAV file is not a
`
`compressed file? A. It is not -- a .WAV file is not compressed. It's PCM, pulse-
`
`code modulated digitally encoded audio. No compression."
`
`In Ex. 2013, on page 123, lines 13 through 21, Dr. Matheson referred to
`
`Exhibit 1003 (the Clayton Provisional) and testified: "Q. Just really quickly, do
`
`you believe that all of the wireless streaming embodiments of the Clayton
`
`provisional publication are limited to or based on the definition of a WACA in the
`
`Clayton provisional application? A. No, no. WACA includes a discussion of
`
`A2DP. There's other, like I said, many other embodiments here. It's not limited to
`
`that at all."
`
`
`
`III. CONCLUSION
`
`Patent Owner's observations are incorrect, misleading, and/or
`
`mischaracterize Dr. Matheson's testimony for at least the reasons set forth above.
`
`12
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`
`
`TOYOTA ET AL.’S REPLY TO PATENT OWNER’S RESPONSE
`Case IPR2014-00280
`
`
`
`
`Sughrue Mion, PLLC
`CUSTOMER NUMBER: 23373
`Date: January 26, 2017
`
`Respectfully submitted,
`
`/William H. Mandir/
`
`William H. Mandir
`Registration No. 32,156
`
`13
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`
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the attached Response to Patent
`
`Owner's Motion for Observations on Cross-Examination of Toyota's Reply
`
`Witness Dr. Matheson in Case IPR2016-00418 and this Certificate of Service are
`
`being served on January 26, 2017 by electronic mail upon the following:
`
`Peter Lambrianakos
`Alfred Fabricant
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`
`Date: January 26, 2017
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
` /Fadi N. Kiblawi/
`Fadi N. Kiblawi
`Registration No. 61,973
`
`
`
`
`
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