IPR2016-00418
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`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
`Petitioner
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
`
`
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`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`
`BLITZSAFE TEXAS, LLC’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,342
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`Case No. IPR2016-00418
`________________________________________________________________
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`TABLE OF CONTENTS
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION AND CLAIMS ...................................... 5
`A.
`The Board Should Deny Institution in the Interest of Justice
`Because Petitioner’s Arguments Are an Abuse of Process................... 5
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`B.
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`C.
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`Petitioner Has Not Shown that the Term “Integration
`Subsystem” Invokes 35 U.S.C. 112 ¶ 6 ................................................ 6
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`Even if the Term “Integration Subsystem” Is Found to Invoke
`35 U.S.C. 112 ¶ 6, the ’342 Patent Describes Sufficient
`Structure. ............................................................................................. 10
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`1.
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`2.
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`The Alleged Functions of the Integration Subsystem are
`not “Computer-Implemented” and Do Not Require an
`Algorithm .................................................................................. 11
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`Even if the Functions Required an Algorithm, Figure 24
`is Sufficient ............................................................................... 14
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`III.
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`3.
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`Petitioner Ignores the Voluminous Algorithms and
`Source Code Provided in the ’342 Specification ...................... 15
`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-3 AND
`THE PETITION SHOULD BE DENIED. .................................................... 18
`A.
`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ...................................................................................................... 18
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`B.
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`C.
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`The Clayton Reference ........................................................................ 20
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`Claims 49-55, 57, 62-64, 71, 73-80, 95, 97, 99-103, 109-111,
`and 120 Are Not Obvious over Clayton and Berry (Ground 1) .......... 21
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`1.
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`The Clayton Reference Does Not Teach or Disclose the
`“Audio Generated by the Portable Device” Limitation ............ 22
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`The Clayton Provisional Application Does Not Support
`the Teaching or Disclosure of the “Audio Generated by
`the Portable Device” Limitation ............................................... 24
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`2.
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`3.
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`4.
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`The Alleged Combination with Berry is Improper and
`Does Not Address the Deficiencies of Clayton ........................ 28
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`The Dependent Claims Are Valid over Clayton and Berry ...... 31
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`D.
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`Claims 49-57, 62-64, 66, 70, 71, 73-80, 94, 95, 97, 99-103, 106,
`109-111, 113, and 120 Are Not Obvious Over Clayton in View
`of Berry and Marlowe (Ground 2) ...................................................... 31
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`1.
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`2.
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`3.
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`Ground 2 Fails to Specify Any Differences Between the
`Claims and the Cited References .............................................. 32
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`The Petition Does Not Explain Why a Person of Ordinary
`Skill in the Art Would Have Had Reason to Modify
`Clayton to Render the Claims Obvious .................................. 344
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`Because the Independent Claims are Valid in View of
`Ground 2, the Dependent Claims Are Also Valid in View
`of Ground 2. .............................................................................. 37
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`E.
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`Claims 68 and 115 are Not Obvious over Clayton in View of
`Berry, Marlowe, and Gioscia (Ground 3) ........................................... 37
`IV. CONCLUSION .............................................................................................. 38
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355, Paper 9 (PTAB June 26, 2015) ............................................... 18
`
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) .......................................................................... 14
`
`Aristocrat Techs., Aus. Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008) .......................................................................... 11
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`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V., IPR2013-00387,
`Paper 43 (PTAB, Dec. 24, 2014) ........................................................................ 19
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`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .................................................................... 31, 37
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`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB. Aug. 29, 2014) ............................................ 19
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`Google Inc. v. EveryMd.com LLC,
`IPR2014-00347, Paper 9 (PTAB May 22, 2014) ............................................... 28
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .........................................................................................passim
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 18
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`Kinetic Concepts v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 28, 32
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 18, 19, 30, 37
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`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM-2012-00003, Paper 7 (PTAB Oct. 25, 2012) ............................................ 29
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`iii
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`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939, Paper 8 (PTAB Dec. 17, 2014) ............................................... 19
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Space Exploration Techs. Corp. v. Blue Origin LLC,
`IPR2014-01378, Paper 6 (PTAB, Mar. 3, 2015) .................................................. 5
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`Unified Patents Inc. v. C-Cation Techs., LLC,
`IPR2015-01045, Paper 15 (PTAB Oct. 7, 2015) .............................................. 3, 6
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`Whole Space Indus. Ltd. v. Zipshade Indus.(B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (PTAB July 24, 2015) .................................. 19, 20, 28
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`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) .................................................................. 6, 7, 10
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`Statutes
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`35 U.S.C. § 311(b) ..................................................................................................... 5
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`Regulations
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`37 C.F.R. 1.75(c) ................................................................................................ 31, 37
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`37 C.F.R. § 42.6(a)(3) .............................................................................. 4, 19, 35, 36
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`37 C.F.R. § 42.12(a)(7) .................................................................................... 3, 6, 10
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`37 C.F.R. § 42.104(b) ............................................................................................ 4, 5
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`I.
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`INTRODUCTION
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`On December 30, 2015, Toyota Motor Corporation, (“Petitioner” or
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`“Toyota”) submitted a Petition (the “Petition”) to institute inter partes review
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`(“IPR”) of U.S. Patent No. 8,155,342 (Ex. 1001, “the ’342 Patent”), challenging
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`claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113,
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`115, and 120 (“the Challenged Claims”). Petitioner on the same day also filed a
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`second petition alleging unpatentability of the ’342 patent over similar grounds.
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`(IPR2016-00421). The Petition is deficient for myriad reasons and should not be
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`instituted.
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`As a preliminary matter, the Petition should be denied in the interests of
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`justice because it represents improper gamesmanship by the Petitioner for two
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`reasons: (1) it takes claim construction positions contrary to those taken by Unified
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`Patents, Inc. (“Unified”) in a petition alleging unpatentability of several claims of
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`the ’342 Patent—a petition in which Petitioner should have been named as a real
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`party-in-interest; and (2) it seeks an improper advisory opinion by contending that
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`a key term of the ’342 Patent is indefinite under 35 U.S.C. § 112 ¶ 6.
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`Unified, a company in the business of preparing and submitting petitions for
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`inter partes review for its members, filed a petition alleging unpatentability of
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`some of the same claims of the ’342 Patent as this Petition. See IPR2014-00118,
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`Paper 1 (“the -118 Petition”). As stated in the Preliminary Response to the -118
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Petition of Patent Owner, Blitzsafe Texas, LLC (“Patent Owner”), Petitioner is a
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`real party-in-interest to the -118 Petition because Petitioner funded the -118
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`Petition by paying money into a specific fund within Unified, which fund was
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`ultimately used to pay for the -118 Petition, including the accompanying expert
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`declaration. In the -118 Petition, Petitioner, through Unified, advanced claim
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`construction positions that are irreconcilable with those advanced by Petitioner
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`here.
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`Specifically, in the case of the term “integration subsystem,” Unified
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`proposed a construction premised on Unified’s position that “integration
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`subsystem” connotes sufficient structure, but in this Petition, Toyota alleges that
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`the term is meaningless to one of ordinary skill in the art and should be governed
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`by 35 U.S.C. § 112 ¶ 6. Then, Toyota contends that “integration subsystem” is
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`invalid as indefinite under 35 U.S.C. § 112 ¶ 2, even though a finding of
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`indefiniteness would compel the Board to deny institution of this Petition.
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`The only plausible explanation for Toyota’s decision to take inconsistent
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`claim construction positions and to argue for the denial of its own Petition is to
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`take two bites at the apple with respect to the ’342 Patent by using Unified as its
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`shill, while also seeking an advisory opinion of invalidity for indefiniteness to
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`present to the District Court in litigation concerning the ’342 Patent. In view of
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`Toyota’s disingenuous use of the IPR process, Patent Owner asks the Board to
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`exercise its discretion to deny institution because the Petition unnecessarily
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`increases the cost of the proceedings and is being used for an improper purpose.
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`See Unified Patents Inc. v. C-Cation Techs., LLC, IPR2015-01045, Decision
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`Denying Institution of Inter Partes Review, Paper 15 at 3 (PTAB Oct. 7, 2015)
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`(holding that institution of inter partes review is discretionary); CFR § 42.12(a)(7).
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`The Petition should also be denied because it is not reasonably likely to
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`succeed on any of its three grounds of unpatentability. Every claim of the ’342
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`Patent is directed to interfacing a portable device with a car audio/video system
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`using an integration subsystem. The claimed integration subsystem is structured to
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`either receive or transmit audio signals that are generated on a portable device.
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`Petitioner relies on one primary reference, U.S. Publ. No., 2006/0181963 to
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`Clayton (“Clayton”, Ex. 1002), in each of the three grounds. Neither the Clayton
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`reference nor its provisional application (Ex. 1003) teach or disclose the
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`requirement in every claim of the ’342 Patent that the audio signal is generated on
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`a portable device. Petitioner does not address this deficiency in its Petition. Thus,
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`Petitioner has failed to demonstrate how the alleged prior art teaches or discloses
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`the claimed system.
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`In addition to this fundamental deficiency, Petitioner’s request for inter
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`partes review should be denied for at least the following reasons addressed more
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`fully below in this Preliminary Response:
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`(1) The Petition fails to properly construe the claim terms “integration
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`subsystem.”
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`(2) The Petition does not “specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon,” as required by 37
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`C.F.R. § 42.104(b)(4), because each Ground has at least one of the following
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`deficiencies: (i) failing to map each claim term to a specific teaching from an
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`asserted reference; (ii) providing citations to the asserted references that do not
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`teach the claim elements against which such citations are applied; and (iii)
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`mischaracterizing the citations to the asserted references.
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`(3) The Petition fails to identify the difference(s) between the claims and
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`the asserted references as required by Graham v. John Deere Co., 383 U.S. 1, 17-
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`18 (1966).
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`(4) The Petition supports its assertions of obviousness with mere conclusory
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`statements and impermissible incorporation by reference of arguments from the
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`Matheson Declaration (Ex. 1016) in violation of 37 C.F.R. § 42.6(a)(3).
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`Due to at least these deficiencies, the Petition does not establish “a
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`reasonable likelihood that the Petitioner would prevail with respect to at least one
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`of the claims challenged in the petition.” 35 U.S.C. § 314(a). Patent Owner
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`explicitly reserves the right to provide further distinctions between the prior art and
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`the challenged claims. The deficiencies of the Petition noted herein, however, are
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`sufficient for the Board to find that Petitioner has not met its burden to
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`demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the challenged claims.
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`II. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER’S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION AND CLAIMS
`A. The Board Should Deny Institution in the Interest of Justice
`Because Petitioner’s Arguments Are an Abuse of Process
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`35 U.S.C. § 311(b) and 37 C.F.R. § 42.104(b)(2) make clear that petitions
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`for inter partes review may only advance grounds of invalidity based on 35 U.S.C.
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`§§ 102 and 103. See, e.g., Space Exploration Techs. Corp. v. Blue Origin LLC,
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`IPR2014-01378, Decision Denying Institution of Inter Partes Review, Paper 6 at 8
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`(PTAB, Mar. 3, 2015). As Petitioner implicitly acknowledges, the PTAB cannot
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`institute an inter partes review proceeding where the challenged claims are
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`indefinite and, therefore, not capable of being construed. Id. at 9. Nevertheless,
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`Petitioner spends a substantial portion of its limited space essentially arguing for
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`the denial of its own Petition by contending that the claim term “integration
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`subsystem” is indefinite. Pet. at 10-15. Petitioner’s expert also concludes that
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`“integration subsystem” is indefinite. Ex. 1016 ¶ 83. This argument amounts to an
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`overt and improper attempt to obtain an advisory opinion from the PTAB which
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`Petitioner would attempt to submit to the District Court in the pending
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`proceedings. Accordingly, as Petitioner has submitted the Petition for an improper
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`purpose that is unnecessarily increasing the cost of the proceeding, the Board
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`should exercise its discretion to deny the Petition. See Unified Patents Inc. v. C-
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`Cation Techs., LLC, IPR2015-01045, Paper 15 at 3; 37 C.F.R. § 42.12(a)(7).
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`B.
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`Petitioner Has Not Shown that the Term “Integration Subsystem”
`Invokes 35 U.S.C. 112 ¶ 6
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`The term “integration subsystem” does not invoke 35 U.S.C. 112 ¶ 6 as
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`argued by Petitioner. Petitioner’s expert has not advanced any evidence, other than
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`mere conclusions, to demonstrate that the claim term “integration subsystem” lacks
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`sufficient structure such that it invokes 35 U.S.C. 112 ¶ 6. Thus, Petitioner’s claim
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`construction should be rejected.
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`Claim 49, which is representative for this purpose, recites: “an integration
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`subsystem in communication with a car audio/video system . . . wherein said
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`integration subsystem obtains . . . .” Ex. 1001, at claim 49. When a claim term
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`does not use the phrase “means for,” it is presumed that the claim does not invoke
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`35 U.S.C. § 112 ¶ 6 even though that presumption is no longer “strong.”
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). The
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`word “means” does not appear in claim 49 or any of the challenged claims.
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`Petitioner attempts to overcome the presumption by arguing that the term
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`“subsystem” is used interchangeably with the term “module” in the specification,
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`and that “module” has been considered a nonce term when used in claims. Pet. at
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`10. However, the claims do not recite a “module” or some other nonce or coined
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`term, and Petitioner cites no authority for the proposition that the term actually
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`appearing in the claims, “integration subsystem,” is considered a nonce term.
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`Moreover, even if the term “subsystem” were a nonce term, Dr. Matheson
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`advances no opinion as to whether the word “integration” itself has a recognizable
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`meaning to one of ordinary skill in the art as corresponding to a structure such that
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`the term “integration subsystem” would therefore connote a known structure.
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`Without this evidence, Petitioner’s argument regarding the term “subsystem” in
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`isolation is inapposite.
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`Assuming for the sake of argument that the word “means” were recited in
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`claim 49 (i.e. “integration subsystem means”), the question would still remain as to
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`whether the term “integration subsystem” is defined solely by its function.
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`According to Williamson v. Citrix Online, LLC, “[t]he standard is whether the
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`words of the claim are understood by persons of ordinary skill in the art to have a
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`sufficiently definite meaning as the name for structure.” 792 F.3d at 1349.
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`Petitioner does not explain why the term “integration subsystem” is not clearly
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`understood by a person of ordinary skill to be the name of a structure. Pet. at 10.
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`Petitioner points only the declaration of Dr. Matheson, Ex. 1016 ¶ 74, which
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`contains a bare allegation, without support, that the term “has no recognizable
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`meaning.”1 However, upon deeper inspection, it is clear from Dr. Matheson’s
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`declaration that one of ordinary skill in the art, including Dr. Matheson himself,
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`understands that the term “integration subsystem” has a sufficiently definite
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`meaning as structure.
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`Dr. Matheson makes the following exemplary admissions regarding
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`integration systems and subsystems as understood by one of ordinary skill in the
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`art:
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` “the concept of integrating a car stereo with an incompatible external
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`device was well known in the art.” (Ex. 1016 at ¶ 65) (emphasis
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`added)
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` “use of a subsystem within a car audio/video system to wirelessly
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`integrate the car audio/video system with an external device was
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`known in the art” (Ex. 1016 at ¶ 66) (emphasis added)
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` Ohmura “discloses wireless integration between a car audio/video
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`system.” (Ex. 1016 at ¶ 69) (emphasis added)
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` “wireless integration and control between a car stereo and a portable
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`1 As Petitioner undoubtedly knows, Patent Owner does not have the opportunity to
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`present evidence from its own expert, or to include any additional testimony to
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`rebut Petitioner’s expert as it would in a District Court’s Markman proceeding.
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`device” was well-known in the art. (Ex. 1016 at ¶ 70) (emphasis
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`added).
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`Thus, although Dr. Matheson states that “integration subsystem” has no
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`recognizable meaning to a person of ordinary skill in the art and is indefinite under
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`35 U.S.C. § 112 ¶ 6, he is somehow able to recognize the integration subsystems
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`allegedly disclosed in the prior art references. Dr. Matheson’s testimony is
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`internally inconsistent and therefore should be given no weight.
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`Additionally, Patent Owner notes that Petitioner’s position on the treatment
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`of “integration subsystem” under 35 U.S.C. § 112 ¶ 6 is inconsistent with the
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`position taken by Unified in a petition for inter partes review of some of the same
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`claims of the ’342 Patent—a petition where Toyota should have been named as a
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`real party-in-interest because fees it paid into Unified were used to fund the
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`petition. See Unified Patents, LLC v. Blitzsafe Texas, LLC, IPR2016-00118, Paper
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`11 at 4-10 (Feb. 5, 2016). In that petition, Unified did not seek treatment of the
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`term “integration subsystem” under 35 U.S.C. § 112 ¶ 6. Unified Patents, LLC v.
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`Blitzsafe Texas, LLC, IPR2016-00118, Paper 1 at 10 (Oct. 30, 2015). Thus,
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`Unified’s position that “integration subsystem” connotes a structure was also
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`Toyota’s position in the -118 Petition, and yet Toyota takes the contradictory
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`position in this Petition. Toyota should not be allowed to game the inter partes
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`review system by advancing arguments on both sides of the same issue. Therefore,
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`the Board should exercise its discretion to deny institution because the Petition
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`unnecessarily increases the cost of the proceedings and is being used for an
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`improper purpose. See Unified Patents Inc. v. C-Cation Techs., LLC, IPR2015-
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`01045, Paper 15 at 3 (Oct. 7, 2015) (holding that institution of inter partes review
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`is discretionary); CFR § 42.12(a)(7).
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`Alternatively, if the Board finds that “integration subsystem” connotes
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`sufficient structure such that it does not invoke 35 U.S.C. § 112 ¶ 6, the Petition
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`must be denied because Petitioner advances no evidence of how any of the prior art
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`references should be applied to an appropriate construction of that term.
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`Accordingly, the Petition should be denied on all grounds.
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`C. Even if the Term “Integration Subsystem” Is Found to Invoke 35
`U.S.C. 112 ¶ 6, the ’342 Patent Describes Sufficient Structure.
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`Petitioner’s conclusion that the term “integration subsystem” is indefinite
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`under 35 U.S.C. 112 ¶ 2 is incorrect because (1) the alleged functions of the
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`integration subsystem are not “computer-implemented” and thus do not require an
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`algorithm; (2) even if the functions required an algorithm, Figure 24 is sufficient;
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`and (3) Petitioner ignores the voluminous algorithms and source code provided in
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`the ’342 Patent specification that provide sufficient structure.
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`The Alleged Functions of the Integration Subsystem are not
`“Computer-Implemented” and Do Not Require an
`Algorithm
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`1.
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`An algorithm is required to demonstrate definiteness under 35 U.S.C. § 112
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`¶ 2 only when a means-plus-function claim is “computer implemented.” See, e.g.,
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`Aristocrat Techs., Aus. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed.
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`Cir. 2008). Thus, when the function does not require a general purpose computer
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`and can be accomplished by circuitry hardware, an algorithm is not required.
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`Petitioner takes liberties with the claim language by paraphrasing and
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`rewriting the claim elements of claims 49, 73, 97, and 120 as purported “functions”
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`beginning with gerunds that are not found in the claim language. See Pet. at 11-12.
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`The limitations at issue, without modification, are:
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`Alleged means-plus-function limitations of claim 49:
`wherein said integration subsystem obtains, using said wireless
`communication link, information about an audio file stored on the
`portable device, transmits the information 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 receives audio generated by the portable
`device over said wireless communication link for playing on the car
`audio/video system.
`Alleged means-plus-function limitations of claim 73:
`wherein said integration subsystem obtains, using said wireless
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`PATENT NO. 8,155,342
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`communication link, information about an audio file received by the
`portable device, transmits the information 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 receives audio generated by the portable
`device over said wireless communication link for playing on the car
`audio/video system.
`Alleged means-plus-function limitations of claim 97:
`wherein said integration subsystem channels audio generated by the
`portable device to the car audio/video system using the wireless
`communication link for subsequent playing of the audio on the car
`audio/video system, the audio corresponding to an audio file played
`by the portable device, and
`wherein said integration subsystem receives a control command
`issued by a user through one or more controls of the car audio/video
`system in a format incompatible with the portable device, processes
`the control command into a formatted command compatible with the
`portable device, and dispatches the formatted command to the
`portable device for execution thereby.
`Alleged means-plus-function limitations of claim 120:
`wherein said integration subsystem instructs the portable device to
`play an audio file in response to a user selecting the audio file using
`controls of the car audio/video system,
`wherein said integration subsystem channels audio generated by the
`portable device to the car audio/video system using the wireless
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`communication link for subsequent playing of the audio on the car
`audio/video system, the audio corresponding to the audio file played
`by the portable device, and
`wherein said integration subsystem receives data generated by the
`portable device in a format incompatible with the car audio/video
`system, processes the data into formatted data compatible with the car
`audio/video system, and transmits the processed data to the car
`audio/video system for subsequent display of the processed data on a
`display of the car audio/video system.
`Ex. 1001 at claims 49, 73, 97, and 120.
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`Petitioner incorrectly concludes that the “integration subsystem” is computer
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`implemented for the purposes of 35 U.S.C. § 112 ¶ 6 because it overlooks the
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`structure disclosed in the specification. The portions of the specification cited by
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`Petitioner indicate that the integration subsystem is not limited to a
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`microcontroller, stating that “[t]he integration subsystem 932 contains circuitry
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`similar to the circuitry disclosed in the various embodiments of the present
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`invention discussed herein, and could include a PIC16F872 or PIC16F873
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`microcontroller.” Ex. 1001 at 34:63-66 (emphasis added).
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`Other circuitry for performing the functions attributed to the integration
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`subsystem includes a “wireless communication link” which is a structure known in
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`the art that does not require a microcontroller. For example, claim 49 states that
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`the integration subsystem “receives audio generated by the portable device over
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`said wireless communication link for playing on the car audio/video system.” Ex.
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`1001 at claim 49. Similarly, claim 49 requires that the integration subsystem
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`“obtains, using said wireless communication link, information about an audio file.”
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`Id. In both cases, wireless receiver circuitry and other integrated circuit
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`components described in the specification can perform the alleged functions for
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`which an algorithm is not necessary. See e.g., Ex. 1001 at Cols. 15-25. The use of
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`this structure to perform the very functions that Petitioner claims are computer-
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`implemented demonstrates that its claim construction is flawed and its Petition
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`must be denied.
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`2.
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`Even if the Functions Required an Algorithm, Figure 24 is
`Sufficient
`Even if an algorithm were required for the “integration subsystem,” Apple v.
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`Motorola stands for the proposition that source code is not necessary—the
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`algorithm can be understood as “an outline of an algorithm, a flowchart, or a
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`specific set of instructions or rules” disclosed in the specification. Apple Inc. v.
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`Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (emphasis added). Figure 24
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`is one such flowchart. The algorithm described in Figure 24 details the operation
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`of the integration subsystem, and provides support for each limitation of the
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`claims. Petitioner begrudgingly acknowledges the flowchart of Figure 24 and
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`admits that the “integration subsystem” can be “programmed to perform the
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`method of FIG. 24.” Pet. at 14-15.
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`PATENT NO. 8,155,342
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`3.
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`Petitioner Ignores the Voluminous Algorithms and Source
`Code Provided in the ’342 Specification
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` Finally, even if an algorithm were required to preserve the definiteness of
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`the claims, and even if Figure 24 of the ’342 Patent were found to be deficient, the
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`specification is replete with algorithms, including detailed source code, and
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`“circuitry similar” to the integration subsystem, that provide structure to perform
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`the claimed functions.
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`For example, according to Petitioner, the claims describe the alleged
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`functions of “(1a) obtaining, using a wireless communication link, information
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`about an audio file stored (claim 49) or received (claim 73),” “(2a) transmitting the
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`information to the car audio/video system for subsequent display,” “(2c) receiving
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`data from the portable device in a format incompatible with the car audio/video
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`system,” and “(3c) processing the data into a format compatible with the car
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`audio/video system,” and “(4c) transmitting the processed data to the car
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`audio/video system.” Pet. at 11-12. A description of exemplary algorithms to
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`perform these functions is found in columns 22-25 with references to the source
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`code in Table 2:
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`Additionally, the present invention contains logic for retrieving
`information from an after-market audio device, and converting
`same into a format compatible with the car stereo for display
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`thereby. Such logic can be applied to convert any data from the
`external device for display on the car stereo. For purposes of
`illustration, a sample code portion is shown in Table 2, below,
`for converting data from a CD changer into a format
`understandable by a BMW car stereo:
`Ex. 1001 at 22:60-67.
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`Also according to Petitioner, the claims describe the alleged functions of
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`“(2b) receiving a control command from a user in a format incompatible with the
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`portable device,” “(3b) processing the control command into a format compatible
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`with the portable device,” and “(4b) dispatching the formatted command to the
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`portable device.” Pet. at 11-12. A description of exemplary algorithms performing
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`these functions is found in columns 22-25 with references to the source code in
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`Table 1:
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`As mentioned previously, to enable integration, the present
`invention contains logic for converting command signals issued
`from an after-market or OEM car stereo into a format
`compatible with one or more external audio devices connected
`to the present invention. Such logic can be applied to convert
`any car stereo signal for use with any external device. For
`purposes of illustration, a sample code portion is shown in
`Table 1, below, for converting control signals from a BMW car
`stereo into a format understandable by a CD changer:
`Ex. 1001 at 22:7-16.
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