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
`__________________________________________________________________
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
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`Case No. 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
`__________________________________________________________________
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
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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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`INTRODUCTION ........................................................................................... 1
`I.
`II. SUMMARY OF THE ALLEGED PRIOR ART AND THE PRIOR
`ART DECISIONS REGARDING THE ‘342 PATENT ................................. 3
`A. The Clayton Reference ............................................................................ 3
`B. The Decisions Denying Institution of IPR2016-00419 and
`Rehearing on that Decision ..................................................................... 8
`III. CLAIM CONSTRUCTION ............................................................................ 9
`IV. THE CLAYTON REFERENCE DOES NOT TEACH OR DISCLOSE
`THE “AUDIO GENERATED BY THE PORTABLE DEVICE”
`LIMITATION ............................................................................................... 10
`A. The Clayton Provisional Application Does Not Support the
`Teaching or disclosure of the “Audio Generated by the Portable
`Device” Limitation ................................................................................ 17
`V. CLAYTON IS NOT PRIOR ART TO THE ‘342 PATENT ........................ 19
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`A. Even if Clayton Were to Have a 102(e) Date of February 11, 2005.
`it is Still Not Prior Art to Claims 49-54, 56, 62-64, 66, 68, 70, 71, 73-78,
`94, 94, 97, 99-101, 106, 109-111, 113, 115 and 120 ............................ 42
`VI. CONCLUSION ............................................................................................. 44
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`TABLE OF AUTHORITIES
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`IPR2016-00418
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`PATENT NO. 8,155,342
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` Page(s)
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`Federal Cases
`Toyota Motor Company v. Blitzsafe Texas, LLC,
`IPR2016-00419 (PTAB, 2016) ................................................................... 8, 9, 10
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`Other Authorities
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`37 CFR § 42.120 ........................................................................................................ 1
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`EXHIBIT LIST
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Exhibit #
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`Exhibit Name
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2008
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`2009
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`2010
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`2011
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`2012
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`Declaration of Richard Stern, Ph.D.
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`Curriculum Vitae of Dr. Richard Stern, Ph.D.
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`U.S. Patent Application No. 11/071,667 Publication
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`Declaration of Ira Marlowe
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`Exhibit M1 to Declaration of Ira Marlowe
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`Exhibit M2 to Declaration of Ira Marlowe
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`Exhibit M3 to Declaration of Ira Marlowe
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`Exhibit M4 to Declaration of Ira Marlowe
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`Exhibit M5 to Declaration of Ira Marlowe
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`Exhibit M6 to Declaration of Ira Marlowe
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`Exhibit M7 to Declaration of Ira Marlowe
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`U.S. Patent Application No. 11/071,667 (File History
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`application)
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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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`Patent Owner Blitzsafe Texas, LLC (“Patent Owner”) submits the following
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`response under 37 CFR § 42.120 to the Petition filed by Toyota Motor Corporation
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`(“Petitioner”) requesting inter partes review of certain claims of U.S. Patent No.
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`8,155,342 (“the ’342 Patent”). This filing is timely pursuant to the Board’s
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`Scheduling Order and the parties’ stipulation extending the deadline to September
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`30, 2016. (See, Paper No. 14, Scheduling Order, and Paper No. 17, Stipulation to
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`Adjust Schedule.)
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`Patent Owner respectfully submits that the arguments presented and the
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`additional evidence submitted, such as the testimony from Patent Owner’s expert,
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`Dr. Richard Stern, Ph.D. (see, e.g., Ex. 2001, Declaration of Dr. Richard Stern,
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`Ph.D.), which demonstrate that certain of the instituted claims are not obvious over
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`combinations based on the Clayton reference for two reasons.
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`First, Clayton does not teach or disclose an integration subsystem that
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`receives “audio generated by the portable device.” This “audio generated by the
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`portable device” limitation is required by each claim and Petitioner points only to
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`Clayton to allegedly teach or disclose this limitation.
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`The Board had found that the claims require “decoding” of audio by the
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`portable device and the Board found that this “decoding” was taught by the
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`disclosure in Clayton of “playing” audio on the portable device, at least in part
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`because of the declaration evidence submitted by Toyota. However, Dr. Stern
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`explains in his Declaration that the word “play” does not mean “decode” and that
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`Clayton does not teach or disclose decoding audio on a portable device for
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`subsequent wireless transfer to a car audio video system as required by the claims.
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`Instead, Clayton only teaches the mere transfer of files. The Board has already
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`held several times that the transfer of audio files does not satisfy the claims of the
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`’342 Patent. In view of this Declaration evidence, the Board should again confirm
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`the patentability of the claims of the ’342 Patent.
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`Second, Clayton is not prior art to at least Claims 49-54, 56, 62-64, 66, 68,
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`70, 71, 73-78, 94, 95, 97, 99-101, 106, 109-111, 113, 115, and 120, due in part to
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`the Board’s construction of the term “integration subsystem.” The ’342 Patent
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`claims priority to U.S. Patent Application No. 11/071,667 (“the ’667
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`Application”). This application fully supports Claims 49-54, 56, 62-64, 66, 68, 70,
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`71, 73-78, 94, 95, 97, 99-101, 106, 109-111, 113, 115, and 120 and was filed prior
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`to the filing date of the Clayton application, and thus Clayton is not prior art. Even
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`if the Clayton reference were to be fully supported by its provisional application
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`(Ex. 1003), Clayton is still not prior art because the inventor of the ’342 Patent,
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`Mr. Ira Marlowe, conceived of the claimed inventions at least as early as February
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`8, 2005, which is prior to the earliest filing date of the Clayton provisional
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`application. Mr. Marlowe diligently worked to constructively reduce his
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`inventions to practice and filed the ’667 Application on March 3, 2005. Evidence
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`of Mr. Marlowe’s conception, diligence, and constructive reduction to practice are
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`supported by the Declaration of Ira Marlowe (Ex. 2004) and accompanying
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`Exhibits (Ex. 2005-2011).
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`Patent Owner therefore respectfully requests that the Board confirm the
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`patentability of Claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103,
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`106, 109-111, 113, 115, and 120 of the ’342 Patent.
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`II. SUMMARY OF THE ALLEGED PRIOR ART AND THE
`PRIOR ART DECISIONS REGARGING THE ‘342 PATENT
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`Clayton discloses “embodiments that wirelessly provide content from a
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` The Clayton Reference A.
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`content source to a content player.” Ex. 1002 at Abstract, ¶ [0004]. Clayton
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`teaches using a wireless interface to receive content from a content source, and
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`transmit the content using a wired connection to a content player for playback. Id.
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`Clayton seeks to solve problems that arise from the fact that people use
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`multiple content sources, such as MP3 players, cellular telephones, personal
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`computers and car audio systems, to store and, in many cases, play content. One of
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`these problems is that “there is currently no fast and convenient way to transfer
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`content between a user’s multiple devices.” Id. at ¶ [0003].
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`Clayton broadly discloses a system that includes a content service 120 that
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`provides content to target devices 140 via a network 130 as shown in Figure 1.
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`Content is defined as including “media such as audio, video, text;
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`multimedia that includes two or more of audio, video, and text; or other types of
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`data.” Id. at ¶ [0014] (emphasis added). Target devices 140 may include personal
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`computers, cellular telephones, car radios, home stereos, MP3 players, and other
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`end-user devices. Id. at ¶ [0018]. Target devices are capable of downloading
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`content from the content service and transmitting data to, and receiving data from,
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`other target devices. Id.
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`Clayton describes embodiments in which a cellular telephone 143 can
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`connect to a car radio and transfer its content to the car radio for playback on the
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`car radio.
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`Clayton discloses that “[a] portable content device such as the cellular
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`telephone 142 may send content to a content player such as the car audio system
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`143 via the wireless interface 150 of the cellular telephone 142. In addition, a
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`wireless adaptor 173 may be used to enable communications between the cellular
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`telephone 142 and the car audio system 143 for receiving content and for
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`controlling playback of the content.” Id. at ¶ [0052].
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`The wireless adaptor 173 that is in communication with the car audio system
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`“allows a suitably-enabled portable content device to wirelessly integrate with a
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`component in a content player,” id. at ¶ [0053], which, in the case of Figure 3, is
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`the car radio component of a car audio system 143. See id.
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`The wireless adaptor 173 “provides an interface that allows the cellular
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`telephone 142 to transmit stored content to the car audio system 143 for content
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`playback by the car radio component.” Id. at ¶ [0055]. As shown in Figure 4, the
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`wireless adaptor 173 has a decoder 440 that includes “a content decoder 446 that
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`decodes the content received from the cellular telephone 142.” Id. at ¶ [0056]. An
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`optional metadata decoder 442 decodes metadata, such as song tiles and artists
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`names, for display on the car audio system 143. Id.
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`The wireless adaptor has an application profiles stack 420 that includes
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`“Bluetooth profiles to regulate the transmission of content from the cellular
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`telephone 142 to the car audio system 143 . . . as streaming audio for stereo audio
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`playback through the later [sic].” Id. at ¶¶ [0062-0063]. “The network manager
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`430 further controls the content decoder 446 to decode the streaming audio into a
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`format understood by the car audio system 143 for output to the I/O interface 450,
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`to which the car audio system 143 is connected through its own I/O interface.” Id.
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`Thus, Clayton describes an embodiment in which a cellular telephone acting
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`as a content source transmits audio data to a car stereo acting as a playback device.
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`The wireless interface in communication with the car stereo receives the streamed
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`audio data, decodes the data into a format understood by the car stereo, and outputs
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`the decoded data to the car stereo system for playing on the car stereo.
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` The Decisions Denying Institution of IPR2016-00419 and B.
`Rehearing of that Decision
`On July 19, 2016, the Board denied institution of inter partes review of the
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`’342 Patent on grounds based on U.S. Patent Pub. No. 2001/0028717 A1
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`(“Ohmura”). The Board found that Ohmura did not meet the “audio generated by
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`the portable device” limitation recited in Claim 49 of the ’342 Patent because in
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`Ohmura, music data is transferred from the portable device to the car audio/video
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`system, and audio is generated by playing the transferred music file at the car
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`audio/video system, and not on the portable device. Toyota Motor Corp. v.
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`Blitzsafe Texas, IPR2016-00419, Paper 13 at 27-28 (July 19, 2016) (emphasis
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`added).
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`Toyota requested rehearing of the decision denying institution. Toyota
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`Motor Corp. v. Blitzsafe Texas, IPR2016-00419, Paper 14 (August 12, 2016).
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`Toyota argued that the Board overlooked that Toyota’s petition relied on an
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`embodiment in Ohmura that discloses streaming music data from the portable
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`device to the car audio/video system, and not storing a music file on the car
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`audio/video system for later decoding. Id. at 4, 6-7. According to Toyota, this
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`embodiment disclosed immediately decoding the data in the car audio/video
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`system without storing the music data first. Id.
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`The Board denied the petition for rehearing. Toyota Motor Corp. v. Blitzsafe
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`Texas, IPR2016-00419, Paper 15 (August 31, 2016). The Board stated that all
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`Claims of the ’342 Patent require “the portable device to play (i.e., decode) an
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`audio file.” Id. at 5. Ohmura does not meet the “audio generated by the portable
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`device” limitation because “Ohmura’s CPU 101 receives music data from portable
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`device 200a or 200b that it must decode into audio for output, via speakers 20, of
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`car audio/video system 100.” Id. at 6 (emphasis added).
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`III. CLAIM CONSTRUCTION
`For purposes of this IPR only, Petitioner does not contest the Board’s claim
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`constructions. Any disagreements that Petitioner may have with the Board’s claim
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`constructions are not material to the arguments in this Response.
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`In particular, the Board, provided the following constructions for the
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`following terms:
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`Integration Subsystem: The Board construed the term as “A subsystem to
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`perform at least: (1) connecting one or more portable devices or inputs to the car
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`audio/video system via an interface, (2) processing and handling signals, audio,
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`and/or video information, (3) allowing a user to control the one or more portable
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`devices via the car audio/video system, and (4) displaying data from the one or
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`more portable devices on the car audio/video system.”
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`Car Audio/Video System: The Board construed the term as “a car audio
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`system, a car video system, or a car audio and video system.”
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`Device Presence Signal: The Board construed the term as “a signal
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`indicating that a portable device is connected to the car audio/video system through
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`the integration subsystem”
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`IV. THE CLAYTON REFERENCE DOES NOT TEACH OR
`DISCLOSE THE “AUDIO GENERATED BY THE PORTABLE
`DEVICE” LIMITATION
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`Clayton does not teach the “audio generated by the portable device”
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`limitation because, like Ohmura, Clayton teaches that audio files are streamed from
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`a cellular telephone to the car audio/video system’s wireless interface and decoded
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`by the wireless interface of the car audio/video system into a format understood by
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`the car audio/video system for output through the car speakers.
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`The cellular telephone of Clayton acts like a “content source” that wirelessly
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`transmits audio content, i.e., audio files, to the car stereo, which acts as a
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`“playback device.” Nowhere does Clayton suggest that the cellular telephone acts
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`as both a content source and a playback device by transmitting decoded audio to
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`the car stereo system. The Board has found that the claims require at least some
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`decoding to be done on the portable device. (See, e.g., Toyota Motor Company v.
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`Blitzsafe Texas, LLC, IPR2016-00419, Decision Denying Request for Rehearing,
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`Paper No. 15 at 5 (P.T.A.B., August 31, 2016). As described by Dr. Stern, Clayton
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`does not teach any decoding on the portable device and, instead, teaches against
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`decoding on the portable device in the case where content is played through the car
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`audio/video system. Ex. 2001 at ¶¶ 67, 81.
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`Petitioner points to the following sections of Clayton as allegedly teaching
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`“audio generated by the portable device:” paragraphs 0033, 0042, 0048, 0056,
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`0063, and Figure 3. Petitioner also argues that these portions of Clayton are
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`supported by the Clayton provisional application at pages 3, 10, 13, 154, 169, 339,
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`488, 561, 609, and 656. Although the Board points out that Figure 2 transmits “in
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`the form of ‘streaming audio’ shown in Figure 3,” Clayton never describes any
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`transfer of audio, other than the transfer of “content” between the portable audio
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`device and the wireless adapter 173. Paper 13 at 30; See, e.g., Ex. 1002 at ¶¶ 0001,
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`0014. Despite the use of words like “streaming audio,” “content” is not audio
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`generated by a portable device; rather, it is described by Clayton as “media files,
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`such as MP3 files, other types of audio files, video files, textual music play lists,
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`and other types of files.” Ex. 1002 at ¶ 0014. This content is decoded (i.e.,
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`converted from data such as MP3 into “generated” audio) only in the “content
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`decoder 446” which is contained within the “wireless adapter 173,” and, therefore,
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`not in the portable device. Ex. 2001 at ¶ 66.
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`Patent Owner’s expert, Dr. Stern, explains that there are three types of
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`systems: Case 1, where the portable device decodes an MP3 file, then performs
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`Digital-to-Analog conversion to generate analog audio signals that are transmitted
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`to the automobile system; Case 2, where the portable device decodes an MP3 file
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`and sends the generated audio in the form of a digitally-encoded waveform to the
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`automobile for subsequent Digital-to-Analog conversion; and, Case 3, where the
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`portable device sends a file as a digital stream of data packets to the automobile for
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`subsequent MP3 decoding and Digital-to Analog conversion. Ex. 2001 at ¶¶ 34-
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`40; 55-56. The claims require that the interface in the car audio/video system
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`receives audio that is generated by the portable device. Accordingly, Case 2 is
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`within the scope of the claims (because MP3 files are decoded on the device to
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`generate audio), and Case 3 is outside the scope of the claims because audio is not
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`generated on the portable device. Clayton only teaches Case 3, whereas the claims
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`require Case 2. Ex. 2001 at ¶¶ 34-40; 55-56.
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`Ex. 2001 at Fig. 2.
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`Thus, the disclosure cited by Petitioner teaches, at best, a system where
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`audio files are stored on a portable device and sent, as data, to the wireless adapter
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`173 to be later decoded into generated audio.
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`For example, Petitioner cites paragraph 63 of Clayton, which states:
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`When the wireless adaptor 173 is in operation, the A2DP therein
`enables the wireless adapter 173 to transfer the content stored in the
`cellular telephone 142 to the car audio system 143 as streaming audio
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`for stereo audio playback through the latter. As described earlier, the
`stored content is located in respective channels in the cellular
`telephone 142. The network manager 430 further controls the
`content decoder 446 to decode the streaming audio into a format
`understood by the car audio system 143 for output to the I/O
`interface 450, to which the car audio system 143 is connected through
`its own I/O interface.
`Ex. 1002 at ¶ 0063 (emphasis added). Figure 4 of Clayton shows a Decoder 440,
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`which decodes both metadata files (metadata decoder 442) and audio files (content
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`decoder 446):
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`Ex. 1002 at Fig. 4 (emphasis added by Petitioner). The remaining paragraphs cited
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`to by Petitioner similarly confirm that content, i.e., audio files, are sent to the
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`wireless adapter 173 where the audio is decoded. Id. at ¶¶ 0033, 0042, 0048, and
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`0056; See, Ex. 2001 at ¶¶66-71.
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`The Board, in its decision to institute, also cited to paragraphs 0049, 0052,
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`0055, 0066, and 0067 for this limitation; however, none of these paragraphs teach
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`or disclose decoding any audio signal on the portable device. Paper No. 13 at 30,
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`31. For example, Paragraph 49 states in its entirety:
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`Playback of the content 181 may be controlled via the user interface
`152 of the cellular telephone 142. For example, the user interface 152
`may include controls to enable the selection of a preset channel, to
`rewind, fast forward, pause, play, etc.
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`Ex. 1002 at ¶ 0049. Paragraph 49 relates to user-interface commands, such as the
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`“play” command and, as stated by Dr. Stern, these types of user-interface
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`interactions do not indicate where audio is decoded. Ex. 2001 at ¶ 72.
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`Paragraph 52 describes the portable device, such as a telephone, sending
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`“content” to the car interface, however, this paragraph does not discuss where the
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`content is decoded. Ex. 1002 at ¶ 0049.
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`Paragraph 55 explicitly states that the decoding is performed in the interface
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`and not in the portable device as required by the claims of the ‘342 Patent:
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`In one embodiment the cellular telephone 142 is suitably-enabled to
`wirelessly transmit content and command/control signals, encoded or
`unencoded, via the aforementioned wireless proximity network to the
`wireless adaptor 173. In turn, the wireless adaptor 173 provides any
`needed signal conversion or decoding of such content and
`command/controls for forwarding to the car audio system 143.
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`Thus, the wireless adaptor 173 provides an interface that allows
`the cellular telephone 142 to transmit stored content to the car
`audio system 143 for content playback by the car radio
`component.
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`Ex. 1002 ¶ 0055 (emphasis added). Paragraph 55 thus confirms that the audio is
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`generated, i.e., decoded at the interface and not in the portable device.
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`Paragraphs 66 and 67 again describe the cellular telephone being “played”
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`and “controlled,” however, again, these descriptions are from the perspective of a
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`user interface and do not indicate where decoding is performed. See, Ex. 2001 ¶¶
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`0073-74. To the extent the term “streaming” or "stream" is used, as described
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`above, these terms do not indicate where the audio is decoded, but rather refer to
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`data streams of packets that include the transfer of files. See, Ex. 2001 ¶¶ 0032,
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`33, 54 ,56.
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`Petitioner does not allege that any other portions of any other reference in
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`teaches or discloses this limitation. See, e.g., Pet. at 34. Accordingly, because
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`Clayton does not teach or disclose the “audio generated by the portable device”
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`limitation, the Board should confirm the patentability of the claims.
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`16
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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 A.
`the Teaching or Disclosure of the “Audio Generated by
`the Portable Device” Limitation
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`Petitioner attempts to supplement the Clayton reference with its provisional
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`application, Ex. 1003 (“the Clayton provisional”). The Clayton provisional does
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`not support Petitioner’s Grounds for unpatentability, but rather provides further
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`evidence that the Clayton reference does not teach or disclose the key limitation in
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`each of the claims that audio is generated on the portable device.
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`Petitioner cites to several pages of the Clayton provisional, which spans over
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`600 pages and includes various documents that purport to be development
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`documents, to support its deficient argument: pages 3, 10, 13, 154, 169, 339, 488,
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`561, 609, and 656. See Petition at 25; Ex. 1003. However, none of these pages
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`teach or suggest that audio is generated on a portable device as required by the
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`claims. Instead, the Clayton provisional describes “rendering” (i.e., “generating”)
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`the audio in the wireless interface. See, Ex. 2001 ¶ 0077.
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`For example, page 3 of the Clayton provisional describes a figure that
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`depicts the portable music player wirelessly transmitting “audio data,” i.e., files,
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`and not transmitting “generated audio.” Ex. 1003 at 3, 10. Next, page 154 is a
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`page from a draft protocol document that describes the “Theory of Operation” of
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`the Clayton system, where the “Mobile Client,” which Petitioner alleges is a
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`portable device, “can optionally stream the content to a remote renderer.” Id. at
`17
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`154. The “WACA (Wireless Audio Car Adapter)” is the remote renderer that
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`renders the content wirelessly received from the Mobile Client. Id. If the portable
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`device were to generate audio, and if the interface were to receive “generated”
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`audio, a remote renderer in the WACA would not be necessary. Thus, the
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`existence of a remote renderer indicates that the system of Clayton is not the
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`system of the claims. See, Ex. 2001 ¶¶ 0078-79.
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`Page 169 of the Clayton provisional similarly discusses sending a command,
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`MSG_RENDER_CMD, from the mobile device to the WACA in the automobile to
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`direct the WACA to render audio. Id. at 169. Sending this command to the
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`WACA indicates that the audio is rendered, i.e., generated, on the WACA and not
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`in the mobile device. See, Ex. 2001 ¶ 0080
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`Next, the Petition refers to page 339 of the Clayton provisional that discloses
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`a “Stream Decoder” in the WACA and not in the mobile device, which supports
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`Patent Owner’s argument that audio is generated in the WACA and not the mobile
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`device. Id. at 339. Indeed, the same document describes precisely this
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`architecture:
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`2.1 Basic WACA Architecture
`The WACA is a 2 way wireless gateway interface that translates audio
`files and commands streamed from a Motorola phone over BlueTooth
`[sic] into an analog or PCM audio feed to the car radio.
`Id. at 337; See, Ex. 2001 ¶ 0081.
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`18
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Page 561 of the provisional purports to originate from a later version of the
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`
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`WACA protocol that does not describe decoding audio on a mobile device. Id. at
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`561. Page 656 purports to originate from a Motorola presentation depicting a
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`“flow of events” for the WACA whereby the “streamer sends MP3 audio data as
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`a stream.” Id. at 656 (emphasis added). This description of “streaming” could not
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`be clearer––when Clayton discusses “streaming,” it is sending MP3 data to be
`
`later decoded, and not rendering the MP3 on the mobile device as required by the
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`claims. The remaining pages cited by Petitioner, pages 10, 13, 488, and 609, do
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`not describe any rendering or generating of content. See, Ex. 2001 ¶¶ 0082-83.
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`
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`Thus, Clayton and its provisional do not teach or disclose the system of the
`
`claims of the ’342 Patent because the wireless adapter disclosed in Clayton, and
`
`the WACA disclosed in the Clayton provisional, do not “receive[] audio generated
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`by the portable device.” Rather, the Clayton and its provisional disclose a wireless
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`adapter that receives an audio file streamed from the portable device and generates
`
`the audio within the interface. Accordingly, because Clayton does not teach or
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`disclose the “audio generated by the portable device” limitation, the Board should
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`confirm the patentability of the claims. See, Ex. 2001 ¶ 0083.
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`V. CLAYTON IS NOT PRIOR ART TO THE ’342 PATENT
`The ’342 Patent claims priority to U.S. Patent Application No. 11/071,667
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`(“the ‘667 Application” Ex. 2003). (See Ex. 1001 at 1, “Related U.S. Application
`19
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Data.”) The ’667 Application was filed on March 3, 2005. Each limitation of
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`
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`Claims 49-56, 62-64, 66, 68, 70, 71, 73-78, 94, 95, 97, 99-101, 106, 109-111, 113,
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`115, and 120 is fully supported by the ’667 Application when applying the
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`constructions of the claims set forth by the Board in the Decision on Institution
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`(Paper No. 13). The full support for each limitation of the claims as described in
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`the ’667 Application is set forth in the charts below, thus demonstrating that the
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`inventor, Ira Marlowe, had conceived of and constructively reduced to practice the
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`claimed invention prior to the filing date of the Clayton application (Ex. 1003).
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`Petitioner acknowledges that the ’667 Application supports wireless
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`communication between the car stereo or video system and after-market device.
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`Pet. at 21. For example, the ’667 Application states:
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`Further, in all embodiments of the present invention, communication
`between the after-market device and a car stereo or video system can
`be accomplished using known wireless technologies, such as
`Bluetooth.
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`(Ex. 2003 at 0126.) While the ’667 Application does not use the term “wireless
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`interface,” one of ordinary skill in the art would have known that the disclosure of
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`Bluetooth as a wireless transmission medium would have necessitated a Bluetooth
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`(i.e., wireless) interface in both the car audio/video system as well as in the after-
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`market device. See, Ex. 2001 ¶ 0086.
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`20
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`The only limitation of the independent claims that Petitioner contends is
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`absent from the ’667 Application is the integration subsystem, simply because the
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`’667 Application does not use the words “integration subsystem.” Pet. at 21. For
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`example, Petitioner states:
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`However, this still does not provide support for the addressed ’342
`patent claims because the addressed claims require an integration
`subsystem using said wireless communication link. There is no
`mention of an “integration subsystem” in the ’667 application, and the
`term “integration subsystem” is only first disclosed in the ’847
`application (filed on June 27, 2006) from which the ’342 patent
`issued.
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`Pet. at 21-22 (emphasis in original). Petitioner’s expert, Dr. Matheson, similarly
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`finds that only the ’integration subsystem” limitation is missing from the
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`challenged independent claims. Ex. 1016 at ¶¶ 39-43. See, Ex. 2001 ¶¶ 0087-88.
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`
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`Petitioner’s argument fails for two reasons. First, Petitioner applied the
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`incorrect construction of “integration subsystem” and did not use the construction
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`ultimately adopted by the Board. Petitioner construed the term as “a
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`microcontroller or processor provided within the portable device or the car
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`audio/video system and programmed to perform the method of Fig. 24,” but this
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`construction was rejected by the Board. Pet. at 13-14. Presumably, it was this
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`construction that Petitioner could not find in the disclosure of the ’667 Application.
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`21
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Second, Petitioner ignored the Figures of the ’667 Application, which discloses an
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`integration subsystem. Figure 10, reproduced below, shows an integration
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`subsystem within the Board’s construction:
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`Ex. 1012 at 25. While the specification of the ’667 Application does not use the
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`words “integration subsystem,” it is evident from at least Figure 10 that the ’667
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`22
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Application describes an integration subsystem within the Board’s construction.
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`Figure 10 depicts an interface that is a “subsystem” of the car stereo car video
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`system, the interface is shown “(1) connecting one or more portable devices or
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`inputs to the car audio/video system via an interface”, e.g., After-market Device
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`635, “(2) processing and handling signals, audio, and/or video information,” e.g.,
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`Control Circuitry 625 and Display 615, “(3) allowing a user to control the one or
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`more portable devices via the car audio/video system,” e.g., Control Panel Buttons
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`620, and “(4) displaying data from the one or more portable devices on the car
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`audio/video system,” e.g., Display 615. See, Ex. 2001 ¶¶ 0087-88.
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`
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`The chart below, along with the testimony from Patent Owner’s expert, Dr.
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`Stern, sets forth in greater detail where each limitation of each of the claims finds
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`support in the ’667 Application (all cites in the chart below are to Exhibit 2003
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`rather than to Exhibit 2012 for ease of reference). See, Ex. 2001 ¶¶ 0089 and
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`accompanying chart.
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`Support in ’667 Application1
`Claim Limitation
`49[p]2. A multimedia device integration FIG. 10 is a block diagram showing an
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`1 In general the claims are also supported by material in the original application for
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`the ’786 Patent; however, this chart focuses on the material
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