UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`Patent No. 8,155,342
`Issued: Apr. 10, 2012
`Filed: Jun. 27, 2006
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`Inter Partes Review No.: IPR2016-00418
`
`
`
`
`
`REPLY DECLARATION OF THOMAS G. MATHESON, Ph.D. IN
`SUPPORT OF INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,342
`
`TOYOTA Ex. 1027
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`Patent No. 8,155,342
`Issued: Apr. 10, 2012
`Filed: Jun. 27, 2006
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`Inter Partes Review No.: IPR2016-00418
`
`
`
`
`
`REPLY DECLARATION OF THOMAS G. MATHESON, Ph.D. IN
`SUPPORT OF INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,342
`
`TOYOTA Ex. 1027
`
`
`
`
`
`I, Thomas G. Matheson, declare as follows:
`
`1.
`
`I previously provided a declaration in support of Toyota Motor
`
`Corporation's ("Toyota") petition in IPR2016-00418 challenging the validity of
`
`claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113,
`
`115, and 120 of U.S. Patent No. 8,155,342 (Ex. 1001, “the '342 Patent”). (Ex.
`
`1016, "Matheson Decl.").
`
`2.
`
`I have reviewed the Patent Owner's Response (Paper 20) and related
`
`exhibits, as well as the deposition transcript of the named inventor of the '342
`
`Patent, Ira Marlowe (Ex. 1026). I have also reviewed the papers and exhibits in
`
`related IPR2016-00419 and related IPR2016-01476. Nothing expressed in these
`
`documents changes my opinion that claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94,
`
`95, 97, 99-103, 106, 109-111, 113, 115, and 120 of the '342 Patent are rendered
`
`obvious by the instituted grounds in view of Ex. 1002 (Clayton) .
`
`I.
`
`CLAYTON DISCLOSES "AUDIO GENERATED BY THE
`PORTABLE DEVICE OVER SAID WIRELESS COMMUNICATION
`LINK"
`3.
`Blitzsafe argues that Clayton does not disclose "audio generated by
`
`the portable device" because "Clayton does not teach or disclose decoding audio on
`
`a portable device for subsequent wireless transfer to a car audio video system as
`
`required by the claims." Paper 20 at 2. In support of this argument, Blitzsafe's
`
`expert, Dr. Richard Stern, contends that paragraph [0055] of Clayton does not
`
`
`
`
`
`disclose a transmission of decoded audio from the portable device. Ex. 2001
`
`(Declaration of Dr. Richard Stern) at 73. I disagree.
`
`4.
`
`Paragraph [0055] of Clayton explicitly states that the content
`
`transmitted by the portable device may be encoded or unencoded. Ex. 1002 at
`
`¶[0055]. A person having ordinary skill in the art (PHOSITA) would understand
`
`that when unencoded content is transmitted, there would be no needed audio
`
`decoding at the car stereo end, which would simply have to perform an analog-to-
`
`digital decoding prior to output. A PHOSITA would also understand that
`
`unencoded is synonymous with decoded (i.e., an unencoded audio signal or content
`
`is synonymous with a decoded audio signal or content), and would generally refer
`
`to pulse-code modulation (PCM) data (such as in a .WAV file) or its equivalent.
`
`From the perspective of the claimed integration subsystem, an unencoded audio
`
`signal received over a wireless communication link is entirely indistinguishable
`
`from a decoded audio signal received over the wireless communication link. The
`
`two are the same. That is, an unencoded audio signal, like a decoded audio signal,
`
`corresponds to rendered, uncompressed audio, as explained by Dr. Stern. Ex. 2001
`
`at 27-31 and 82.
`
`5. Moreover, the audio content transmitted by the portable device
`
`according to Clayton may be audio from MP3 files, e.g., received from a content
`
`providing server. Ex. 1002 at ¶¶[0014, [0018], [0036], [0045], [0050]. If
`
`
`
`2
`
`
`
`unencoded audio content is wirelessly transmitted, and that content originates from
`
`an MP3 file as the patent says it may, then a PHOSITA would understand that the
`
`portable device must first decode the MP3 file before wirelessly transmitting it.
`
`Unencoding or decoding MP3 files into audio is a normal function of MP3 players.
`
`If it weren’t, then the MP3 player would be unable to play the MP3.
`
`6.
`
`Dr. Stern also contends that Clayton's disclosure of A2DP in
`
`paragraph [0063] confirms that "content is decoded (i.e., converted from data such
`
`as MP3 into 'generated' audio) only in the… 'wireless adapter 173,' and, therefore,
`
`not in the portable device." I disagree. A PHOSITA would understand that, where
`
`source audio is encoded in a compression format that is not mandatory in the
`
`A2DP protocol, the source device (i.e., the portable device) is required to have a
`
`decoder in order to ensure interoperability with a sink device (i.e., the integration
`
`subsystem). This is clearly set forth in the A2DP protocol, as was explained to
`
`Blitzsafe in the related IPR2016-01476:
`
`
`
`3
`
`
`
`
`
`A2DP 1.0 Protocol (Ex. 1023) at 19 (cited by Petition (Paper 1) of IPR2016-01476
`(Ex. 1022) at 70)
`
`7.
`
`In other words, the portable device disclosed in paragraph [0063] of
`
`Clayton has to have a decoder for A2DP wireless streaming. For example, if the
`
`portable device wishes to send MP3 audio data to a sink device that does not
`
`support MP3, then it must include an MP3 decoder to decode the MP3 audio to an
`
`unencoded format before reencoding it for transmission in a default format. Id. A
`
`PHOSITA would understand that to comply with A2DP, such a decoder would be
`
`present in the portable device.
`
`II. THE CLAYTON PROVISIONAL SUPPORTS CLAYTON'S
`DISCLOSURE
`8.
`I disagree with Dr. Stern's contention that the Clayton provisional
`
`application (Ex. 1003) does not support a teaching of "audio generated by the
`
`portable device." Ex. 2001 at 76. FIG. 5 of the Clayton provisional application
`
`provides support for at least claim 15 of Clayton. Ex. 1003 at FIG. 5.
`
`Additionally, the Clayton provisional application discloses use of A2DP to stream
`
`audio from a portable device to a car stereo wireless adapter. See, e.g. id. at p. 148
`
`9.
`
`The Clayton provisional application also discloses transmission of
`
`audio in a .WAV format. Ex. 1003 at 171, 526, 546, 602, and 605. A PHOSITA
`
`would understand that a format of .WAV data is a digitally-encoded waveform,
`
`such as pulse-code modulation data or its equivalent. I agree with Dr. Stern that
`
`
`
`4
`
`
`
`audio in a digitally-encoded waveform (such as a .WAV format) is "audio
`
`generated by the portable device." Ex. 2001 at 37 and 55.
`
`III. CLAYTON IS PRIOR ART TO THE '342 PATENT
`10.
`I understand that the '342 Patent is a continuation-in-part of U.S.
`
`Patent Application No. 11/071,667 ("the '667 Application") (Ex. 2003). I disagree
`
`with Dr. Stern's contention that the '667 Application provides support for the
`
`claimed "audio generated by the portable device over said wireless communication
`
`link." For this feature, Dr. Stern points only to paragraph [0128] of the '667
`
`Application, which does not disclose a wireless communication of "audio
`
`generated by the portable device." Ex. 2003 at ¶[0128]. In fact, this paragraph
`
`only discusses a control command from a car stereo to a portable device. Neither
`
`Blitzsafe nor Dr. Stern have pointed to any "audio generated by the portable device
`
`over said wireless communication link" in the '667 Application or a requirement
`
`for this feature, because this feature is plainly missing and the "audio generated"
`
`language only first appears in the '342 Patent.
`
`11. Dr. Stern "agree[s] with the Board's determination that Ohmura does
`
`not teach the 'audio generated by the portable device' limitation." Ex. 2001 at 58.
`
`However, the '667 Application discloses no more (and much less) than the prior art
`
`Ohmura reference (US2001/0028717, Ex. 1019) as relates to this limitation. For
`
`example, Ohmura discloses a multimedia device integration system that provides
`
`
`
`5
`
`
`
`wireless Bluetooth integration between a car stereo 100 and a portable device 200a
`
`and 200b such as an MP3 player or CD player. Ex. 1019 at Abstract, FIGS. 2-7,
`
`and ¶¶[0028], [0077]-[0081], [0085]-[0088], and [0106]. The two devices
`
`communicate to receive display information (e.g., title information) about an audio
`
`file stored in the portable device, transmit control commands (e.g., play, rewind,
`
`etc.) input through the car stereo to the portable device to instruct playback of an
`
`audio file, and receive audio in response for immediate playback without storage in
`
`the car stereo. Id. at ¶¶[0028], [0077], [0078], [0081], [0087], [0088], [0106],
`
`[0204], [0205], and [0213]. Blitzsafe argued, and the Board agreed, that this
`
`teaching does not amount to "audio generated by the portable device over said
`
`wireless communication link" because there lacks any disclosure of decoding in the
`
`portable device for wireless streaming. Patent Owner's Preliminary Response
`
`(Paper 9) in IPR2016-00419 (Ex. 1024) at p. 21, and Decision on Request for
`
`Rehearing (Paper 15) in IPR2016-00419 (Ex. 1025) at pp. 5-6.
`
`12. Meanwhile, the '667 Application and its drafts make only one passing
`
`reference to Bluetooth as a means for communication, without disclosing that
`
`Bluetooth is used to transmit audio "generated" or decoded by the portable device.
`
`Ex. 2003 at ¶126. This certainly does not convey to a PHOSITA that the inventor,
`
`Ira Marlowe, had understood or appreciated the idea of transmitting "generated"
`
`audio over Bluetooth.
`
`
`
`6
`
`
`
`IV. CONCLUSION
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Date: December 29, 2016 ________________________________
`
`
`
`
`
`
`
`Thomas G. Matheson
`
`
`
`7
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