UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION,
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`Petitioner,
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`v.
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`BLITZSAFE TEXAS, LLC,
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`Patent Owner
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`
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`Case IPR2016-00419
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`Patent 8,155,342
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`PETITIONER'S
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`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)-(d)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION,
`
`Petitioner,
`
`
`
`v.
`
`
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner
`
`
`
`Case IPR2016-00419
`
`Patent 8,155,342
`
`
`
`PETITIONER'S
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)-(d)
`
`
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`
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`TABLE OF CONTENTS
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`INTRODUCTION .................................................................................................................... 1
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`PRECISE RELIEF REQUESTED ........................................................................................... 5
`
`LEGAL STANDARD .............................................................................................................. 5
`
`BASIS FOR RELIEF REQUESTED ...................................................................................... 6
`
`A.
`
`B.
`
`The Decision Misapprehended or Overlooked the Cited Portions of
`Ohmura that Disclose the "Audio Generated by the Portable
`Device" Claim Feature .............................................................................................6
`
`The Decision Misapprehended or Overlooked the Cited Portions of
`Ohmura that Disclose the Functions of the Construed "Integration
`Subsystem" .............................................................................................................10
`
`
`
`I.
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`II.
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`III.
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`IV.
`
`V.
`
`CONCLUSION....................................................................................................................... 14
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`
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`
`ii
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`Pursuant to 37 C.F.R. §42.71(c)-(d), TOYOTA MOTOR CORPORATION
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`("Petitioner") requests rehearing of the Board's Decision Denying Institution of
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`Inter Partes Review entered July 19, 2016 (Paper No. 13) ("Decision"). In the
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`Decision, the Board denied institution of Inter Partes Review of U.S. Patent No.
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`8,155,342 ("the '342 patent") on the seven (7) grounds of invalidity raised by
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`Petitioner based on the prior art U.S. Patent Application Publication No.
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`2001/0028717 (Ex. 1102) ("Ohmura"). Petitioner respectfully submits that, in its
`
`analysis, the Board misapprehended the disclosure of Ohmura as well as citations
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`to Ohmura in both the Petition (Paper No. 1) and its supporting expert Declaration
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`(Ex. 1120) ("Matheson Declaration").
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`The Decision denies institution for the same reasons as those provided in a
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`previous Decision for a Petition filed by a different party on the '342 patent.
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`However, the instant Petition relies on a distinct, streaming audio embodiment
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`described in Ohmura, to which the reasons for denying institution clearly do not
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`apply.
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`I.
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`INTRODUCTION
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`On December 30, 2015, Petitioner filed a Petition (Paper No. 1) ("Petition")
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`requesting Inter Partes Review of the '342 patent as to claims 49-57, 62-64, 66, 68,
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`70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 ("the
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`
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`
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`challenged claims"). In its Petition, Petitioner demonstrated that each of the
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`challenged claims is unpatentable under 35 U.S.C. §103(a) as obvious over
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`Ohmura in combination with various other references. Unlike a previously denied
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`Petition filed by another party (Unified Patents Inc., IPR2016-00118) based on a
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`file transfer embodiment of Ohmura, the instant Petition relied on a different
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`embodiment of Ohmura, specifically, the distinct streaming audio embodiment.
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`Nonetheless, on July 19, 2016, the Board denied review as to all of the challenged
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`claims for the same two reasons that the earlier Unified Patents Petition was
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`denied:
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`(1) The "audio generated by the portable device" claim feature:
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`"[W]e are not persuaded that Ohmura's CPU 101 of car audio/video
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`system 100, shown in Ohmura's Figure 2, 'instructs the portable
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`device to play the audio file… and receives audio generated by the
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`portable device"; and
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`(2) The construed "integration subsystem" functions:
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`"Petitioner does not account for or direct us to where each of the
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`functions performed by the claimed 'integration subsystem' is found in
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`Ohmura's CPU." Decision at 27; see also IPR2015-00118, Decision
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`Denying Institution of Inter Partes Review (Paper 19) at 17 and 20.
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`2
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`
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`These reasons for denying institution, however, are based on the
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`embodiment put forth in the Unified Patents Petition. Accordingly, it is
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`respectfully submitted that these reasons are based on a misapprehension of the
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`Ohmura reference itself, as well as misapprehension of Petitioner's arguments and
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`citations to Ohmura in the Petition.
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`With respect to the "audio generated by the portable device" reasoning ((1)
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`above), the Decision is based on the analysis of a particular embodiment disclosed
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`in Ohmura directed to file transfer, inapposite to the distinct embodiment directed
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`to streaming playback cited by the Petition. As in the prior Decision to deny
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`institution of the Unified Patents Petition based on the file transfer embodiment,
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`the Decision also faults the CPU 101 of Ohmura because it is programmed "to
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`receive music data ('music file') from portable device 200a or 200b for storage in
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`an information storage unit of car audio/video system 100." Decision at 27
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`(emphasis added), citing to Ohmura at 111-112; see also IPR2015-00118, Decision
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`Denying Institution of Inter Partes Review (Paper 19) at 20. Because the music
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`file is transferred, stored, and only afterwards reproduced by the car audio/video
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`system 100 in this file transfer embodiment, the Decision concludes that Ohmura's
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`audio "is not generated on portable device 200a or 200b." Decision at 28.
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`3
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`However, this reasoning is specific to the file transfer embodiment. The
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`streaming audio embodiment is distinct and discloses the “audio generated by the
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`portable device.” Ohmura discloses that the CPU 101 "receives the music data…
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`from the portable audio apparatuses 200a and 200b and immediately performs
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`predetermined processing such as decoding without storing it in the information
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`storage unit." Ohmura at 205, cited by Petition at 25, 30.
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`Additionally, regarding the "integration subsystem" functions ((2) above),
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`the Decision is based on the Board's construction of the claimed "integration
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`subsystem," which is broader than that proposed by Petitioner. Here, the Petition
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`is deemed deficient for not showing where each of the functions of the "integration
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`subsystem" as construed by the Board is in the prior art, although the Decision
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`does not actually specify which of these functions is unaccounted for.
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`This holding, however, amounts to a misapprehension of the Petition and an
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`overlooking of its citations to Ohmura. Indeed, each of the functions included in
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`the Board's broader construction of "integration subsystem" plainly overlaps with
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`limitations regarding the "integration subsystem" explicitly recited in the claims, as
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`well as functions of the "integration subsystem" required by Petitioner's proposed
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`construction. Thus, by mapping to the prior art both the explicitly claimed
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`limitations regarding the "integration subsystem" as well as the functions required
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`4
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`by Petitioner's proposed construction, Petitioner did in fact account for each of the
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`functions included in the Board's broader construction of "integration subsystem."
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`II.
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`PRECISE RELIEF REQUESTED
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`Because the Board misapprehended the Petition and the disclosure of
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`Ohmura cited by the Petition, Petitioner requests that the Board reconsider its
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`Decision to deny institution of all seven grounds of invalidity based on Ohmura
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`raised in the Petition and requests institution of Inter Partes Review of the
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`challenged claims based on the seven raised grounds.
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`III. LEGAL STANDARD
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`A request for rehearing is appropriate where the requesting party believes
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`"the Board misapprehended or overlooked" a matter that was previously addressed
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`in the record. See 37 C.F.R. §42.71(d). "The request must specifically identify all
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`matters the party believes the Board misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or a
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`reply." Id.
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`37 C.F.R. §42.71(c) provides in relevant part, "When rehearing a decision on
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`petition, a panel will review the decision for an abuse of discretion." An abuse of
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`discretion occurs where the decision is based on an erroneous interpretation of the
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`law or on erroneous facts. See Star Fruits S.N.C. v. United States, 393 F. 3d 1277,
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`5
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`
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`1281 (Fed. Cir. 2005); Arnold P'ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
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`2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
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`Under 35 U.S.C. §314(a), as implemented by 37 C.F.R. §42.108, in order for
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`an Inter Partes Review to be instituted by the Board, the Petitioner need only show
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`a "reasonable likelihood that the petitioner would prevail." As discussed in the
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`Trial Practice Guide, this is a "somewhat flexible standard." 77 Fed. Reg. 48765
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`(August 14, 2012).
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`IV. BASIS FOR RELIEF REQUESTED
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`A. The Decision Misapprehended or Overlooked the Cited Portions
`of Ohmura that Disclose the "Audio Generated by the Portable
`Device" Claim Feature
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`Ohmura discloses a number of different embodiments for connecting a
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`portable audio apparatus 200a and 200b and a car audio/video system 100.
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`Ohmura at 27, 28, 32, and 33. For example, the embodiment summarized in
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`paragraph 27 and further described in paragraphs 121-124 of Ohmura is directed to
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`a file transfer configuration, whereby the portable audio apparatus 200a or 200b
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`transfers its music data to the car audio/video system 100 for storage therein and
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`later reproduction. Conversely, the embodiment summarized in paragraph 28 and
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`further described in paragraphs 201-206 of Ohmura is directed to a streaming
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`audio configuration, whereby the portable audio apparatus 200a or 200b streams
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`6
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`its music data to the car audio/video system 100 for immediate decoding and
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`output without storing therein. Petitioner’s Petition relied on the latter streaming
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`audio embodiment.
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`Nonetheless, Patent Owner's Preliminary Response (Paper 9) argues against
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`institution by distinguishing the challenged claims over the file transfer
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`embodiment of Ohmura, instead of the streaming audio embodiment: "Ohmura
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`teaches that electronic files (called 'music data') are stored on the car audio system
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`and played by the car audio system." Preliminary Response at 22 (emphasis
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`added). The Board's Decision here agrees with Patent Owner's misplaced
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`argument that Ohmura does not disclose "audio generated by the portable device,"
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`based on this same file transfer embodiment:
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`"According to Ohmura, CPU 101 of car audio/video system 100,
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`shown in the flowchart of Figure 4, is programmed… to receive music
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`data ("music file") from portable device 200a or 200b for storage in
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`an information storage unit of car audio/video system 100 at step
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`S17. Ex. 1102 ¶¶ 111-112. Afterwards, the music data ("music file")
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`is then reproduced or outputted as music (audio) from speakers 28
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`in car audio/video system 100 at step S20. Ex. 1102 ¶¶ 121-124. In
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`other words, Ohmura's music data ("music file") is transferred from
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`7
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`portable device 200a or 200b to car audio/video system 100. Id. at ¶
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`84, 120-122. As such, Ohmura's audio is generated at car audio/video
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`system 100 by playing a transferred music file and is not generated on
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`portable device 200a or 200b by playing a music file on portable
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`device 200a or 200b as is required by the claim 49."
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`Decision at 27-28 (emphasis added).
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`
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`The Board misapprehended the arguments in the Petition, which are based
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`on the streaming audio embodiment and not the file transfer embodiment.
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`Specifically, the Petition cites to the streaming audio embodiment described in
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`paragraphs 28, 204, and 205 of Ohmura. See, e.g., Petition at 25, 30, and 31 and
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`Matheson Declaration at 51-53. The differences between the two embodiments are
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`critical to the erroneous reasoning behind non-institution. Indeed, the very features
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`of Ohmura's file transfer embodiment that the Decision relies on to deny institution
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`are absent from the streaming audio embodiment, as can be seen in a side-by-side
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`comparison:
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`8
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`
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`Description of Ohmura In Decision
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`Cited Portion of Ohmura in Petition
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`“… receive music data (“music file”)
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`"[0205] …the audio apparatus 100
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`from portable device 200a or 200b for
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`receives the music data… and
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`storage in an information storage unit
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`immediately performs predetermined
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`of car audio/video system 100 at step
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`processing such as decoding without
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`S17… Afterwards, the music data
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`storing it in the information storage
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`(“music file”) is then reproduced or
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`unit of the audio apparatus 100 and
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`outputted as music (audio) from
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`controls so that the music data is
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`speakers 28 in car audio/video system
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`reproduced/output from the speakers 28
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`100 at step S20. In other words,
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`and other portable audio apparatuses.”
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`Ohmura’s music data (“music file”) is
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`transferred from portable device 200a or
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`200b to car audio/video system 100”
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`Clearly, the Decision overlooks Ohmura's streaming audio embodiment (and
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`Petitioner’s citations thereto) in which the car audio/video system (1) does not
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`store, but (2) immediately processes and outputs received music data.
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`Furthermore, as referenced in the Petition and the Matheson Declaration, Ohmura
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`discloses the streaming audio being controlled in response to instructions from a
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`9
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`
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`user (e.g., select, reproduce, stop, fast-forward, rewind, etc.) See, e.g., Ohmura at
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`28, 78, and 213, cited by Petition at 30 and Matheson Declaration at 50-52.
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`Since the Decision relies on reasoning unique to the file transfer
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`embodiment and inapposite to the cited streaming audio embodiment of Ohmura,
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`the teachings of Ohmura cited by the Petition and overlooked/misapprehended in
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`the Decision are highly relevant to the determination of whether there is a
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`reasonable likelihood that Petitioner would prevail. Petitioner respectfully submits
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`that, by overlooking or misapprehending the cited portions of Ohmura that disclose
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`receipt of audio generated by the portable device according to a play instruction
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`from the user, the Decision was based upon a misapprehension of facts and,
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`therefore, represents an abuse of discretion.
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`B.
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`The Decision Misapprehended or Overlooked the Cited Portions
`of Ohmura that Disclose the Functions of the Construed
`"Integration Subsystem"
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`Petitioner further requests reconsideration of the Decision not to institute
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`because the Decision misapprehends the cited portions of Ohmura that teach the
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`functions required by the Board's construction of "integration subsystem."
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`The challenged claims of the '342 patent recite an "integration subsystem."
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`Petitioner argued that construction of this term should be governed by 35 U.S.C.
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`§112, sixth paragraph, to thereby require a microprocessor or processor
`
`10
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`
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`"programmed to perform the method of FIG. 24" of the '342 patent. Petition at 14-
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`15. Based on this construction, Petitioner mapped each of the limitations of the
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`integration subsystem recited in the claims (e.g., the wherein clause of claim 49) to
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`various operations and features of the CPU 101 disclosed by Ohmura. See id. at
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`28-31; see also Matheson Declaration at 47-53.
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`In the Decision, the Board adopted a broader construction of "integration
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`subsystem" than that proposed by Petitioner. Specifically, the Board construed the
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`term to be a subsystem that performs at least the following four functions: (1)
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`connecting one or more portable devices or inputs to the car audio/video system
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`via an interface; (2) processing and handling signals, audio, and/or video
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`information; (3) allowing a user to control the one or more portable devices via the
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`car audio/video system; and (4) displaying data from the one or more portable
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`devices on the car audio/video system. Decision at 27.
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`These four functions are basic functions that are plainly taught by Ohmura.
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`Indeed, the Decision itself includes a brief description of Ohmura that accounts for
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`all four of the construed functions of the "integration subsystem." For example,
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`with respect to the first function, the Decision describes Ohmura as disclosing a
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`"car audio/video system 100 with display that communicates wirelessly with
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`portable devices 200a-200b, via Bluetooth" or "via transmission/reception modules
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`11
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`
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`110, 205 using a short-range radio such as Bluetooth." Decision at 20. Regarding
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`the second function, the Decision states that Ohmura's car audio/video system 100
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`"transmits/receives music data ('music file') to/from portable devices 200a-200b."
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`Id. at 20. As to the third and fourth functions, the Decision notes that "Ohmura
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`describes the use of an 'audio menu' on display 24 of car audio/video system 100…
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`to provide a visual display of a playlist of music data… for user selection of music
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`data from a music source…" Id.
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`In denying institution, the Decision indicates that the Petition fails to meet
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`its burden of identifying each of the four construed functions in the prior art. This
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`holding, however, amounts to a misapprehension of the Petition and an
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`overlooking of its citations to the prior art. Although Petitioner proposed a
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`different (narrower) claim construction than that ultimately adopted by the Board,
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`it indisputably mapped the functions required by the as-construed "integration
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`subsystem" limitation to the disclosure of Ohmura. This is contained on pages 24-
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`31 of the Petition and pages 38-53 of the supporting Matheson Declaration. The
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`Decision never specifically addresses Petitioner’s arguments and citations on these
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`pages, or the corresponding portions of the Matheson Declaration.
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`For example, the Petition at pages 24 and 25 cites to paragraphs 74-85 and
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`FIG. 2 of Ohmura which teach the CPU 101 controlling the overall functionality of
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`12
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`
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`the car audio/video system 100 and connecting to a portable device 200a or 200b
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`via a wireless interface (first construed function). See also Petition at 28-29 (claim
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`chart mapping to 49(a)-(c)). Additionally, the Petition at page 31 cites to Ohmura's
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`disclosure in paragraphs 28 and 205 of the CPU 101 receiving, processing, and
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`reproducing contents information (second construed function). The Petition at
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`page 30 describes Ohmura's disclosure at paragraphs 28, 204, 205, and 213 of
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`selecting means to allow a user to select a particular title for playback (third
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`construed function). See also Petition at 25 describing the same. Finally, the
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`Petition at pages 25 and 30 cites to Ohmura's disclosure in paragraph [0077] of the
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`car audio/video system 100 displaying received music title information (fourth
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`construed function).
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`Petitioner respectfully submits that, by overlooking or misapprehending the
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`cited portions of Ohmura that disclose the functionality of the CPU 101
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`corresponding to the functions of the "integration subsystem" as construed by the
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`Board, the Decision was based upon a misapprehension of facts and, therefore,
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`represents an abuse of discretion.
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`13
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`V. CONCLUSION
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`As shown above, the Petition demonstrated that there is a reasonable
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`likelihood that Petitioner would prevail with respect to the seven grounds of
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`invalidity raised in the Petition based on Ohmura. The Board, however,
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`misapprehended the disclosure of Ohmura and overlooked the citations to Ohmura
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`in the Petition and supporting Matheson Declaration.
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`For the reasons provided above, Petitioner respectfully requests that the
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`Board reconsider Petitioner's arguments and evidence showing that the challenged
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`claims are obvious in view of Ohmura combined with the various references set
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`forth in the seven grounds of invalidity raised in the Petition.
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`Respectfully submitted,
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`/William H. Mandir /
`
`William H. Mandir
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`Registration No. 32,156
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`
`
`Sughrue Mion, PLLC
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`CUSTOMER NUMBER: 23373
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`Date: August 12, 2016
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`14
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that a copy of the attached Request for Rehearing
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`was sent via e-mail to:
`
`Peter Lambrianakos
`
`Brown Rudnick LLP
`
`Seven Times Square
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`New York, NY 10036
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`plambrianakos@brownrudnick.com
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`
`
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`Date: August 12, 2016
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`Respectfully submitted,
`
`
` /Fadi Kiblawi /
`Fadi Kiblawi
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