UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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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`Patent No. 8,155,342
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`Issued: Apr. 10, 2012
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`Filed: Jun. 27, 2006
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`
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`Inventor: Ira Marlowe
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`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
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`
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`Inter Partes Review No.: Unassigned
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`
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`PETITION FOR INTER PARTES REVIEW
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`

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`TABLE OF CONTENTS
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`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .................................................................................................................... 1
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................ 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)............................2
`
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ........................................2
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`LEAD AND BACK-UP COUNSEL .......................................................................3
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`SERVICE INFORMATION ....................................................................................3
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`PAYMENT OF FEES — 37 C.F.R. § 42.103 ......................................................................... 4
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ................................................. 4
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a) ................................................4
`
`Prior Art Patents and Printed Publications...............................................................4
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .................................................................................................................5
`
`V.
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`SUMMARY OF THE '342 PATENT ...................................................................................... 7
`
`A.
`
`B.
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`Brief Description ......................................................................................................7
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`Summary of the Prosecution History of the '342 patent ..........................................8
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`VI.
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`CLAIM CONSTRUCTION ..................................................................................................... 9
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`VII. EFFECTIVE FILING DATE OF CLAIMS OF '342 PATENT ........................................... 16
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`VIII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST 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 UNPATENTABLE ...................................... 24
`
`A.
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`Grounds 1-4: Ohmura ............................................................................................24
`
`1.
`
`2.
`
`3.
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`Ground 1: Claims 49-52, 55-57, 62, 63, and 71 are obvious
`under 35 U.S.C. §103(a) by Ohmura in view of Berry ..............................24
`
`Ground 2: Claims 49-57, 62, 63, 66, 70, 71, 97, 99, 100,
`102, 103, 106, 109, 110, 113, and 120 of the '342 patent are
`obvious under 35 U.S.C. §103(a) by Ohmura in view of
`Berry and Marlowe ....................................................................................33
`
`Ground 3: Claims 64, 73-80, 94, 95, 101, and 111 are
`obvious under 35 U.S.C. §103(a) by Ohmura in view of
`Berry, Marlowe, and Kandler ....................................................................44
`
`ii
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`

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`4.
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`Ground 4: Claims 68 and 115 are obvious under 35 U.S.C.
`§103(a) by Ohmura in view of Berry, Marlowe, and
`Gioscia .......................................................................................................48
`
`B.
`
`Grounds 5-7: Ohmura in view of Berry, Kandler, and Lau ...................................49
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`5.
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`6.
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`7.
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`Ground 5: Claims 49-57, 62-64, 66, 68, 71, 73-80, 94, 95,
`97, 99, 100-103, 106, 109, 110, 111, 113, 115, and 120
`under 35 U.S.C. §103(a) by Ohmura in view of Berry,
`Kandler, and Lau ........................................................................................49
`
`Ground 6: Claims 66, 68, 94, 113, and 115 are obvious
`under 35 U.S.C. §103(a) by Ohmura in view of Berry,
`Kandler, Lau, and Gioscia .........................................................................57
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`Ground 7: Claim 70 is Obvious under 35 U.S.C. §103(a) by
`Ohmura in view of Berry, Kandler, Lau, and Myers .................................58
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`IX.
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`CONCLUSION....................................................................................................................... 59
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`
`
`iii
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`EXHIBITS
`
`Description
`U.S. Patent No. 8,155,342 ("the '342 patent")
`U.S. Patent Application Publication No. 2001/0028717 ("Ohmura")
`U.S. Patent No. 6,559,773 ("Berry")
`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe")
`Canadian Patent Application Publication No. CA 2347648
`("Kandler")
`U.S. Patent No. 6,421,305 ("Gioscia")
`International Publication No. WO 01/67266 A1 ("Lau")
`U.S. Patent No. 6,486,889 ("Meyers")
`Claim Construction Ruling in Marlowe Patent Holdings LLC v.
`DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ) and Marlowe
`Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D.
`NJ)
`U.S. Patent Application No. 11/475,847 ("the '847 application")
`U.S. Patent Application No. 11/071,667 ("the '667 application")
`U.S. Patent Application No. 10/732,909 ("the '909 application")
`U.S. Patent Application No. 10/316,961 ("the '961 application")
`Highlighted '342 Patent (Showing the New Matter)
`Infringement
`Plaintiff's Disclosure of Asserted Claims and
`Contentions, served in Blitzsafe Texas, LLC v. Toyota Motor Corp.
`et al., 2-15-cv-01277 (E.D. TX)
`File History of the '342 Patent
`Bluetooth ESDP for UPnP (2001)
`Universal Plug and Play Device Architecture (2000)
`1999 ID3v2.3 Metadata Standard (1999)
`Declaration of Dr. Thomas Matheson
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`
`
`Exhibit
`1101
`1102
`1103
`1104
`1105
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`1106
`1107
`1108
`1109
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`1110
`1111
`1112
`1113
`1114
`1115
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`1116
`1117
`1118
`1119
`1120
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`
`iv
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`
`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Toyota
`
`Motor Corporation ("Toyota" or "Petitioner") respectfully requests Inter Partes
`
`Review of claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-
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`111, 113, 115, and 120 of U.S. Patent No. 8,155,342 (Ex. 1101, "the '342 patent"),
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`which was filed on June 27, 2006 and issued on April 10, 2012 to Ira Marlowe, and
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`is currently assigned to Blitzsafe Texas, LLC. ("Blitzsafe" or "Patent Owner")
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`according to the U.S. Patent and Trademark Office assignment records. There is a
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`reasonable likelihood that Petitioner will prevail with respect to at least one of the
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`claims challenged in this Petition.
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`With respect to the concurrently filed Petition also challenging the claims of
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`the ‘342 patent, those grounds are not cumulative to any grounds presented in the
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`instant Petition at least because that Petition relies primarily on the Clayton
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`reference that qualifies as prior art under 35 U.S.C. §102(e) against the application
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`from which the '342 patent issued. Meanwhile, the instant petition relies primarily
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`on the Ohmura reference, which has a publication date that precedes the earliest
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`filing date in the priority chain of the '342 patent by over one year and therefore is
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`prior art under 35 U.S.C. §102(b), even if the Patent Owner alleges a date of
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`invention that precedes the effective filing date of Clayton.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
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`The Petitioner is Toyota Motor Corporation. Additional Real Parties-in-
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`Interest are: Toyota Motor Sales, U.S.A., Inc.; Toyota Motor Manufacturing
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`Texas, Inc.; Toyota Motor Manufacturing Kentucky, Inc.; and Toyota Motor
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`Manufacturing Mississippi, Inc.
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`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
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`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the '342 patent is
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`currently the subject of the following on-going litigations: Blitzsafe Texas, LLC v.
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`Nissan Motor Co., Ltd. et al., 2-15-cv-01276, July 16, 2015 (E.D. TX); Blitzsafe
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`Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277, July 16, 2015 (E.D. TX);
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`Blitzsafe Texas, LLC v. Volkswagen Group of Am., Inc. et al., 2-15-cv-01278, July
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`16, 2015 (E.D. TX); Blitzsafe Texas, LLC v. Hyundai Motor Co. et al., 2-15-cv-
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`01275, July 16, 2015 (E.D. TX); Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et
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`al., 2-15-cv-01274, July 16, 2015 (E.D. TX).
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`U.S. Patent No. 7,489,786 ("the '786 patent"), a parent patent to the '342
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`patent, was previously the subject of the following litigations: Marlowe Patent
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`Holdings LLC v. DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ); and
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`2
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`Marlowe Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D. NJ).
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`Both cases settled by June 2015.
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`Petitioner is concurrently filing another Petition for Inter Pares Review
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`challenging the claims of the ‘342 patent on grounds that are non-cumulative with
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`those presented herein. In addition, a Petition for Inter Partes Review of the '342
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`patent (IPR2016-00118) was filed on October 30, 2015 by Petitioner, Unified
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`Patents Inc, challenging claims 1-25, 49, 73, 97, 120, and 121.
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`C. LEAD AND BACK-UP COUNSEL
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`Lead Counsel for Petitioner is William H. Mandir, Registration No. 32,156.
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`Back-Counsel for Petitioner are John F. Rabena, Registration No. 38,584;
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`Yoshinari Kishimoto, Registration No. 47,327; Brian K. Shelton, Registration No.
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`50,245; Fadi N. Kiblawi, Registration No. 61,973; and Margaret M. Welsh,
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`Registration No. 70,754. A Power of Attorney accompanies this Petition.
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`D.
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`SERVICE INFORMATION
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`Service information for lead and back-up counsel is provided in the
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`designation of lead and back-up counsel, above. Service of any documents via
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`hand-delivery may be made at the postal mailing addresses listed above. Petitioner
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`also consents to electronic service by email at toyota@sughrue.com.
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`3
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`III. PAYMENT OF FEES — 37 C.F.R. § 42.103
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`
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`Petitioner authorizes the Patent and Trademark Office to charge Deposit
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`Account No. 19-4880 for the fees set in 37 C.F.R. § 42.15(a) for this Petition for
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`Inter Partes Review, and further authorizes payment for any additional fees to be
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`charged to this Deposit Account.
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`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`
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`Petitioner certifies that the '342 patent (Ex. 1101) is available for Inter
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`Partes Review and that Petitioner is not barred or estopped from requesting an
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`Inter Partes Review challenging the patent claims on the grounds identified in this
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`Petition.
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`B.
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`Prior Art Patents and Printed Publications
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`U.S. Patent Application Publication No. 2001/0028717 ("Ohmura") (Ex.
`
`1102) published on October 11, 2001, and was filed on April 9, 2001. Thus, it
`
`qualifies as prior art under 35 U.S.C. § 102(b).
`
`U.S. Patent No. 6,559,773 ("Berry") (Ex. 1103) published on May 6, 2003,
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`and was filed on December 21, 1999. Thus, it qualifies as prior art under 35 U.S.C.
`
`§ 102(b), or in the alternative, 35 U.S.C. § 102(a) or (e).
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`4
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`
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`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe") (Ex.
`
`1104) published on November 20, 2003. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`Canadian Patent Application Publication No. CA 2347648 ("Kandler") (Ex.
`
`1105) was published on December 1, 2001. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`U.S. Patent No. 6,421,305 ("Gioscia") (Ex. 1106) was filed on November
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`13, 1998 and published on July 16, 2002. Thus, it qualifies as prior art under 35
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`U.S.C. § 102(b) , or in the alternative, 35 U.S.C. § 102(a) or (e).
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`International Publication No. WO 01/67266 A1 ("Lau") (Ex. 1107) was
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`published on September 13, 2001. Thus, it qualifies as prior art under 35 U.S.C. §
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`102(b).c
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`U.S. Patent No. 6,486,889 ("Meyers") (Ex. 1108) published on July 1, 2003,
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`and was filed on July 30, 2001. Thus, it qualifies as prior art under 35 U.S.C. §
`
`102(b), or in the alternative, 35 U.S.C. § 102(a) or (e).
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`C.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`
`
`Petitioner requests Inter Partes Review of claims 49-57, 62-64, 66, 68, 70,
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`71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 of the '342 Patent
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`(Ex. 1101) on the grounds set forth in the tables below and requests that each of the
`5
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`

`
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`claims be found unpatentable. An explanation of how 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 are
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`unpatentable under the statutory grounds identified below, including the
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`identification of where each element is found in the prior art references and the
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`relevance of each of the prior art references, is provided in the form of detailed
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`claim charts. Additional explanation and support for each ground of rejection is
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`set forth in the Declaration of Dr. Thomas Matheson (Ex. 1120).
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`Ground
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`'342 Patent Claim Basis for Rejection
`Obvious under 35 U.S.C. §103(a) by Ohmura
`
`Ground 1 Claims 49-52, 55-
`57, 62, 63, and 71
`
`Ground 2 Claims 49-57, 62,
`63, 66, 70, 71, 97,
`99, 100, 102, 103,
`106, 109, 110, 113,
`and 120
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`(Ex. 1102) in view of Berry (Ex. 1103)
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`Obvious under 35 U.S.C. §103(a) by Ohmura
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`(Ex. 1102) in view of Berry (Ex. 1103) and
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`Marlowe (Ex. 1104)
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`Ground 3 Claims 64, 73-80,
`94, 95, 101, and 111
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`Obvious under 35 U.S.C. §103(a) by Ohmura
`
`(Ex. 1102) in view of Berry (Ex. 1103),
`
`Marlowe (Ex. 1104), and Kandler (Ex. 1105)
`Ground 4 Claims 68 and 115 Obvious under 35 U.S.C. §103(a) by Ohmura
`(Ex. 1102) in view of Berry (Ex. 1103),
`
`Ground 5 Claims 9-57, 62-64,
`66, 68, 71, 73-80,
`94, 95, 97, 99, 100-
`103, 106, 109, 110,
`111, 113, 115, and
`120
`
`Marlowe (Ex. 1104), and Gioscia (Ex. 1106)
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`Obvious under 35 U.S.C. §103(a) by Ohmura
`
`(Ex. 1102) in view of Berry (Ex. 1103),
`
`Kandler (Ex. 1105), and Lau (Ex. 1107)
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`6
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`

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`
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`Ground 6 Claims 66, 68, 94,
`113, and 115
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`Ground 7 Claim 70
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`Obvious under 35 U.S.C. §103(a) by Ohmura
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`(Ex. 1102) in view of Berry (Ex. 1103),
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`Kandler (Ex. 1105), Lau (Ex. 1107), and
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`Gioscia (Ex. 1106)
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`Obvious under 35 U.S.C. §103(a) by Ohmura
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`(Ex. 1102) in view of Berry (Ex. 1103),
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`Kandler (Ex. 1105), Lau (Ex. 1107), and
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`Meyers (Ex. 1108)
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`V.
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`
`SUMMARY OF THE '342 PATENT
`A. Brief Description
`
`The '342 patent is directed to a multimedia device integration system that
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`controls a portable device from a car audio/video system via an "integration
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`subsystem." See Ex. 1101 at Abstract; see also Ex. 1016 at ¶46. The '342 patent
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`claims are directed to certain embodiments where wireless integration is provided
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`between a car audio/video system and a portable audio/video device via the
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`integration subsystem. See Ex. 1116 (‘342 Patent File History) at p. 732,
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`Amendment 1.111 filed on Nov. 30, 2009; see also Ex. 1120 at ¶¶50-57.
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`The integration subsystem is positioned within the portable device or within
`
`the car audio/video system to integrate the two devices, as shown in FIGS. 18 and
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`19 reproduced below. See Ex. 1116 at p. 732; see also Ex. 1101 at FIGS. 18 and
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`19 and 33:43-35:32; see also Ex. 1120 at ¶¶47-49.
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`7
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`
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`B. Summary of the Prosecution History of the '342 patent
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`The application that issued as the '342 patent was filed on June 27, 2006
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`with 91 claims. Ex. 1116 at pp. 85-104.
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`
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`In response to the first Non-Final Office Action issued on May 28, 2009, the
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`Applicant filed an Amendment on November 30, 2009 canceling original claims 1-
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`91 and adding new claims 92-212. Id. at pp. 702-737.
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`In a later Office Action issued on February 15, 2011, the Examiner rejected
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`all of the claims primarily in view of Tranchina (US 7,493,645). See id. at pp. 882-
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`909, Office Action, issued Feb. 15, 2011. Further, in a 1.116 Amendment filed on
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`January 29, 2012 in response to a subsequent Final Office Action in which
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`Tranchina was still applied, the Applicant distinguished over Tranchina by arguing
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`that the claimed integration subsystem is wirelessly connected to a car audio/video
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`system. The Applicant submitted this argument despite the fact that most of the
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`claims do not recite or require such a wireless communication between the
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`integration subsystem and a car audio/video system. See id. at pp. 1039-1042,
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`Amendment 1.116, filed on Jan. 29, 2012; see also Ex. 1120 at ¶¶61-62.
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`On February 16, 2012, the Examiner issued a Notice of Allowance, without
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`an indication of a reason for allowance. See Ex. 1116 at pp. 1079-1083, Notice of
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`Allowance, issued Feb. 16, 2012; see also Ex. 1120 at ¶¶58-63.
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`8
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`VI. CLAIM CONSTRUCTION
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`A claim subject to Inter Partes Review is given its "broadest reasonable
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`construction in light of the specification of the patent in which it appears." (37
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`C.F.R. § 42.100(b).) This means that the words of the claim are given their plain
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`meaning from the perspective of one of ordinary skill in the art unless that meaning
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`is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
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`1989).
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`"Means-plus-function" limitations are construed in accordance with 35
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`U.S.C. § 112, 6th paragraph. A claim element that does not recite the term "means"
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`will invoke 35 U.S.C. § 112, 6th paragraph if the claim element "fails to 'recite
`
`sufficiently definite structure' or else recites 'function without reciting structure for
`
`performing that function.'" Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349
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`(Fed. Cir. 2015), citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000).
`
`Petitioner submits that a person of ordinary skill in the art at the time of the
`
`alleged invention would have had at least a Bachelor’s degree in electrical
`
`engineering or equivalent science/engineering degree and at least two years of
`
`experience in signal processing and/or electronic system design, or would have at
`
`least four years of experience in signal processing and/or electronic system design.
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`Ex. 1120 at ¶16.
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`9
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`

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`
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`Petitioner further submits that, for purposes of this Inter Partes Review only,
`
`the claim terms are presumed to take on their broadest reasonable interpretation in
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`light of the specification of the '342 patent. Petitioner submits that the following
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`terms may need to be construed in connection with this Inter Partes Review:
`
`1. "integration subsystem" (all challenged claims)
`
`The term "integration subsystem" itself is not a term recognized by
`
`persons of ordinary skill in the art to have a definite meaning as the name of a
`
`structure. See Williamson, 792 F.3d at 1349; see also Ex. 1120 at ¶72. Nor do
`
`claims 49, 73, 97, and 120 include any structural limitations for performing the
`
`functions of the integration subsystem recited. See Ex. 1120 at ¶72. For
`
`example, the term "subsystem" is used interchangeably in the '342 patent with
`
`the term "module," and amounts to nothing more than a generic nonce word or
`
`verbal construct tantamount to using the term "means." See, e.g., Ex. 1101 at
`
`5:19, 5:23, 5:29-31, 5:40, 5:53, 5:60, and 34:12; see also Williamson, 792 F.3d at
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`1350 (generic terms such as "mechanism," "element," "device," etc., in claim are
`
`tantamount to using the word "means"). Therefore, the claimed "integration
`
`subsystem" is a means-plus-function claim element that must be construed under
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`35 U.S.C. § 112, 6th paragraph. Williamson, 792 F.3d at 1349.
`
`In construing a "means-plus-function" limitation, the function recited in
`
`10
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`

`
`
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`the limitation must first be identified before a corresponding structure disclosed
`
`in the specification for performing the claimed function is determined. See JVW
`
`Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir.
`
`2005); see also Chiuminatta Concrete Concepts, Inc. v. Cardinal Indst., Inc., 145
`
`F.3d 1303, 1308 (Fed. Cir. 1998).
`
`Claims 49 and 73 essentially recite the same functions performed by the
`
`integration subsystem: (1a) obtaining, using a wireless communication link,
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`information about an audio file stored (claim 49) or received (claim 73) on the
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`portable device; (2a) transmitting the information to the car audio/video system
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`for subsequent display; (3a) instructing the portable device to play the audio file
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`in response to a user selecting the audio file; and (4a) receiving audio generated
`
`by the portable device over the wireless communication link. Ex. 1120 at ¶73.
`
`Meanwhile, the functions of the integration subsystem in claim 97 are:
`
`(1b) channeling audio generated by the portable device to the car audio/video
`
`system using a wireless communication link; (2b) receiving a control command
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`from a user in a format incompatible with the portable device; (3b) processing
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`the control command into a format compatible with the portable device; and (4b)
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`dispatching the formatted command to the portable device. Ex. 1120 at ¶74.
`
`The functions of the integration subsystem recited in claim 120 are: (1c)
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`11
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`

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`
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`channeling audio generated by the portable device to the car audio/video system
`
`using a wireless communication link; (2c) receiving data from the portable
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`device in a format incompatible with the car audio/video system; (3c) processing
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`the data into a format compatible with the car audio/video system; and (4c)
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`transmitting the processed data to the car audio/video system. Ex. 1120 at ¶75.
`
`Next, in determining the corresponding structure disclosed in the
`
`specification for performing the identified functions, the disclosed structure must
`
`be clearly linked with the functions. See B. Braun Medical Inc., v. Abbott
`
`Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997). In the instant case, the term
`
`"integration subsystem" is first used in the '342 patent specification in relation to
`
`the embodiments illustrated in FIGS. 18-24. Ex. 1101 at 33:43-38:67 and FIG.
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`24. See Ex. 1120 at ¶77. Of note, the specification states, "The integration
`
`subsystem 932 contains circuitry similar to the circuitry disclosed in the various
`
`embodiments of the present invention discussed herein, and could include a
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`PIC16F872 or PIC16F873 microcontroller manufactured by Microchip, Inc. and
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`programmed in accordance with the flowchart discussed below with respect to
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`FIG. 24." Id. at 34:63-35:1.
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`As can be seen in FIG. 24, many of the above-listed claim functions
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`respectively correspond to a single step in the flowchart. For example, the
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`12
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`
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`"obtaining… information about an audio file" in claims 49 and 73 is
`
`encompassed only by step 1460. Similarly, the "channeling audio generated by
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`the portable device to the car audio/video system using a wireless
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`communication link" in claims 97 and 120 is, at most, encompassed only by step
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`1462. See Ex. 1120 at ¶¶80-81. However, a one-step algorithm disclosed in the
`
`specification that simply mirrors the claimed function does not constitute
`
`sufficient corresponding structure for a computer-implemented function recited
`
`in a claim. See Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc., 355 Fed.
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`Appx. 389, 394-95 (Fed. Cir. 2009). Accordingly, the claimed integration
`
`subsystem does not have sufficient corresponding structure disclosed in the
`
`specification, and is therefore indefinite under 35 U.S.C. § 112, 2nd paragraph.
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`Id.; see also Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376,
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`1378–81 (Fed. Cir. 2013) (claim indefinite because the specification did not
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`sufficiently disclose algorithm that explained how to achieve function). Ex. 1120
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`at ¶81.
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`Notwithstanding, to the extent the Board somehow decides that the
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`claimed integration subsystem is not indefinite, it is noted that a programmed
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`processor is an equivalent to the microcontroller described in the '342 patent.
`
`See id. at ¶78. Therefore, although indefinite, the corresponding structure for the
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`13
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`
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`"integration subsystem" of claims 49, 73, 97, and 120 is disclosed as a
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`microcontroller or processor programmed to perform the method illustrated in
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`FIG. 24. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
`
`1999) (for computer-implemented "means-plus-function" limitations, the
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`structure corresponding to the function of the claim limitation includes the
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`algorithm needed to transform a general purpose computer or processor to a
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`special purpose computer for performing the function); see also Aristocrat Techs.
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`Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) and
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`Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (the algorithm
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`may be understood as an outline of an algorithm, a flowchart, or a specific set of
`
`instructions or rules disclosed in the specification); see also Ex. 1120 at ¶¶79-80.
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`Furthermore, the specification describes the "integration subsystem" as
`
`being positioned within the portable device or within the car audio/video system.
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`See Ex. 1101 at FIGS. 18 and 19, 34:9-13, and 35:23-28. This is consistent with
`
`the '342 patent claims, which further indicate that the "integration subsystem" is
`
`located internally within one of the devices to be wirelessly integrated. See, e.g.,
`
`id. at claims 2, 26, 50, 74, 98, and 99; Ex. 1120 at ¶83.
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`Thus, should the Board decide that "integration subsystem" is not
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`indefinite under 35 U.S.C. § 112, 2nd paragraph, an integration subsystem can
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`14
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`

`
`
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`best be understood as a microcontroller or processor provided within the portable
`
`device or the car audio/video system and programmed to perform the method of
`
`FIG. 24. See Ex. 1120 at ¶¶72-84.
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`2. "car audio/video system" (all challenged claims)
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`
`
`Claim 49, for example, recites "an integration subsystem in communication
`
`with a car audio/video system." Throughout the '342 patent disclosure, the car
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`audio/video system is continually referred to as a car audio or a car video system.
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`For example, the '342 patent discloses that "[t]he present invention relates to a
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`multimedia device integration system. One or more after-market devices, such as a
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`CD player, CD changer, digital media player (e.g., MP3 player, MP4 player, WMV
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`player, Apple iPod, portable media center, or other device), satellite receiver,
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`digital audio broadcast (DAB) receiver, video device (e.g., DVD player), cellular
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`telephone, or the like, can be integrated with an existing car radio or car video
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`device, such as an OEM or after-market car stereo or video system." Ex. 1101 at
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`8:38-46 (emphasis added).
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`
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`Accordingly, Petitioner submits that the broadest reasonable interpretation of
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`a "car audio/video system" is "a car audio system, a car video system, or a car
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`audio and video system." See Ex. 1120 at ¶¶85-86.
`
`
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`3. "device presence signal" (claims 56 and 106)
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`15
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`
`
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`In the New Jersey litigations (see Section II.B), a common Markman
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`decision (Ex. 1109) was issued construing "device presence signal" as used in the
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`related '786 patent to be "transmission of a continuous signal indicating an audio
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`device is present." Ex. 1106 at 14-17. In reaching this interpretation, the district
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`court pointed to the description in the specification of the interface generating a
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`signal "indicating that a CD player/changer is present, and the signal is
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`continuously transmitted to the car stereo." Ex. 1109 at 14 (citing '786 Patent at
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`12:29-32 in addition to 13:15-18; 13:62-66; 14:49-51; 15:35-38; 16:12-15;
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`16:57-60.) Petitioner accepts the court's interpretation of "device presence
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`signal” should be construed for purposes of this Inter Partes Review only. See
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`Ex. 1120 at ¶¶87-88.
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`Beyond these terms, there is no indication in the '342 patent that any other
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`term in the challenged claims should be afforded anything other than its plain
`
`and ordinary meaning.
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`VII. EFFECTIVE FILING DATE OF CLAIMS OF '342 PATENT
`
`The '342 patent (Ex. 1101) was filed on June 27, 2006. The application that
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`issued as the '342 patent, U.S. App. No. 11/475,847 (Ex. 1110, "the '847
`
`application"), was a continuation-in-part (CIP) of Ser. No. 11/071,667 (Ex. 1111,
`
`"the '667 application"), filed March 3, 2005 (abandoned); which was a CIP of Ser.
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`16
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`

`
`
`No. 10/732,909 (Ex. 1112, "the '909 application") filed December 10, 2003
`
`(abandoned); which was a CIP of Ser. No. 10/316,961 (Ex. 1113, "the '961
`
`application") filed December 11, 2002, now U.S. Pat. No. 7,489,786. See Ex.
`
`1101. Ex. 1114 is a copy of the '342 patent highlighted to show the new matter
`
`added at each successive application in the priority chain of the '342 patent. In Ex.
`
`1114, portions highlighted in pink were added in the '909 application, portions
`
`highlighted in blue were added in the '667 application, and portions highlighted in
`
`yellow were added in the '847 application. See Ex. 1120 at ¶33.
`
`All of the addressed '342 patent claims are entitled to an earliest effective
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`filing date of June 27, 2006. Blitzsafe did not dispute this position in Plaintiff's
`
`Disclosure of Asserted Claims and Infringement Contentions (Ex. 1013), served in
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`Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277 (E.D. TX), in
`
`which Blitzsafe stated, "Each of the asserted claims of the '342 patent is entitled to
`
`the priority date of U.S. Patent Application No. 11/475,847, filed June 27, 2006,
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`under P.R. 3-1(e)." Ex. 1115 at p. 7.
`
`The '342 patent claims are not entitled to a filing date earlier than June 27,
`
`2006 because all of the addressed claims require "an integration subsystem," which
`
`is a means-plus-function claim element that, although indefinite as described in the
`
`Claim Construction section VI above, may at best have a corresponding structure
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`17
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`
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`(FIG. 24) that was not disclosed until the '847 application. See Ex. 1114. In fact,
`
`the term "integration subsystem" was first introduced in the '847 application, and
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`its clearly-linked corresponding structure is disclosed with respect to FIG. 24, also
`
`first introduced in the '847 application. Id.; see also Ex. 1120 at ¶¶72-84. Thus,
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`the '342 patent claims should all be afforded an effective filing date no earlier than
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`June 27, 2006.
`
`To the extent that "integration subsystem" is not deemed a means-plus-
`
`function claim element, the earliest effective filing date should still be no sooner
`
`than June 27, 2006 for the reasons set forth hereinbelow. In particular, the '342
`
`patent claims recite first and second wireless interfaces and an integration
`
`subsystem using a wireless link (i.e., wireless functionality), and this wireless
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`functionality via an integration subsystem is not supported until the '847
`
`application, filed June 27, 2006. See Ex. 1114. See Ex. 1120 at ¶¶36-40.
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`Support from the '961 Application
`
`The earliest-filed application of which the '342 patent claims the benefit, the
`
`'961 application, provides no support for a wireless link, let alone any wireless
`
`functionality. See id.; see also Ex. 1120 at ¶36. Thus, none of the '342 patent
`
`claims is entitled to the 2002 filing date of the '961 application.
`
`Support from the '909 Application
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`18
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`

`
`
`
`The next application in the priority chain, the '909 application filed on
`
`December 10, 2003, did not include support for wireless communication with the
`
`portable device, or a separate integration subsystem as claimed.
`
`
`
`No support for "integration subsystem" in '909 Application
`
`The '909 application does not provide support for "an integration
`
`subsystem." In fact, an integration subsystem is not disclosed and supported until
`
`the '847 application (filed on June 27, 2006) from which the '342 patent issued.
`
`See Ex. 1114; see also Ex. 1120 at ¶38.
`
`Furthermore, as set forth in the Claim Construction section VI above, "an
`
`integration subsystem," although indefinite, is disclosed as a microcontroller or
`
`processor provided within the portable device or the car audio/video system and
`
`programmed to perform the method of FIG. 24. Meanwhile, the '909 application
`
`only discloses wireless communication with respect to an integration system that is
`
`external to both the car audio/video system and the portable device. See id.at
`
`27:30-45 and FIGS. 8A and 8B. Thus, the '909 application plainly fails to support
`
`the claimed integration subsystem, which is within either of these two devices. See
`
`Ex. 1120 at ¶38.
`
`No support for wireless communication with portable device in '909
`
`Application
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`19
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`
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`The '909 application included just a few sentences on wireless
`
`communication, and those few sentences only dealt