IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`
`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. 7,489,786
`Issue Date: Feb. 10, 2009
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`
`BLITZSAFE TEXAS, LLC’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,489,786
`
`Case No. IPR2016-00421
`________________________________________________________________
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION, CLAIMS, AND THE LAW ................ 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Board Should Deny Institution in the Interest of Justice
`Because Petitioner’s Claim Construction Arguments Are an
`Abuse of Process................................................................................. 5
`
`The Term “Means for Generating a Device Presence Signal” Is
`Not Indefinite ...................................................................................... 6
`
`Petitioner’s Proposed Construction of “Interface” Is Internally
`Inconsistent and Should Not Be Applied in This Proceeding .............. 7
`
`Petitioner’s Proposed Construction of “Portable” Improperly
`Reads Out the Limitation Itself ........................................................... 9
`
`III. PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-7 AND
`THE PETITION SHOULD BE DENIED. .................................................. 11
`
`A.
`
`B.
`
`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ................................................................................................... 11
`
`Claims 57, 58, 60, 64, 86, 88, 90, 91, 92, 94 and 97 are Not
`Obvious Over JP ‘954 in view of Lau (Ground 1) ............................. 13
`
`1.
`
`2.
`
`3.
`
`Interface and Connectors ........................................................ 15
`
`Portable Device/MP3 Player (Claims 57, 58, 60, 64) .............. 18
`
`Converting Data / Remotely Controlling the MP3 Player
`/ Video Device ........................................................................ 19
`
`4.
`
`Device Presence Signal ........................................................... 21
`
`5. Means Plus Function Claims 92, 94, and 97 ............................ 23
`
`C.
`
`Claim 44 Is Not Obvious Over JP ’954 in View of Lau and
`Bhogal (Ground 2) ............................................................................ 28
`
`
`
`i
`
`

`
`
`
`
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`Claims 1, 2, 4, 7, 8, 13, 14, and 23 Are Not Obvious Over JP
`‘954 in View of Sony XR-C5120 and Sony XA-C30 (Ground
`3) ...................................................................................................... 30
`
`
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Combination of JP ’954 with the Sony References
`Does Not Cure the Deficiencies in JP ’954 Concerning
`“Interface,” “Portable” Device, and “Device Presence
`Signal” .................................................................................... 31
`
`The Combination of JP ’954 with the Sony References
`Does Not Teach the “Auxiliary Input Source” or
`“Switching” ............................................................................ 33
`
`Petitioner’s Obviousness Arguments Concerning
`“Obvious to Process ‘Track and Time’ and ‘Title and
`Artist’ Information” Are Unsupported .................................... 34
`
`Petitioner’s Obviousness Arguments Impermissibly Rely
`on Prior Art Systems ............................................................... 35
`
`Petitioner’s Arguments Regarding the Combination of JP ’954
`and Known Bus Technology are Unfounded (Ground 4) .................. 36
`
`Claims 6 and 10 Are Not Obvious Over JP ‘954 in view of
`Sony XR-C5120, Sony XA-C30 and Lau (Ground 5) ....................... 38
`
`Claims 61, 62, and 63 Are Not Obvious Over JP ‘954 in View
`of Lau and Sony XR-C5120 (Ground 6) ........................................... 39
`
`Claims 57 and 86 Are Not Obvious in View of Bhogal (Ground
`7) ...................................................................................................... 40
`
`IV. CONCLUSION .......................................................................................... 41
`
`ii
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`
`
`Federal Cases
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355, Paper 9 (PTAB June 26, 2015) .............................................. 11
`
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387, Paper 43 (PTAB Dec. 24, 2014) ............................................ 12
`
`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................... 12, 25, 27
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966)................................................................................... 4, 11, 12
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .......................................................................... 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................... 11, 12, 23, 38, 40, 41
`
`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939, Paper 8 (PTAB, Dec. 17, 2014) ............................................. 12
`
`Space Exploration Techs. Corp. v. Blue Origin LLC,
`IPR2014-01378, Paper 6 (PTAB Mar. 3, 2015) ........................................... 5, 24
`
`Unified Patents Inc. v. C-Cation Techs., LLC,
`IPR2015-01045, Paper 15 (PTAB Oct. 7, 2015) ............................................... 5
`
`Whole Space Indus. v. Zipshade Indus.,
`IPR2015-00488, Paper 14 (PTAB July 24, 2015)....................................... 12, 13
`
`
`
`iii
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`Federal Statutes
`
`35 U.S.C.
`§ 102 .............................................................................................................. 1, 5
`§ 103 ........................................................................................................ 1, 5, 11
`§ 112 .............................................................................................................. 5, 6
`§ 311(b) ................................................................................................... 1, 5, 35
`§ 314(a) ............................................................................................................. 4
`
`Other Authorities
`
`37 C.F.R. § 42.6(a)(3) ........................................................................... 4, 12, 25, 27
`
`37 C.F.R. § 42.12(a)(7) ....................................................................................... 2, 6
`
`37 C.F.R. § 42.104(b) ......................................................................................... 3, 5
`
`
`
`iv
`
`
`
`
`
`

`
`I.
`
`INTRODUCTION
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`On December 30, 2015, Toyota Motor Corporation (“Petitioner”) submitted
`
`a Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent
`
`No. 7,489,786 (Ex. 1101, “the ’786 Patent”), challenging claims 1, 2, 4-8, 10, 13,
`
`14, 23, 24, 44, 47, 57, 58, 60-65, 86, 88-92, 94, 97, and 98 (“the Challenged
`
`Claims”).1 Petitioner on the same day also filed a second petition alleging
`
`unpatentability of the ’786 Patent over allegedly non-redundant grounds (IPR2016-
`
`00422).
`
`The Petition should be denied for myriad reasons. First, the Petition was
`
`filed for an improper purpose because it requests that a claim term, “first pre-
`
`programmed means for generating a device presence signal,” be found indefinite
`
`even though such a finding is beyond the PTAB’s authority and would compel the
`
`denial of several Grounds in the Petition. The purpose of an inter partes review is
`
`to challenge the validity of a patent under section 102 or 103, see 35 U.S.C. §
`
`311(b), and Petitioner must have a good-faith basis to make such a challenge. Any
`
`
`1 Patent Owner notes that Petitioner filed a “Corrected Petition,” Paper No. 3 on
`
`December 30, 2015. Patent Owner’s Preliminary Response is filed in response to
`
`Paper No. 3 and all of Patent Owner’s citations to “Pet.” refer to the Corrected
`
`Petition, Paper No. 3.
`
`
`
`1
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`Ground that ostensibly seeks invalidity based on prior art of a claim that Petitioner
`
`
`
`
`
`
`
`contends cannot be construed is frivolous on its face and should be denied as
`
`improper and unnecessarily increasing the cost of the proceedings. See 37 C.F.R.
`
`§ 42.12(a)(7).
`
`Second, the Petition should be denied because there is not a reasonable
`
`likelihood that Petitioner will succeed on any of its seven grounds of
`
`unpatentability, all of which rely on JP H7-6954 (“JP ’954”) as a primary reference
`
`for obviousness. JP ’954 discloses a different type of system from those of the
`
`claims, which is a system that is very similar to those disclosed by the inventor of
`
`the ’786 Patent to the Patent Office during prosecution. The JP ’954 discloses an
`
`interface that “renders possible the addition of a CD changer made by company B
`
`to a main unit made by company A.” Ex. 1107 at Abstract. This type of CD-
`
`changer adapter system was known in the art, and many such systems were
`
`previously developed by the inventor of the ’786 Patent, Mr. Ira Marlowe, sold by
`
`his company, Blitzsafe, in the mid-1990’s, and disclosed to the Patent Office.
`
`On the other hand, the claims of the ’786 Patent generally require a car
`
`stereo connected to an interface by a first connector, and an “external” or
`
`“portable” device connected to the interface by a second connector. The JP ’954
`
`does not teach or disclose the claimed interface––it lacks the ability to both
`
`remotely control an after-market device, such as a portable MP3 player, and to
`2
`
`
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`receive data from the portable device for display on the car stereo. For these
`
`
`
`
`
`
`
`limitations, Petitioner points to several other references, such as Lau, Bhogal, and
`
`several Sony CD changer products. However, none of these references teach even
`
`the same basic arrangement of the claims where a car stereo connected to an
`
`interface by a first connector, and an “external” or “portable” device connected to
`
`the interface by a second connector. Petitioner provides no evidence as to how
`
`these disparate systems would have worked together, or how to piece the claims
`
`back together from the prior art without hindsight. Thus, as described in further
`
`detail below, Petitioner has failed to demonstrate how the alleged prior art teaches
`
`or discloses the claimed system.
`
`In addition to these fundamental deficiencies, Petitioner’s request for inter
`
`partes review should be denied for at least the following reasons addressed more
`
`fully below in this Preliminary Response:
`
`(1) The Petition fails to properly construe several claim terms.
`
`(2) The Petition does not “specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon,” as required by 37
`
`C.F.R. § 42.104(b)(4), because each Ground has at least one of the following
`
`deficiencies: (i) failing to map each claim term to a specific teaching from an
`
`asserted reference; (ii) providing citations to the asserted references that do not
`
`teach the claim elements against which such citations are applied; and (iii)
`3
`
`
`
`

`
`
`
`
`
`mischaracterizing the citations to the asserted references.
`
`
`
`
`
`
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`(3) The Petition fails to identify the difference(s) between the claims and the
`
`asserted references as required by Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`(4) The Petition improperly attempts to support its assertions of obviousness
`
`with mere conclusory statements and by impermissibly incorporating by reference
`
`arguments from the Matheson Declaration (Ex. 1115) in violation of 37 C.F.R. §
`
`42.6(a)(3).
`
`Due to at least these deficiencies, the Petition does not establish “a
`
`reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the petition.” 35 U.S.C. § 314(a). Patent Owner
`
`explicitly reserves the right to provide further distinctions between the prior art and
`
`the challenged claims. The deficiencies of the Petition noted herein, however, are
`
`sufficient for the Board to find that Petitioner has not met its burden to
`
`demonstrate a reasonable likelihood that it would prevail in showing
`
`unpatentability of any of the challenged claims.
`
`
`
`4
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`II. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION, CLAIMS, AND THE LAW
`
`
`
`
`
`
`
`A. The Board Should Deny Institution in the Interest of Justice
`Because Petitioner’s Claim Construction Arguments Are an
`Abuse of Process
`
`35 U.S.C. § 311(b) and 37 C.F.R. § 42.104(b)(2) both make clear that
`
`petitions for inter partes review may only advance grounds of invalidity based on
`
`35 U.S.C. §§ 102 and 103. Space Exploration Techs. Corp. v. Blue Origin LLC,
`
`IPR2014-01378, Decision Denying Institution of Inter Partes Review, Paper 6 at
`
`8-9 (Mar. 3, 2015). The PTAB cannot institute an inter partes review proceeding
`
`on grounds of invalidity under 35 U.S.C § 112 or where the challenged claims
`
`cannot be construed because they are indefinite. Id. at 9. Nevertheless, Petitioner
`
`argues for the denial of its own petition by contending that the term, “means for
`
`generating a device presence signal,” found in claim 92, is indefinite. Pet. at 15-
`
`16. This argument amounts to an admission that the Grounds that seek invalidity
`
`of claim 92 and its dependents based on 35 U.S.C. § 103(a), Grounds 1 and 4, are
`
`frivolous. Accordingly, as Petitioner has submitted a petition including grounds
`
`that it contends should be denied, the Petition is improper and unnecessarily
`
`increases the cost of the proceeding, and should be denied in its entirety. See
`
`Unified Patents Inc. v. C-Cation Techs., LLC, IPR2015-01045, Decision Denying
`
`Institution of Inter Partes Review, Paper 15 at 3 (PTAB Oct. 7, 2015) (inter partes
`
`
`
`5
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`review institution may be decided at the Board’s discretion); 37 C.F.R. §
`
`
`
`
`
`
`
`42.12(a)(7).
`
`B.
`
`The Term “Means for Generating a Device Presence Signal” Is
`Not Indefinite
`
`Setting aside the issue as to whether or not the term itself even invokes 35
`
`U.S.C. §112 ¶ 6, Petitioner concludes that the “means for generating a device
`
`presence signal” is indefinite because a microcontroller executing an algorithm is
`
`needed to generate a device presence signal, and no algorithm is disclosed.
`
`However, Petitioner’s expert concludes that a microcontroller generates the device
`
`presence signal without any evidentiary support either from the intrinsic record or
`
`the electrical or computer arts. The expert’s reasoning seems to be limited to the
`
`presumption that the “ports J2A1, X2, RCH, and LCH” identified in the
`
`specification and the Markman ruling of the N.J. District Court are incapable of
`
`generating a signal, but this presumption is inaccurate. A port is not simply a
`
`connector that conveys a signal—it may contain hardware and/or software that
`
`generates a signal. Thus, the expert’s conclusion that the disclosed ports cannot
`
`generate a device presence signal is incorrect.
`
`In any event, Petitioner’s contention that this claim term is indefinite,
`
`however wrong it may be, compels the Board to deny the Grounds covering the
`
`claims containing the allegedly indefinite term because Petitioner’s arguments are
`
`
`
`6
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`based on a claim construction that Petitioner itself contends is incorrect and should
`
`
`
`
`
`
`
`be disregarded by the Board. Petitioner should not be permitted to advance
`
`grounds for invalidity that it concedes in this very Petition are meritless.
`
`Accordingly, Grounds 1 and 4 should be denied.
`
`C.
`
`Petitioner’s Proposed Construction of “Interface” Is Internally
`Inconsistent and Should Not Be Applied in This Proceeding
`
`The construction of the term “interface” advocated by Petitioner, “a
`
`microcontroller that is a functionally and structurally separate component from the
`
`car stereo, which integrates an after-market device with a car stereo,” is internally
`
`inconsistent and should be rejected by the Board.
`
`Petitioner adopts its construction for “interface” from the New Jersey
`
`District Court’s Markman order. The construction was adopted to resolve a
`
`specific dispute between the parties that the Court characterized as follows:
`
`The main dispute between the parties as to this term is whether the
`
`interface can be part of the OEM or after-market stereo system, or
`
`whether it is separate.
`
`Ex. 1112 at 5. Focused on the relationship between the car stereo and the
`
`interface, the New Jersey District Court found that the patentee’s amendment of
`
`the claims to include three connectors dictated that the interface and car stereo be
`
`“functionally and structurally separate.” Id. at 7. The New Jersey District Court
`
`said, the “first, second, and third electrical connectors between the interface, car
`
`
`
`7
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`stereo and after-market device indicates to one of ordinary skill in the art in this
`
`
`
`
`
`
`
`field of technology the physical and structural separation between the interface
`
`and car stereo.” Id. at 13 (emphasis in original).
`
`Patent Owner disagrees that the “functionally and structurally separate”
`
`limitation is appropriate, but if it were to be applied to the claims, the New Jersey
`
`District Court’s construction is incomplete. The construction must also require
`
`that the interface be functionally and structurally separate from the after-market
`
`audio device.2 This is so because if the “first connector” requires that the interface
`
`be “functionally and structurally separate” from the car stereo, then the “second
`
`connector,” must, for the sake of consistency, require that the interface is
`
`“functionally and structurally separate” from the after-market audio device. The
`
`inclusion of the second connector is consistent with the claims. For example,
`
`claim 1 requires:
`
`a first connector electrically connectable to a car stereo;
`
`a second connector electrically connectable to an aftermarket audio
`
`device external to the car stereo; . . .
`
`an interface connected between said first and second electrical
`
`connectors for channeling audio signals to the car stereo from the
`
`after-market audio device
`
`2 The second connector was not addressed by the parties in the New Jersey case
`
`because it was likely irrelevant to any dispositive issue.
`
`
`
`8
`
`

`
`
`
`Ex. 1101 at claim 1 (emphasis added).
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`As described in further detail below, Petitioner’s arguments fail when the
`
`claims are construed to require an interface functionally and structurally separate
`
`from both the car stereo and after-market audio device. Petitioner’s arguments
`
`also fail if the Board decides not to construe this term, because Petitioner sets forth
`
`no argument regarding anticipation or obviousness based on the plain meaning of
`
`the term. Thus, as set forth in further detail below, the Petition should be denied
`
`on all grounds.
`
`D.
`
`Petitioner’s Proposed Construction of “Portable” Improperly
`Reads Out the Limitation Itself
`
`
`
`Petitioner’s construction of “portable” as a device that is “capable of being
`
`moved about” improperly broadens the plain meaning of the term to include
`
`anything which can be moved, no matter how large or unwieldy. This construction
`
`is at odds with the term’s plain meaning and should be rejected.
`
`One of ordinary skill in the art could readily understand the plain meaning of
`
`the term “portable,” and further construction is not necessary. The claims
`
`themselves impart sufficient meaning because they refer to a “portable device” and
`
`a “portable MP3 player,” and do not use the term “portable” in isolation. For
`
`example, one of ordinary skill in the art would readily understand that a laptop
`
`computer is a “portable device,” whereas a desktop computer is not. Under
`
`
`
`9
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`Petitioner’s proposed construction, a desktop computer would be transformed into
`
`
`
`
`
`
`
`a portable device because it is clearly “capable of being moved about.”
`
`More importantly, in the automotive arena, there are many components of a
`
`vehicle that one of ordinary skill in the art understands are not “portable devices,”
`
`but which would be transformed into “portable devices” under Petitioner’s
`
`construction. For example, a steering wheel, a tire, and even a car door would be a
`
`portable device depending on the physical strength of the user. Even the car itself
`
`is a “machine that is capable of being moved about,” which results in an absurd
`
`reading of the claim. Thus, because Petitioner’s construction reads out the word
`
`“portable” by rendering literally any object portable, Petitioner’s construction is
`
`incorrect. The Board should apply the plain meaning of the term “portable
`
`device.”
`
`As described in further detail below, because Petitioner has not identified a
`
`properly construed “portable” device or MP3 player in the prior art references of
`
`record, the Petition is deficient and Petitioner has not shown that there is a
`
`reasonable likelihood that it would prevail with respect to at least one of the claims
`
`challenged in the petition that recite a portable device. Thus, the Petition should be
`
`denied as to all grounds with regard to claims 44, 47, 57, 58, 60-65, 92, 94, 97, and
`
`98.
`
`
`
`
`
`10
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`III. PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-7 AND
`THE PETITION SHOULD BE DENIED.
`
`
`
`
`
`
`
`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103.
`
`
`
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art, (2) any
`
`differences between the claimed subject matter and the prior art, (3) the level of
`
`skill in the art, and (4) where in evidence, so called secondary considerations.
`
`Graham, 383 U.S at 17-18. The Board has held that a failure to identify the
`
`differences between the claimed subject matter and the prior art is fatal to an
`
`obviousness challenge. See Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
`
`00355, Decision Denying Institution of Inter Partes Review, Paper 9 at 9-10
`
`(PTAB June 26, 2015) (denying institution for failure to identify the differences
`
`between the claimed subject matter and the prior art).
`
`Furthermore, in proposing that a person of ordinary skill in the art at the time
`
`of the invention would have combined the references in a particular way to meet
`
`the claimed invention, an obviousness analysis must support the proposed
`
`combination with “some articulated reasoning with some rational underpinning.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
`
`F.3d 977, 988 (Fed. Cir. 2006)). A proposed combination cannot be supported
`
`based on “mere conclusory statements.” In re Kahn, 441 F.3d at 988. In a petition
`
`
`
`11
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`seeking institution of an inter partes review, “articulated reasons with rational
`
`
`
`
`
`
`
`underpinnings” must be found in the petition itself. Whole Space Indus. v.
`
`Zipshade Indus., IPR2015-00488, Decision Denying Institution of Inter Partes
`
`Review, Paper 14 at 15 (PTAB July 24, 2015) (“[C]onclusory labels do not
`
`substitute for a fact-based analysis in the Petition establishing what is being
`
`modified, and why it would have been obvious to a person of ordinary skill to
`
`make the modification”). The arguments needed to support a conclusion of
`
`obviousness may not be incorporated by reference to another document. 37 C.F.R.
`
`§42.6(a)(3) (“Arguments must not be incorporated by reference from one
`
`document into another document.”); Cisco Sys., Inc., v. C-Cation Techs., LLC,
`
`IPR2014-00454, Decision Denying Institution of Inter Partes Review, Paper 12 at
`
`10 (PTAB Aug. 29, 2014); see also Plant Science, Inc. v. The Andersons, Inc.,
`
`IPR2014-00939, Decision Denying Institution of Inter Partes Review, Paper 8 at
`
`15 (PTAB Dec. 17, 2014).
`
`As set forth below, this Petition is deficient because it fails to meet the
`
`fundamental requirements for demonstrating invalidity. First, the Petition does not
`
`explain how the combinations of references teach each element of each claim. See
`
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at 30-
`
`31 (PTAB, Dec. 24, 2014). Second, the Petition fails to satisfy the tests of KSR
`
`and Graham, the Petition does not identify the differences between the claims and
`12
`
`
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`the asserted references, the Petition neglects to provide a fact-based rationale for
`
`
`
`
`
`
`
`combining the references, and the Petition does not explain the specific ways the
`
`references are to be combined. Whole Space Indus., IPR2015-00488, Paper 14 at 9
`
`(“[R]egarding the grounds based on obviousness, the Petition does not articulate
`
`specific modifications of the references that support its asserted obviousness
`
`grounds, nor does it provide a persuasive rationale for the proposed combinations
`
`of references.”).
`
`B. Claims 57, 58, 60, 64, 86, 88, 90, 91, 92, 94 and 97 are Not Obvious
`Over JP ‘954 in view of Lau (Ground 1)
`
`JP ’954 describes a very primitive system. Unlike the ’786 Patent, the JP
`
`’954 disclosure is sparse and does not disclose any algorithms for converting
`
`control commands from a car stereo to a format compatible with an MP3 player or
`
`other “alien” devices.
`
`As a threshold matter, JP ’954 only discusses a CD-changer which, in the
`
`context of the disclosure, would have been understood to be a standard car-
`
`mounted CD-changer. JP ’954 does not teach or suggest the integration of an MP3
`
`player or other portable or external device that is not specifically designed for use
`
`in a car, and one of ordinary skill in the art would not have been able to apply the
`
`teachings of the JP ’954 to portable media devices such as MP3 players. JP ’954
`
`also fails to disclose any algorithm for converting control commands from a car
`
`
`
`13
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`stereo into a format compatible with any device, including the CD changer
`
`
`
`
`
`
`
`disclosed in JP ’954, as required by at least claims 57 and 92. The reference’s
`
`most specific disclosure of format conversion is contained in paragraph 9, which
`
`states:
`
`Fig. 3 shows the original waveform of the line between the
`
`microcomputer 4a and the CD changer 2, wherein data IN line 2a is
`
`the line that transmits the operational status of the other company’s
`
`CD changer 2, i.e. data such as PLAY, FWD, BWD, etc., after which
`
`sent data is processed by the microcomputer 4a. Processing such as
`
`conversion of 14-bit data to 16-bit data and alteration of data arrays is
`
`performed. The clock line 2b serves to synchronize data read from
`
`the aforesaid data IN line 2a, and the chip enable line 2c is the data
`
`indicating a separator in the data on operational status, each of which
`
`has a timing waveform of the kind shown in the drawing.
`
`Ex. 1107 at ¶ 9. This disclosure is limited to format conversion of the “operational
`
`status” of the CD-changer player into a format compatible with the car stereo. It
`
`does not teach format conversion for commands issued by the car stereo into a
`
`format compatible with an external device, nor does the remainder of JP ’954.
`
`Similarly, JP ’954 lacks any disclosure of converting data from the CD-changer
`
`into a format compatible with the car stereo for display of that data. As such, JP
`
`’954 does not disclose any type of format conversion found in the claims.
`
`
`
`
`
`Without acknowledging these deficiencies, Petitioner attempts to combine
`
`14
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`JP ’954 with Lau, but the system disclosed by Lau has little in common with either
`
`
`
`
`
`
`
`the claims of the ’786 Patent or the JP ’954. Lau discloses a system with only two
`
`components, a “music server” and a “head unit,” where the music server is
`
`designed to work “in communication with head unit” so as to emulate “a disc
`
`changer.” Ex. 1103 at 7. The challenged claims of the ’786 Patent require three
`
`components: a car stereo, an interface, and a portable device/MP3 player. This
`
`difference is not trivial; because the interface of Lau is part of the music server
`
`itself, the system lacks the capability to translate control commands required by the
`
`claims (the control commands arrive at the music server in a format compatible
`
`with the music server and, therefore, do not need to be translated), and the system
`
`of Lau would not be interoperable with the portable devices of the claims.
`
`Furthermore, the claimed “device presence signal” simply has no application to
`
`Lau’s system where the music server is inseparable from the interface and is thus
`
`always present.
`
`
`
`For all of these reasons, and as set forth in more detail below, Petitioner has
`
`not demonstrated that there is a reasonable likelihood that it will prevail on Ground
`
`1, and Ground 1 should be denied.
`
`1.
`
`Interface and Connectors
`
`Petitioner points only to JP ’954 as explicitly disclosing the interface and
`
`connectors. With regard to Lau, Petitioner states only that “Lau’s portable MP3
`15
`
`
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`player is connectible in the same manner.” Pet. at 22. However, this conclusory
`
`
`
`
`
`
`
`statement does not make sense because Lau does not disclose the “interface” and
`
`“second connector” of the claims.3 Rather, Lau discloses a single device, called a
`
`“music server,” that Petitioner improperly attempts to dissect into multiple
`
`components to meet the claims.
`
`As described above in the Claim Construction section, Petitioner’s claim
`
`construction of the term “interface” is inconsistent because, while it requires that
`
`the interface and car stereo be “functionally and structurally separate” due to the
`
`existence of the first connector, it does not require that the interface and after-
`
`market audio device be “structurally and functionally separate” due to the
`
`existence of the second connector. Under Petitioner’s premise that the term
`
`“interface” should take on a meaning different from its plain meaning, Petitioner
`
`should not be permitted to apply a claim construction that does not treat the
`
`claimed “connectors” consistently. If Petitioner’s position is that the interface and
`
`car stereo must be structurally and functionally separate because of the inclusion of
`
`the first connector, then the interface and after-market audio device must also be
`
`
`3 Although claim 44 does not include the “first connector” and “second connector”
`
`terms, it includes the same “interface” term, which was addressed above. Those
`
`same arguments should apply to claim 44 for consistency.
`
`
`
`16
`
`

`
`IPR2016-00421
`
`PATENT NO. 7,489,786
`
`
`
`
`structurally and functionally separate because of the inclusion of the second
`
`
`
`
`
`
`
`connector. Thus, for any prior art reference to read on these claims under this
`
`construction, it must disclose an interface linked by connectors to both a car stereo
`
`and an after-market audio device.
`
`The Lau reference does not disclose an interface and after-market audio
`
`device linked by a connecto