IPR2016-00421
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`PATENT NO. 7,489,786
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
`Petitioner
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
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`
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`Patent No. 7,489,786
`Issue Date: Feb. 10, 2009
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
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`Case No. IPR2016-00421
`________________________________________________________________
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`PATENT NO. 7,489,786
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
`Petitioner
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
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`
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`Patent No. 7,489,786
`Issue Date: Feb. 10, 2009
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
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`Case No. IPR2016-00421
`________________________________________________________________
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`I.
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`INTRODUCTION
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`IPR2016-00421
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`PATENT NO. 7,489,786
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`Patent Owner Blitzsafe Texas, LLC (“Patent Owner”) submits the following
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`response under 37 CFR § 42.120 to the Petition filed by Toyota Motor Corporation
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`(“Petitioner”) requesting inter partes review of certain claims of U.S. Patent No.
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`7,489,786 (“the ’786 Patent”). This filing is timely pursuant to the Board’s
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`Scheduling Order and the parties’ stipulation extending the deadline to September
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`30, 2016. (See Paper No. 14, Scheduling order, and Paper No. 17, Stipulation to
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`Adjust Schedule.).
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`II. ARGUMENT
`Patent Owner respectfully submits that claims 44 and 47 are not obvious
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`over combinations based on the JP H7-6954 (“JP ’954”) reference, Lau, and
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`Bhogal. Patent Owner respectfully requests that the Board confirm the
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`patentability of claims 44 and 47 of the ’786 Patent.
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` In instituting this proceeding, the Board did not consider whether “portable”
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`devices are “external.” As Petitioner points out, some of the terms at issue in this
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`proceeding have been construed in other proceedings. Pet. at 12-15. For example,
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`the term “external” was construed as “an after-market device that is outside and
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`alien to the environment of an OEM or after-market stereo system.” See, e.g., Ex.
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`1112 at 24. Portable devices are a subset of these after-market external devices.
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`See, e.g., Ex. 1101 at 2:50-52 (“A docking port is provided for allowing portable
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`IPR2016-00421
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`PATENT NO. 7,489,786
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`external audio devices to be connected to the interface of the present invention.”)
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`However, the Board only considered whether a portable device was “capable of
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`being carried by a user.” Paper No. 13 at 12.
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`In light of the “external” nature of portable devices, JP ’954 cannot be
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`combined with Lau and Bhogal to arrive at claims 44 and 47 without
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`impermissible hindsight. The disclosure of JP ’954 is sparse and does not disclose
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`any algorithms for converting control commands from a car stereo to a format
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`compatible with an MP3 player or other “alien” devices, as required by the claims
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`(i.e., “external” devices). JP ’954 only discusses a CD-changer which, in the
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`context of the disclosure, would have been understood to be a standard car-
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`mounted CD-changer. These CD-changers are not “external” or “portable devices”
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`within the scope of the claims, and thus, JP ’954 gives no insight with regard to the
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`type of command conversion and data conversion necessary to integrate an
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`external device.
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`Similarly, Lau does not teach or disclose “external” or “portable devices.”
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`Rather, Lau discloses a system with only two components, a “music server” and a
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`“head unit.” The music server is one structural, functional, and physical
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`component and thus cannot be both the “interface” and the “external device”
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`required by the claims. Ex. 1103 at 7. Accordingly, Lau gives no insight with
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`regard to the type of command conversion and data conversion necessary to
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`integrate an external device.
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`IPR2016-00421
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`PATENT NO. 7,489,786
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`Finally, Bhogal does not remedy these deficiencies and the Petition does not
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`explain how or why one of ordinary skill in the art would combine the JP ’954
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`system with three components (car, interface, and non-external CD changer) with
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`the Lau system that includes only two components (car and “music server”) to
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`arrive at claims 44 and 47.
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`III. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`confirm the validity of claims 44 and 47 of the ’786 Patent over the grounds raised
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`in Toyota’s Petition, including those for which review was instituted.
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`Dated September 30, 2016
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`Respectfully submitted,
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`/Peter Lambrianakos/
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`Alfred R. Fabricant
`Admitted Pro Hac Vice
`Backup Counsel for Patent Owner
`Brown Rudnick LLP
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`IPR2016-00421
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`PATENT NO. 7,489,786
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`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: afabricant@brownrudnick.com
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`Vincent J. Rubino, III (Reg. No. 68,504)
`Backup Counsel for Patent Owner
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
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`Shahar Harel (Reg. No. 73,203)
`Backup Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: sharel@brownrudnick.com
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`IPR2016-00421
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`PATENT NO. 7,489,786
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`CERTIFICATE OF WORD COUNT
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`The undersigned hereby certifies that the portions of the above-captioned
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`PATENT OWNER'S RESPONSE specified in 37 C.F.R. § 42.24 has 555 words in
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`compliance with the 14,000 word limit set forth in 37 C.F.R. § 42.24. This word
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`count was prepared using Microsoft Word 2010.
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`Respectfully Submitted,
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` /Peter Lambrianakos/
`By:
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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`September 30, 2016
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`IPR2016-00421
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`PATENT NO. 7,489,786
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(b)
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`A copy of PATENT OWNER’S RESPONSE has been served on Petitioner
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`at the correspondence of the Petitioner as follows:
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`
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`William H. Mandir
`Registration No. 32,156
`wmandir@sughrue.com
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, D.C. 20037
`T: 202-293-7060
` F: 202-293-7068
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`September 30, 2016
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`John F. Rabena
`Registration No. 38,584
`jrabena@sughrue.com
`Brian K. Shelton
`Registration No. 50,245
`bshelton@sughrue.com
`Fadi N. Kiblawi
`Registration No. 61,973
`fkiblawi@sughrue.com
`Margaret M. Welsh
`Registration No. 70,754
`mwelsh@sughrue.com
`Yoshinari Kishimoto
`Registration No. 47,327
`ykishimoto@sughrue.com
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` /Peter Lambrianakos/
`By:
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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