UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`
`
`
`Case IPR2016-00421
`Patent 7,489,786
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`
`
`
`Case IPR2016-00421
`Patent 7,489,786
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION
`
`
`
`Petitioner Toyota Motor Corporation submits this Reply to Patent Owner’s
`
`Response to Petitioner and requests that the Board issue a Final Written Decision
`
`finding claims 44 and 47 unpatentable.
`
`In the Institution Decision, the Board instituted trial as to claims 44 and 47
`
`of the ‘786 Patent on the obviousness ground based on the combination of JP ‘954
`
`in view of Lau and Bhogal. Institution Decision (Paper No. 13) at 35-43. In its
`
`Response, Patent Owner challenges the Board’s Institution Decision solely on the
`
`basis that the Board allegedly failed to consider whether “portable” devices are
`
`“external.” Response (Paper No. 20) at 1. However, “external” appears nowhere
`
`in claims 44 and 47, as the claims merely require that a “portable device” is
`
`integrated with the car stereo. While Patent Owner does not challenge the Board’s
`
`construction of “portable,” it nevertheless proceeds to attack the references
`
`individually by arguing that they fail to disclose an “external” device. Because
`
`Patent Owner’s argument is based on an improper interpretation of the claim
`
`language, and fails to account for the collective teaching of the prior art and the
`
`understanding of one of skill in the art, it should be rejected.
`
`The Board did not construe “external” in its Institution Decision, or indicate
`
`that any other meaning should apply. Decision at 10-17 (construing only
`
`“portable,” “interface,” and “device presence signal” terms). In the Institution
`
`Decision, the Board credited the showing of Petitioner and Dr. Matheson in
`
`
`
`1
`
`
`
`explaining how the combination of the prior art rendered the limitations of claims
`
`44 and 47 obvious, including the aspect of an apparatus for docking a portable
`
`device (such as an MP3 player) for use with a car stereo. Petition at 37-42; Ex.
`
`1115 at ¶¶ 118-125. This showing included how the combination of JP ‘954 and
`
`Lau provided a system allowing interfacing an MP3 player with a car stereo (by
`
`emulating a CD changer) and that Bhogal also provided the teaching of a docking
`
`station for use with a portable MP3 player. Petition at 3-40; Ex. 1115 at ¶ 123.
`
`In its Institution Decision, the Board likewise found that the combined
`
`system of JP ‘954 and Lau resulted in a “portable MP3 player [] substituted in for
`
`[Lau’s] CD Changer” and that “Bhogal describes it emulator unit as a portable
`
`device.” Institution Decision at 39. Further, the Board found:
`
`Thus, the portable MP3 player in JP ’954 would benefit from the
`convenience and ease of use provided by being removably placed in a
`docking station the same way Bhogal’s emulator 206 would benefit
`from the convenience and ease of use provided by being removably
`placed in a docking station.
`Id.
`
`With respect to the “portable aspect of an MP3 player,” the Board correctly
`
`credited the testimony of Petitioner’s expert Dr. Matheson, who explained that
`
`“portable MP3 Players were commonly available in the market.” Id. at 39-40
`
`(citing Ex. 1115 at ¶ 86).
`
`
`
`2
`
`
`
`Patent Owner argues that “CD-changers [of JP’954] are not ‘external’ or
`
`‘portable’ devices within the scope of the claims.” This misses the point. See In re
`
`Keller, 642 F.2d 413, 426 (CCPA 1981) (“One cannot show non-obviousness by
`
`attacking references individually where, as here, the rejections are based on
`
`combinations of references.”) (citation omitted). Rather, it is the teaching of Lau
`
`that provides the “portable MP3 player,” and it is the further teaching of Bhogal
`
`that provides a docking station for the portable MP3 player. Decision at 39. Patent
`
`Owner fails to explain how a “portable MP3 player,” as taught by the combination
`
`of JP ‘954, Lau, and Bhogal, and as confirmed by the testimony of one skilled in
`
`the art, would not satisfy the “portable” limitation of claim 44, or how the portable
`
`MP3 player taught by the combination would not be an “external” device (even
`
`assuming such a limitation is required).
`
`Patent also repeats arguments it offered in its Preliminary Response, which
`
`are equally unavailing here. Patent Owner argues that “[t]he disclosure of JP ’954
`
`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 required by the claims (i.e., ‘external’ devices).” Response at 2.
`
`However, the Board previously rejected Patent Owner’s criticism of JP ‘954 as
`
`being limited to CD-changer technology, noting that “on this record, the evidence
`
`does not establish that technology relating to control of CD changers is very much
`
`
`
`3
`
`
`
`different from that relating to control of portable MP3 digital audio devices.”
`
`Decision at 42. The Board then invited Patent Owner to “explore such issues by
`
`submitting evidence in that regard.” Id. Patent Owner declined the Board’s
`
`invitation, instead relying again on unsupported attorney arguments previously
`
`found unpersuasive. Accordingly, these arguments should be given no weight.
`
`See Euro-Pro Operating, LLC, v. Acorne Enterprises, LLC, IPR2014-00351, 2015
`
`WL 4240982, at *9 (PTAB July 9, 2015) (“It is well settled by the Federal Circuit
`
`that argument of counsel cannot take the place of evidence lacking in the record.”)
`
`(citing In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736
`
`F.2d 699, 705 (Fed. Cir. 1984)).
`
`As to dependent claim 47, Patent Owner presents no separate argument for
`
`patentability of this claim. Petitioner submits that it should thus be held
`
`unpatentable for the same reasons as claim 44.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner requests that the Board issue a Final
`
`Decision finding claims 44 and 47 unpatentable.
`
`Respectfully submitted,
`
` /
`
` William H. Mandir/
`__________________________
`William H. Mandir
`Registration No. 32,156
`wmandir@sughrue.com
`Counsel for Petitioner
`
`4
`
`
`
`Date: December 29, 2016
`
`
`
`
`
`
`
`
`
`
`
`LEAD COUNSEL
`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
`BACKUP COUNSEL
`Yoshinari Kishimoto
`Registration No. 47,327
`ykishimoto@sughrue.com
`
`
`BACK-UP COUNSEL
`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)
`
`
`
`5
`
`
`
`
`
`
`
`CERTIFICATION UNDER 37 CFR § 42.24(d)
`
`Under the provisions of 37 CFR §42.24(d), the undersigned hereby certifies
`
`that the word count for the foregoing Petitioner Reply to Patent Owner Response
`
`totals 908, which is less than the 5,600 allowed under 37 CFR §42.24(c)(2). The
`
`word count was prepared using Microsoft Word 2016.
`
`Respectfully submitted,
`
`Dated: December 29, 2016
`
`/s/ Brian K. Shelton
`
`Brian K. Shelton
`
`Registration No. 50,245
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the attached Petitioner’s Reply in
`
`Case IPR2016-00421 and this Certificate of Service are being served on December
`
`29, 2016 by electronic mail upon the following:
`
`
`
`Respectfully submitted,
`
`/s/ Brian K. Shelton
`Brian K. Shelton
`Registration No. 50,245
`
`
`
`
`Peter Lambrianakos
`Alfred Fabricant
`Vincent J. Rubino, III
`Shahar Harel
`
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
`sharel@brownrudnick.com
`
`Date: December 29, 2016
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
