UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION;
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`Petitioner
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`v.
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`BLITZSAFE TEXAS, LLC
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`Patent Owner
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`Patent No. 7,489,786
`Issued: Feb. 10, 2009
`Filed: Dec. 11, 2002
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`Inventor: Ira Marlowe
`Title: AUDIO DEVICE INTEGRATION SYSTEM
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`Inter Partes Review No.: Unassigned
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`PETITION FOR INTER PARTES REVIEW
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`

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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ............................. 1 
`A. 
`Real Party-in-Interest under 37 C.F.R. § 42(b)(1) ....................................... 1 
`B. 
`Related Matters under 37 C.F.R. § 42.8(b)(2) ............................................. 1 
`C. 
`Lead and Back-Up Counsel ......................................................................... 2 
`D. 
`Service Information ...................................................................................... 2 
`III.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ............................. 3 
`A.  Grounds for Standing under 37 C.F.R. § 42.104(a) ..................................... 3 
`B. 
`Prior Art ........................................................................................................ 3 
`C. 
`Identification of Challenge under 37 C.F.R. § 42.104(b) and Relief
`Requested ..................................................................................................... 4 
`IV.  SUMMARY OF THE ‘786 PATENT ................................................................ 5 
`A. 
`Brief Description of the ‘786 Patent ............................................................ 5 
`B. 
`Summary of the Prosecution History of the ‘786 Patent ............................. 7 
`C. 
`The Purported Novelty of the ‘786 Patent and the State of the Art ........... 10 
`V.  CLAIM CONSTRUCTION .............................................................................. 12 
`A.  Disputed Terms Construed in District Court ............................................. 13 
`B.  Means-Plus Function Terms ...................................................................... 16 
`VI.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘786 PATENT IS UNPATENTABLE ................................. 21 
`A.  Ground 1: Claims 44, 57, 58, 60, 63, 64, 86, 88, 90, and 91 are anticipated
`by Lau ......................................................................................................... 21 
`1.  Disclosure of Lau ....................................................................................... 21 
`2.  The disclosure of the “interface” and “connectors” ................................... 22 
`3.  Disclosure of a “portable” MP3 player ...................................................... 23 
`4.  Lau’s disclosure of the “device presence signal” ...................................... 24 
`5.  Disclosure of control format conversion .................................................... 25 
`6.  Disclosure of a “bus connection” ............................................................... 26 
`B. 
`Ground 2: Claims 92, 94 and 97 are rendered obvious by Lau ................ 38 
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
`1.  “means for generating a device presence signal” ...................................... 38 
`2.  “means for…transmitting the signal to the car stereo” .............................. 39 
`3.  “means for remotely controlling the portable audio device using the car
`stereo by receiving a control command from the car stereo…” ....................... 40 
`4.  “means for remotely controlling … by processing the control command
`into a formatted command compatible with the portable audio device” .......... 41 
`5.  “means for remotely controlling… by transmitting the formatted control
`command to the portable device” ...................................................................... 41 
`6.  “means for…transmitting the audio from the portable audio device to the
`car stereo” .......................................................................................................... 42 
`C. 
`Ground 3: Claims 1, 2, 4, 5, 6, 7, 8, 10, 13, 14, 23, 24, 61, and 62 are
`rendered obvious by Lau in view of Sony XR-C5120 and Sony XA-C30 44 
`1.  Disclosure of Sony XR-C5120 and Sony XA-C30.................................... 44 
`2.  Motivation to Combine .............................................................................. 45 
`D.  Ground 4: Claims 47, 65, 89, and 98 are rendered obvious by Lau in view
`known bus technology ................................................................................ 56 
`Ground 5 Claim 24 is rendered obvious over Lau, Sony XR-C5120, Sony
`XA-C30 and known bus technology .......................................................... 57 
`Ground 6: Claims 44, 57 and 92 are rendered obvious by Lau in view of
`Bhogal ........................................................................................................ 57 
`VII. THE GROUNDS ARE NOT CUMULATIVE ................................................. 59 
`VIII.  CONCLUSION .......................................................................................... 60 
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`E. 
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`F. 
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`Exhibit
`1001
`1002
`1003
`1004
`1005
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`1006
`1007
`1008
`1009
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`1010
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`1011
`1012
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`1013
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`1014
`1015
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`EXHIBITS
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`Description
`U.S. Patent No. 7,489,786 (“the ‘786 Patent”)
`File History of U.S. Patent No. 7,489,786
`International Publication No. WO 01/67266 A1 (“Lau)
`U.S. Patent Publication No. 2001/0028717 A1 (“Ohmura”)
`Sony XR-C5120 FM/AM Cassette Car Stereo Operating
`Instructions (“Sony XR-C5120 Manual”)
`Sony XA-C30 Service Manual (“Sony XA-C30 Manual”)
`U.S. Patent No. 6,175,789 (“Beckert”)
`U.S. Patent No. 6,629,197 (“Bhogal”)
`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).
`Sony XR-C5120R FM/AM Cassette Car Stereo Operating
`Instructions (“Sony XR-C5120R Manual”)
`NEC µPD75004 Data Sheet
`Merriam Webster, definition of “device” (www.merriam-
`webster.com/dictionary/device)
`Japanese Unexamined Patent Application No. H7-6954 to Ouchida
`(“JP ‘954”)
`Certified translation of Ex. 1013
`Declaration of Thomas G. Matheson, Ph.D.
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`
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`iii
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`

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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
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`Motor Corporation (“Petitioner”) respectfully requests Inter Partes Review of
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`claims 1, 2, 4-8, 10, 13, 14, 23, 24, 44, 47, 57, 58, 60-65, 86, 88-92, 94, 97, and 98
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`of U.S. Patent 7,489,786 (Ex. 1001, the “’786 Patent”), which is currently assigned
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`to Blitzsafe Texas LLC (“Blitzsafe”) according to the US Patent and Trademark
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`Office assignment records. There is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the claims challenged herein.
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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(b)(1)
`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)
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ’786 Patent is
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`presently asserted in the following patent infringement lawsuits by Blitzsafe, which
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`may affect, or be affected by, a decision in this proceeding: Blitzsafe Texas, LLC v.
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`Toyota Motor Corp. et al., 2:15-cv-01277 (E.D. Tex.); Blitzsafe Texas, LLC v.
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`Honda Motor Co., Ltd. et al., 2:15-cv-01274 (E.D. Tex.); Blitzsafe Texas, LLC v.
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`Hyundai Motor Co. et al., 2:15-cv-01276 (E.D. Tex); and Blitzsafe Texas, LLC v.
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`Volkswagen Group of Am., Inc. et al., 2:15-cv-01278 (E.D. Tex.).1 The ‘786
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`Patent was previously asserted in the following matters: Marlowe Patent Holdings
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`LLC v. DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ) and Marlowe Patent
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`Holdings LLC v. Ford Motor Co., 3:10-cv-07044 (D. NJ). Petitioner has
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`concurrently filed a separate petition against the ‘786 Patent on different grounds.
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`C. Lead and Back-Up Counsel
`Lead Counsel for Petitioner is William H. Mandir, Reg. No. 32, 156. Back-
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`Counsel for Petitioner are John F. Rabena, Reg. No. 38,584; Yoshinari Kishimoto,
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`Reg. No. 47,327; Brian K. Shelton, Reg. No. 50,245; Fadi N. Kiblawi, Reg. No.
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`61,973; and Margaret M. Welsh, Reg. No. 70,754. Pursuant to 37 C.F.R. §
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`42.10(b), a Power of Attorney accompanies this Petition.
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`Service Information
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`D.
`Service information (whether via hand delivery or electronically for lead and
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`back-up counsel is provided in the signature block below. Petitioner also consents
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`to electronic service.
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`                                                       
`1 All the Blitzsafe E.D. Texas actions identified here were filed on July 16, 2015.
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`2
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`

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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’786 Patent is available for Inter Partes Review
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`and that Petitioner is not barred or estopped from requesting an Inter Partes
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`Review challenging the patent claims on the grounds identified in this Petition.
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`Prior Art
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`B.
`The claims of the ‘786 Patent have an effective date no earlier than
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`December 11, 2002, which is the filing date of the application for the ‘786 Patent.
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`Petitioner relies upon the following patents and publications, all of which are prior
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`art to all claims of the ’786 Patent:
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`Art available under 35 U.S.C. § 102(b):
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`Ex. 1003 – International Publication Number WO 01/67266 A1 (“Lau”).
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`Lau was published on September 13, 2001.
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`Ex. 1004 – U.S. Patent Publication No. 2001/0028717 A1 (“Ohmura”),
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`which published on October 11, 2001 based on an application filed April 9, 2001.
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`Ex. 1005 – Sony XR-C5120 FM/AM Cassette Car Stereo Operating
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`Instructions (“Sony XR-C5120 Manual”) bears a copyright date of 1999.
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`Ex. 1006 – Sony XA-C30 Service Manual (“Sony XA-C30 Manual”) bears a
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`copyright date of 1996.
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`Ex. 1007 –U.S. Patent No. 6,175,789 (“Beckert”), which issued on January
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`16, 2001.
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`Ex. 1010 –Sony XR-C5120R FM/AM Cassette Car Stereo Operating
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`Instructions (“Sony XR-C5120R Manual”) bears a copyright date of 1999.
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`Ex. 1013 – Japanese Unexamined Patent Application No. H7-6954 to
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`Ouchida (“JP ‘954”) (Ex. 1014 is a certified translation).
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`Art available under 35 U.S.C. § 102(e):
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`Ex. 1008 – U.S. Patent No. 6,629,197 (“Bhogal”), the application for which
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`was filed on November 3, 2000 and which issued on September 30, 2003.2
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`C.
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`Identification of Challenge under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`Petitioner requests Inter Partes Review of claims 1, 2, 4-8, 10, 13, 14, 23,
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`24, 44, 47, 57, 58, 60-65, 86, 88-92, 94, 97, and 98 of the ‘786 Patent on the
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`grounds set forth in below. An explanation of how these claims are unpatentable
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`under the statutory grounds identified below, including the identification where
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`each element is found in the prior art references and the relevance of each of the
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`prior art references, is provided in the form of detailed claim charts and supporting
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`explanation. Additional explanation and support for each ground of rejection is set
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`forth in the Declaration of Thomas G. Matheson, Ph.D. (Ex. 1015).
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`2 Of these, only Beckert and Bhogal were of record in the ‘786 Patent file history.
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`4
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`Ground 1: Claims 44, 57, 58, 60, 63, 64, 86, 88, 90, and 91 anticipated by
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`Lau; Ground 2: Claims 92, 94, and 97 obvious based on Lau; Ground 3: Claims
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`1, 2, 4, 5, 6, 7, 8, 10, 13, 14, 23, 24, 61, and 62 obvious based on Lau in view of
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`Sony XR-C5120 and Sony XA-C30; Ground 4: Claims 47, 65, 89, and 98 are
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`obvious based on of Lau and known bus technology (“KBT”); Ground 5: Claim
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`24 is obvious based on Lau in view of Sony XR-C5120 and Sony XA-C30 KBT;
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`and Ground 6: Claims 44, 57, and 86 obvious based on Lau in view of Bhogal.
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`IV. SUMMARY OF THE ‘786 PATENT
`A. Brief Description of the ‘786 Patent
`The '786 patent is directed to an “audio device integration system” that
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`integrates a car stereo (also referred to as “car radio”) and one or more external or
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`“after-market” devices, such as a CD changer or an MP3 player, that may
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`otherwise be incompatible with the car stereo. See Ex. 1001 at abstract; 1:20-35
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`and FIG. 1. In the context of the ‘786 Patent, this integration is provided by an
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`“interface,” which is separate from the car stereo and the external device. Id.
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`Requestt for Inter PPartes Revview
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`U.S. Patent No. 7,,489,786
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`(Ex. 1001)Figure 2B (‘7886 Patent F
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`TThe interfacce convertss control siignals fromm the car sttereo into aa format thhat
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`is comppatible withh an after-mmarket exteernal devicce, thus alllowing commmands innput
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`at the caar stereo too control thhe externall device. WWith refereence to Figgure 2B of tthe
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`‘786 Paatent beloww, the contrrol panel buuttons 14 oof the car rradio 10 mmay be usedd to
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`control the operatiion of an eexternal devvice (MP33 player 300) as a resu
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`lt of interfface
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`20 convverting the control siggnals fromm the car raddio 10 intoo a format ccompatiblee
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`receives ddata from thhe
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`with thee MP playeer. Id. at 66:1-19. Simmilarly, thee interface
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`externall device annd convertss the data into a formmat compatiible with ccar radio 100 to
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`allow innformationn, such as aartist, song title, and ttrack and ttime informmation, to bbe
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`displayeed on displlay 13 of ccar radio 100. Id. at 6:
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`19-24. Thhe interfacee includes
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`microcoontroller prrogrammedd to perforrm the formmat converrsion for siggnals sent
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`the car sstereo to thhe externall device annd signals ssent by thee external ddevice to thhe
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`car stereeo. Id. at 88:31-9:7.
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`6
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`

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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`The ‘786 patent also describes the interface providing one or more auxiliary
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`inputs (inputs 35 in Figure 2E) to allow additional audio devices to be connected.
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`Id. at 7:23-29. This allows the devices connected to an auxiliary input to be
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`selectively activated by the microcontroller so that audio from the selected device
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`is channeled to the car stereo. Id. at 7:30-37.
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`The ‘786 Patent describes the interface generating a “device presence
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`signal” that it transmits to the car stereo to maintain the car stereo in an operational
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`state, such as “prevent[ing] the car stereo from shutting off, entering a sleep mode,
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`or otherwise being unresponsive to signals and/or data from an external source.”
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`Id. at 12:29-35; 13:15-19; FIGs. 4A and 4B.
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`Summary of the Prosecution History of the ‘786 Patent
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`B.
`The application for the ’786 patent, U.S. App. No. 10/316,961 (“the ‘961
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`application), was filed on December 11, 2002. See Ex. 1002.0001. Portions of the
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`file history pertinent to the issues in this Petition are summarized below.
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`In a first Non-Final Office Action date June 5, 2006, all pending claims were
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`rejected on prior art grounds. Ex. 1002.0204-.0230. The Examiner relied
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`primarily on U.S. Patent No. 6,993,615 (Falcon). Id. In response, the Applicant
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`distinguished Falcon on the basis that it failed to show an interface “connected
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`between a car stereo and an external audio source.” Ex. 1002.0267 (Sept. 11, 2006
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`Amendment). The applicant also distinguished Falcon as “unconcerned with
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`7
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`

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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`integrating an external audio device, which is ordinarily alien to and incompatible
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`with a car stereo system, for use with the car stereo system.” Id.
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`In response, the Examiner issued another Non-Final Office Action on
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`November 14, 2006 rejecting all of the claims on new grounds, relying primarily
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`on U.S. Patent No. 6,163,079 (Miyazaki). Ex. 1002.0282-.0326. A final rejection
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`was issued on April 19, 2007, again relying primarily on Miyazaki. Ex.
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`1002.0378-.0442.
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`In response to these Office Actions, the Applicant amended the independent
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`claims to specify the interface performed a “format” conversion of control
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`commands from the car stereo to the external device. Ex. 1002.0334-.0369 (Feb.
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`14, 2007 Amendment). The Applicant then distinguished Miyazaki because its
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`interface was directed to devices that were “already compatible with each other.”
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`Ex. 1002.0604 (Sept. 6, 2007 Amendment). The Applicant also amended some
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`claims to add “connectors” to the interface (e.g., claim 1 amended to add a “first
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`connector” that connects the interface to the “car stereo” and a “second connector”
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`that connects the interface to the after-market (external) device; application claims
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`55 and 81 were amended similarly, which issued as claims 57 and 86.) Ex.
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`1002.0575-.0576; .0588-.0589; .0595-.0596.
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`On February 20, 2008, the Examiner issued a Final Office Action rejecting
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`all of the pending claims on new grounds, relying primarily on U.S. Patent
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`Application Publication No. 2002/0084910 (Owens) and U.S. Patent No. 6,175,789
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`(Beckert). Ex. 1002.0616-.0665. Thereafter, the Applicant filed an Amendment on
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`April 21, 2008. (Ex. 1002.0678-.0709.) The amendments made included
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`additional language requiring that the microcontroller was “pre-programmed” to
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`perform the recited format conversion operations (e.g., “for remotely controlling
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`the after-market audio device…” and “for receiving data from the after-market
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`audio device…” E.g., Ex. 1002.0679 (amendment to claim 1); 1002.0707-.0709
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`(arguing “pre-programmed” aspect as basis for overcoming prior art).
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`A Notice of Allowance followed on July 31, 2008. Ex. 1002.1035-.1041.
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`The Examiner stated that although interfacing auxiliary after-market devices with a
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`car stereo was known, “the Examiner has not found prior art that teaches or
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`suggests an interface unit containing a pre-programmed microcontroller that
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`allows for the communication of incompatible audio devices as presented in the
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`independent claims 1, 24, 30, 42, 55, 63 and 72” or “to execute a code portion for
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`generating and transmitting a device presence signal to a car stereo to maintain the
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`stereo in an operational state responsive to signals from an after-market device as
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`presented in the independent claims 47, 81, 83, 104.” Ex. 1002.1039-.1040
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`(emphasis added).
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`C. The Purported Novelty of the ‘786 Patent and the State of the Art
`The ‘786 Patent professes to solve the problem of “integrating” after-market
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`audio devices (CD changers, etc.) that were incompatible with original equipment
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`manufacturer (OEM) car stereos. Ex. 1001 at 1:36-44. The ‘786 Patent described
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`existing technology as limited to “expansion modules” that would only allow
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`devices made by the same manufacturer to be integrated, but not devices made by
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`different manufacturers. Id. at 1:45-59. The solution, according to the ‘786 Patent,
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`was to provide an interface to convert the signal formats of the car stereo and
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`external devices so as to make them compatible. Id. at 2:35-43 and 4:47-52.
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`This “solution,” however, was not novel with ‘786 Patent. Rather, the
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`problem of interfacing car stereos with incompatible external devices had been
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`solved nearly eight years before the application for ‘786 Patent was filed.
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`Japanese Unexamined Patent Application No. H7-6954 to Ouchida (“JP
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`‘954”) provided the same “solution” of using an interface 1 between the car stereo
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`(head unit 3) and the CD changer 2. JP ‘954 (Ex. 1014) at ¶ 3 (“the problem for
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`the present invention is to make it possible to add a CD changer of company B to a
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`head unit of company A…”).3 The interface of JP ‘954 converted control signals
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`from the head unit into a format compatible with the CD changer and vice-versa.
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`JP ‘954 at ¶ 6. Just like the ‘786 Patent, JP ‘954 used a microcontroller in its
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`3 JP ‘954 is the primary reference in a second concurrently filed petition.
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`Requestt for Inter PPartes Revview
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`U.S. Patent No. 7,,489,786
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`P version. JPormat convhe signal foperform thammed to interface that was pre-progra
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`¶ 2-3, 6.
`‘954 at
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`Coomparison of ‘786 Paatent Figurre 2A and
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`JP ‘954 FFigure 1 (annnotated)
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`AAnd while JJP ‘964 deescribed inttegrating aa CD changger with a ccar stereo,
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`was alsoo known too provide tthe same “iinterface”
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`with othher types oof external devices, suuch as MP
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`solution too integrate
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`a car stereeo
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`well over ttwo years
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`before tthe filing oof the ‘786 Patent, as evidencedd by Lau.4
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` Lau prov
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`ides a
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`dedicateed microcoontroller inn its music server 1022 that “emuulates a dissc changer
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`such thaat it “appeaars to act liike a disc cchanger” frfrom the peerspective oof the headd
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`unit. Exx. 1003 (Lau) at 4:411-46.
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`4 The coorrespondinng U.S. appplication ffor Lau waas filed in MMarch 20000.
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`11
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`Requestt for Inter PPartes Revview
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`U.S. Patent No. 7,,489,786
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`Comparisoon of ‘786 Patent Figgure 2B annd Lau Figgure 1 (annnotated)
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`TThough neiither were ccited durinng prosecuttion, both JJP ‘954 annd Lau plaiinly
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`disclosee the featurre of “an innterface unnit containiing a pre-pprogrammeed
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`microcoontroller thhat allows ffor the commmunicatioon of incommpatible auudio devicces,”
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`identifieed as the reeason for aallowing thhe ‘786 Pattent claimss. As showwn below, LLau
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`also discloses the “device prresence siggnal” reciteed in some claims, wwhich was thhe
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`only othher reason identified by the Exaaminer for
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`allowancee.
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`V. CCLAIM COONSTRUCCTION
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`AA claim subbject to Intter Partes RReview is
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`easonable
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`construcction in ligght of the sspecificatioon of the paatent in whhich it appeears.”
37
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`C.F.R. §§ 42.100(bb). Thus, thhe words off the claimm are givenn their plainn meaning
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`from thee perspectiive of one of ordinaryy skill in thhe art unleess that meaaning is
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`inconsisstent with tthe specification. In rre Zletz, 8993 F.2d 3119, 321 (Feed. Cir. 19889).
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`Petitionner submitss that a perrson of ord
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`inary skill
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`controllling equipmment at thee time of thhe alleged iinvention wwould hav
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`12
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`at least a Bachelor’s degree in electrical engineering or equivalent
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`science/engineering degree and at least two years of experience in signal
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`processing and/or electronic system design, or would have at least four years of
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`experience in signal processing and/or electronic system design.
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`A. Disputed Terms Construed in District Court
`In the New Jersey litigations (see Section II. B), a common Markman
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`decision was issued construing the following claim terms. See Ex. 1009.
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`“interface” (recited in independent claims 1, 44, 57, 86, and 92) was
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`construed as “a microcontroller that is a functionally and structurally separate
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`component from the car stereo, which integrates an after-market device with a car
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`stereo.” (Ex. 1009 at 4-13.) In so doing, the district court found that the claim
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`language and the specification supported the conclusion that the interface was
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`functionally separate from the car stereo. Ex. 1009 at 8-9 (citing ‘786 Patent at
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`1:60-64 (integration system “allows for information to be exchanged between the
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`after-market device and the car stereo”); 2:28-32 (integration system “connects to
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`and interacts with the car stereo”); 5:38-41; and claim language of 1, 25, 56 and 66
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`reciting an “integration system”). Further, the court found the requirement that the
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`interface be “structurally” separate was supported by the remarks made by the
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`Applicant in distinguishing Miyazaki by amending the claims to add “connectors”
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`to connect the interface to the car stereo and external device. Ex. 1009 at 12-13.
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`13
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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` “device presence signal” (recited in independent claims 57, 86, and 92 and
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`dependent claim 6) was construed as “transmission of a continuous signal
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`indicating an audio device is present.” (Ex. 1009 at 14-17.) In reaching this
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`interpretation, the district court pointed to the description in the specification of the
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`interface generating a signal “indicating that a CD player/changer is present, and
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`the signal is continuously transmitted to the car stereo.” Ex. 1009 at 14 (citing
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`‘786 Patent at 12:29-32 in addition to 13:15-18; 13:62-66; 14:49-51; 15:35-38;
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`16:12-15; 16:57-60.)
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`“portable” (recited in independent claims 44, 57, and 92) was construed as
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`“capable of being moved about.” Ex. 1009 at 24-25. In reaching this construction,
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`the court noted the only reference in the specification of the ’786 Patent to
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`“portable” is noted in col 20, lines 64 to col. 21, line 20, with respect to the
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`discussion of Figures 7A-7B. Id. That section describes a “portable audio device,”
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`which in one embodiment, can be integrated with a car stereo by a docking station.
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`Claim 44 specifies a “docking portion” for “communicating and physically mating
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`with” a portable device. Conversely, claim 57 recites a “portable MP3 player”
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`while claim 92 recites a “portable audio device,” both without any requirement for
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`14
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`a “dock” or “docking portion.” Accordingly, petitioner submits the broadest
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`reasonable interpretation of portable should be “capable of being moved about.”5
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`Petitioner contends that “interface,” device presence signal,” and “portable”
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`should be construed for purposes of this IPR as set forth above, which is the
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`understanding of the claim meaning that Petitioner has applied. Other terms
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`construed by the New Jersey District Court, which do not necessarily present any
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`issues with respect to this Petition, are “auxiliary input source” (construed as “a
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`device that outputs audio by headphone jack or other connector” (Ex. 1009 at 17-
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`20)); “operational state” (construed as “in a state responsive to data and/or
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`command signals from the external device” (Ex. 1009 at 20-21.)); “pre-
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`programmed” (construed as “programmed prior to its use in the normal course”
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`(Ex. 1009 at 21-23)); “external” (construed as “an after-market device that is
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`outside and alien to the environment of an OEM or after-market stereo system”
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`(Ex. 1009 at 23-24)).
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`5 Consistent with this understanding, the broadest reasonable interpretation of
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`“portable device” (as recited in claim 44) would be “an object, machine, or piece
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`of equipment that is capable of being moved about.” Ex. 1012 (definition of
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`“device”).
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`15
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`These constructions are at least consistent with the ’786 patent’s claims,
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`specification, and prosecution history, and have thus been utilized when comparing
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`the prior art to the claims of the ’786 Patent in this Petition.
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`B. Means-Plus Function Terms
`When a term uses “means for” language, there is a presumption that 35
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`U.S.C. § 112, ¶ 6 applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348-
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`49 (Fed. Cir. 2015) (en banc). Means plus function terms are construed by: (1)
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`first determining the claimed function and (2) identifying the corresponding
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`structure in the specification that performs the claimed function. Noah Sys., Inc. v.
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`Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012).
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`The district court construed the following terms under 35 U.S.C. §112, 6th
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`paragraph, which are all recited in challenged claim 92.
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`“first pre-programmed means for generating a device presence signal”:
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`The function was identified as “generating a device presence signal to the car
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`stereo.” Ex. 1009 at 29. With respect to structure, the court identified “ports
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`J2A1, X2, RCH, and LCH, connected to a power source (i.e. battery) that are
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`provided for allowing connection between the interface system of the present
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`invention and an after-market device, or an auxiliary input source,” and “a
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`microcontroller (U1) with hardware components such as resistors, diodes,
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`capacitors, and oscillators.” Ex. 1009 at 32 (citing Ex. 1001 at 8:42-45 and 9:1-5.)
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`16
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`In reaching its conclusion, the district court rejected the argument that the
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`“means for generating a device presence signal” should be found indefinite
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`because the ‘786 fails to disclose an algorithm executed by the microcontroller that
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`performs the recited function. Ex. 1009 at 30-32. The court reasoned that
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`structure is not “limited to an algorithm when the function being performed is
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`generating, receiving, or transmitting signals. Id. at 31.
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`The premise of the district court’s construction was incorrect, however,
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`because the structure it identified does not generate the device presence signal, but
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`merely conveys the signal generated by the microcontroller to the car stereo. Ex.
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`1002 at 9:9-13; Ex. 1015 (Matheson Dec.) at ¶¶ 69-71. Further, to the extent the
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`structure identified by the district court conveys the generated device presence
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`signal, that does not make it corresponding structure for purposes of Section112, ¶
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`6 since “generating” the signal is the recited function, not conveying it. See
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`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003) (“the
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`structure must be necessary to perform the claimed function”) (emphasis added).
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`The ‘786 Patent fails to provide any detail on how the device presence signal
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`is generated, what form the signal is in, what information the signal contains, or
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`any other meaningful explanation of the recited function, whether in the form of an
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`algorithm or otherwise. Accordingly, the term must be found indefinite. See
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`Blackboard, Inc. v. Desire2Lean, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009).
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`17
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`Request for Inter Partes Review
`U.S. Patent No. 7,489,786
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`However, should the PTAB find “means for generating a device presence
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`signal” not indefinite, Petitioner has shown how the prior art discloses at least the
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`equivalent of the structure identified by the New Jersey district court.
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` “first pre-programmed means for…transmitting the signal to the car
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`stereo to maintain the car stereo in an operational state”: The function was
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`identified as “transmitting the signal to the car stereo to maintain the car stereo in
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`an operational state.” Ex 1009 at at 33. For structure, the court identified the
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`algorithm in Table 2 “that illustrates how data is converted from the after-market
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`device into a format understandable by the car stereo.” Id. The court further
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`identified the circuit in Figure 3B, including resistors, diodes, capacitors,
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`transistors, transformers, amplifiers, and an oscillator as “structural components
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`that provide the hardware framework” for the microcontroller to act as an interface.
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`Id. at 34.
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`This construction was also incorrect, as the function refers to the
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`transmission of the “device presence signal” that was previously generated, whose
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`purpose is to “maintain the car stereo in an operational state.” Thus, Table 2
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`should not have been included as corresponding stru