UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON SAFETY, INC.,
`
`Petitioner, v.
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`VOXX INTERNATIONAL CORPORATION,
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`Voxx.
`
`Case IPR2016-01070
`Patent 7,245,274
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`VOXX’S RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`(37 C.F.R. §42.120)
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`TABLE OF CONTENTS
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`I. Introduction ............................................................................................................. 1
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`II. The Claimed Subject Matter .................................................................................. 2
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`III. The Board Should Affirm the Patentability of the Challenged Claims ................ 3
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`A. Legal Standards ............................................................................................. 3
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`1. JSI’s burden to prove the Challenged Claims are unpatentable ............ 3
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`2. Obviousness. ............................................................................................. 5
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`IV. Claim 1 is not obvious based on Chang in view of Jost and Mathias. .................. 7
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` A. Chang does not teach, suggest or otherwise disclose the invention defined
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`by claim 1. ...................................................................................................................... 7
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`1. Chang fails to disclose the invention of claim 1. ..................................... 7
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`3. Secondary considerations of non-obviousness: commercial success. ... 11
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`4. Chang is substantially similar to Chang '546 considered by the
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`USPTO…………………………………………………………………….. ........................... 13
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` B. Jost fails to compensate for the deficiencies of Chang. ............................... 21
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`1. Jost explicitly teaches only adding the monitor or screen to the
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`headrest.. ...................................................................................................................... 22
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`2. A POSITA would not have been motivated to combine Chang in view of
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`Jost……… ..................................................................................................................... 23
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` C. Mathias does not compensate for the deficiencies of Chang in view of
`Jost……… ..................................................................................................................... 24
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`1. Chang teaches away from the combination that JSI advocates. .......... 24
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`i
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`2. Chang explicitly teaches away from claim 1 by emphasizing limited
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`space within the headrest ............................................................................................. 9
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`Paper 12
`Voxx Response
`IPR2016-01070
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`2. Voxx's commercial success is evidence of non-obviousness. ................. 25
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` D. Claim 1 is not obviated by Chang in view of Jost and Mathias. ............... 26
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`V. Independent claim 11 is not obvious based on Chang in view of Tseng. ............ 26
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` A. JSI fails to demonstrate that Chang in view of Tseng renders claim 11
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`obvious. ...................................................................................................................... 27
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`1. Chang fails to disclose all the elements of cliam 11 ............................... 27
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`2. Chang teaches away from the combination JSI advocates. .................. 28
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`3. Secondary considerations: commercial success. .................................... 31
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` VI. Conclusion ............................................................................................................. 33
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`ii
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`Paper 12
`Voxx Response
`IPR2016-01070
`
`
`TABLE OF AUTHORITIES
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`
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`Cases
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`ABB INC. v. ROY-G-BIV Corp., IPR2013-00062 (PTAB Final Written Decision,
`2014) ............................................................................................................ 11, 24, 31
`
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) ..................................... 7
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`Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010). .......................... 12
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`Cuozzo Speed Techs., 136 S. Ct. 2131, 195 L. Ed. 2d 423, 2016 U.S. LEXIS 3927
`(2016) .......................................................................................................................... 5
`
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`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986).
` ..................................................................................................................................... 7
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`Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) .... 4
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`Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). ....................... 6
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`Graham v. John Deere Co., 383 U.S. 1 (1966) .............................................................. 5
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ................................................................................... 4
`
`
`In re Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006) ...................................... 6
`
`In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 U.S.P.Q.2D 1541 (Fed. Cir. 2016)
` ................................................................................................................................. 3, 4
`
`
`In re Nuvasive, 842 F.3d 1376 (Fed. Cir. 2016) ............................................................ 7
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`In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017). .............................................................. 6
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`In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016) .................................. 7
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). ................................................. 5, 6
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`Leo Pharmaceutical Products, Ltd. v. Rea, 107 U.S.P.Q.2d 1943 (Fed. Cir. 2013). . 12
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`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005). ... 11, 31
`
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`iii
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`Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) ............................................. 3
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`Personal Web Technologies, Inc. v. Apple Inc., Case No. 2016-1174 (Fed. Cir. Feb.
`14, 2017). ..................................................................................................................... 6
`
`Paper 12
`Voxx Response
`IPR2016-01070
`
`
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`Prism Pharma Co., Ltd. V. Choongwae Pharma Corporation, Case IPR2014-00315
`(PTAB 2014) .............................................................................................................. 20
`
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`Standard Oil Co. Am. Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985) .......................... 7
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`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) .................... 4
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`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699
`F.3d 1340 (Fed. Cir. 2012). ........................................................................... 12, 13, 26
`
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`TriVascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016) ..................................... 4
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`
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`Statutes
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`35 U.S.C. § 102(3)…………………………………………………………………………….19
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`35 U.S.C. § 103 ............................................................................................................... 5
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`35 U.S.C. § 316(e)............................................................................................... 2, 3, 4, 5
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`35 U.S.C. § 325(d) ........................................................................................................ 20
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`
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`Rules
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`37 C.F.R. § 42.120(a) .................................................................................................. 1, 2
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`iv
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`Paper 12
`Voxx Response
`IPR2016-01070
`
`
`Exhibits
`2003
`2004
`2005
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`2006
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`2007
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`2008
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`EXHIBIT LIST
`
`Description
`Declaration of Michael Nranian
` US Prosecution File History for US 6,871,356 to
`Chang
`USPTO Chang Patent Ownership Confirmation
`
`Declaration of James R. Tranchina
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`US Patent No. 7,044,546 (Chang ‘546)
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`USPTO Chang ‘546 Patent Ownership Confirmation
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`v
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`I.
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`Introduction
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`In accord with 37 C.F.R. § 42.120, Patent Owner Voxx International
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`Corporation (“Voxx”) submits this Response to the Petition (Paper No. 1, the
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`“Petition”) filed on May 19, 2016 by Johnson Safety, Inc. (“JSI”) against certain
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`claims of U.S. Patent No. 7,245,274 (“274 Patent”). [Ex. 1001].
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`The challenged claims include independent claims 1 and 11, and claims 5-7
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`and 9 that depend directly or indirectly from those independent claims. [Paper No.
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`9, Decision, Institution of Inter Partes Review (“Decision”)]. JSI asserted four
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`grounds of unpatentability. [Petition, p. 1].
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`The Board found JSI did not show a reasonable likelihood of success in its
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`challenge based on two grounds of unpatentability. [Decision, p. 11 and 17-18].
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`The Board ordered an investigation into the patentability of the following claims
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`of the 274 Patent:
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`(i)
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`claims 1, 5-7 and 9 for being obvious over U.S. Patent No. 6,871,356 to
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`Chang (“Chang”) [Ex. 1007] in view of U.S. Patent No. 6,883, 870 to
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`Jost (“Jost”) [Ex. 1016] and PCT Patent Publication WO 00/38951 to
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`Mathias (“Mathias”) [Ex. 1008]; and
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`(ii)
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`claim 11 for being obvious over Chang [Ex. 1007] in view of
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`US20040130616A1 to Tseng (“Tseng”) [Ex. 1006].
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`Voxx refers to claims 1, 5-7, 9 and 11 as the Challenged Claims.
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`Voxx submits this Patent Owner Response pursuant to the Board’s
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`Institution Decision dated November 23, 2016. Voxx addresses the purported
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`1
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`grounds for unpatentability not already denied by the Board. 37 C.F.R. §
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`42.120(a). JSI has the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). JSI has not met its burden to
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`prove by a preponderance of the evidence that claims of the ʼ274 patent are
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`unpatentable.
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`For at least the reasons described below, the Board should confirm the
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`patentability of claims 1, 5-7, 9 and 11 of the 274 Patent. Voxx respectfully
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`requests that the Board find that originally issued Claims 1, 5-7, 9 and 11 are
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`patentable in view of the failure of JSI to meet its burden to prove them
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`unpatentable. Unless otherwise indicated below, Voxx accepts the determinations
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`from the Decision. Unless otherwise indicated below, Voxx incorporates the
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`arguments and facts submitted in the Patent Owner Preliminary Response [Paper
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`No. 5].
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`II. The Claimed Subject Matter
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`The `274 Patent is directed to a “headrest mountable video system” and was
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`filed on May 15, 2003. The `274 Patent describes a video system capable of playing
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`various types of digital media, coupled to a headrest of a vehicle, with the video
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`system allowing for a screen to pivot away from a base unit. [Ex. 1001, 3:3–5,
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`3:15–20, 3:28–34].
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`The Challenged Claims include two independent claims, claims 1 and 11,
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`which recite:
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`1. A video system comprising:
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`2
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` a
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` a
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` base unit coupled to an internal headrest support structure; and
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` door pivotally connected to the base unit by a hinge, the door
`comprising a display and a media player comprising at least one of a
`DVD player, an MPEG player or a video game player.
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`11. A video system comprising:
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` a
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` base portion positioned in a headrest of a vehicle seat, wherein the
`base portion accommodates a media player comprising at least one of a
`DVD player, an MPEG player or a video game player
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`and a display pivotally connected to the base portion.
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`The `274 Patent claims are directed to specific configurations of a video
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`system positioned in or connected to an internal structure within the headrest.
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`Claims 1 and 11 both require that the media player and the display for the
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`video system to be located at the headrest.
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`III. The Board Should Affirm the Patentability of the Challenged Claims
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`A.
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`Legal Standards
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`1.
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`JSI’s burden to prove the Challenged Claims are unpatentable.
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`“In an inter partes review . . . , the petitioner shall have the burden of
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`proving a proposition of unpatentability by a preponderance of the evidence.” 35
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`U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable
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`those issued claims that were actually challenged in the petition for review and for
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`which the Board instituted review.” In re Magnum Oil Tools Int'l, Ltd., 829 F.3d
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`1364, 1375, 119 U.S.P.Q.2D (BNA) 1541, 1548 (Fed. Cir. 2016) (citing Nike, Inc. v.
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`Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016)).
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`3
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`"As an initial matter . . . there are two distinct burdens of proof: a burden of
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`persuasion and a burden of production. The burden of persuasion 'is the ultimate
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`burden assigned to a party who must prove something to a specified degree of
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`certainty,' such as by a preponderance of the evidence or by clear and convincing
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`evidence." Id. (citing Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d
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`1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
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`1316, 1326-27 (Fed. Cir. 2008))). A distinct burden, "[t]he burden of production may
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`entail 'producing additional evidence and presenting persuasive argument based on
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`new evidence or evidence already of record.'" Id. (citing Tech. Licensing Corp., 545
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`F.3d at 1327).
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`“In an inter partes review, the burden of persuasion is on the petitioner to
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`prove 'unpatentability by a preponderance of the evidence,' 35 U.S.C. § 316(e), and
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`that burden never shifts to the patentee.” Id. (citing Dynamic Drinkware, 800 F.3d
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`at 1378). Indeed, “the Supreme Court has never imposed nor even contemplated a
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`formal burden-shifting framework in the patent litigation context.” Id. (citing In re
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`Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d
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`1063, 1075 (Fed. Cir. 2012)) (reversing district court's determination of obviousness
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`because "the court imposed a burden-shifting framework in a context in which none
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`exists").
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`The decision to institute and the final written decision are “two very different
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`analyses,” and each applies a “qualitatively different standard.” In re Magnum Oil,
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`829 F.3d 1364, 1376-77 (citing TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068
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`4
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`(Fed. Cir. 2016)). The Board is not bound by findings made in its Institution
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`Decision. Id. The Board is free to change its view of the merits after further
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`development of the record, and should do so if convinced its initial inclinations were
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`incorrect. Id.; see also Cuozzo Speed Techs., 136 S. Ct. 2131, 195 L. Ed. 2d 423, 2016
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`U.S. LEXIS 3927, at *18-19 ("The Patent Office's decision to initiate inter partes
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`review is 'preliminary,' not 'final.'").
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`Because of the “significant difference” between the standards of proof at
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`institution and trial during an IPR, it is inappropriate to shift the burden to the
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`patentee after institution to prove patentability. Id. JSI continues to bear the
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`burden of proving unpatentability after institution, and must do so by a
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`preponderance of the evidence at trial. See 35 U.S.C. § 316(e). The Board has an
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`obligation to assess the question anew after trial based on the totality of the record.
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`Id.
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`2.
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`Obviousness
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`In determining whether a claim is obvious, the Supreme Court has said that
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`the following four factors must be examined: (1) the scope and content of the prior
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`art; (2) the differences between the prior art and the claimed invention; (3) the
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`level of skill in the pertinent art; and (4) any objective indicia of nonobviousness.
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). A full examination of these
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`factors will show that the Challenged Claims would not have been obvious.
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`The Supreme Court in KSR noted that the analysis supporting a rejection
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`under 35 U.S.C. § 103 should be made explicit. KSR Int’l Co. v. Teleflex, Inc., 550
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`5
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`U.S. 398, 418 (2007). The Court, quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
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`1329, 1336 (Fed. Cir. 2006), stated: "'[R]ejections on obviousness cannot be
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`sustained by mere conclusory statements; instead, there must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.'" KSR, 550 U.S. 398, 418 (2007).
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`Although the references relied upon may teach that all aspects of a claimed
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`invention were individually known in the art, a mere statement that modifications
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`of the prior art would have been "'well within the ordinary skill of the art at the
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`time the claimed invention was made'" is not sufficient to establish a prima
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`facie case of obviousness without some objective reason to combine the teachings of
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`the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).
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`See also, In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017).
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`The Federal Circuit has recently emphasized that the PTAB “is obligated to
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`‘provide an administrative record showing the evidence on which [its] findings are
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`based, accompanied by the agency’s reasoning in reaching its conclusions.’” Personal
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`Web Technologies, Inc. v. Apple Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017).
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`In Personal Web Technologies, the Federal Circuit held that the PTAB’s
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`reasoning was insufficient because it “seems to say no more than a skilled artisan,
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`once presented with the two references, would have understood that they could be
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`combined.” Id. (emphasis original). The Federal Circuit emphasized that such a
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`rationale is “not enough” because it “does not imply a motivation to pick out those
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`two references and combine them to arrive at the claimed invention.” Id. (citing
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`6
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness
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`concerns whether a skilled artisan not only could have made but would have been
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`motivated to make the combinations or modifications of prior art to arrive at the
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`claimed invention.”) (emphasis original). See also, In re Nuvasive, 842 F.3d 1376,
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`1381-82 (Fed. Cir. 2016); In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333-34
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`(Fed. Cir. 2016).
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`A person of ordinary skill in the art (“POSITA”) is by definition not "the most
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`experienced" members in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
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`Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (POSITA is not a "genius in the art");
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`Standard Oil Co. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) ("A person
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`of ordinary skill in the art is also presumed to be one who thinks along the line of
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`conventional wisdom in the art and is not one who undertakes to innovate . . . .").
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`IV. Claim 1 is not obvious based on Chang in view of Jost and Mathias.
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`Claim 1 requires a video system comprising:
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`(i)
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`(ii)
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`(iii)
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`a base unit coupled to an internal headrest support structure;
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`a door pivotally connected to the base unit by a hinge, and
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`the door comprising a display and a media player comprising at least
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`one of a DVD player, an MPEG player or a video game player.
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`JSI has not met its burden to prove by a preponderance of the evidence that
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`claim 1 is unpatentable over Chang in view of Jost and Mathias.
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`A. Chang does not teach, suggest or otherwise disclose the invention
`defined by claim 1.
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`1.
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`Chang fails to disclose the invention of claim 1.
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`7
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`Chang fails to teach, suggest or otherwise disclose a video system comprising
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`a door that (1) connects pivotably to a base unit coupled to an internal headrest
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`support structure and (2) comprises the video source (media player). Chang
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`describes systems with video sources located apart from the video monitor.
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`Chang discloses “[a] mobile video system” that “includes a first video source,
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`a second video source, a first video monitor, a second video monitor, an audio signal
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`receiver, and a wireless transmitter.” [Ex. 1007, Abstract]. Chang describes a
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`complex audiovisual system which includes a plurality of devices, audiovisual
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`sources, radio, wires, transmitters, and power source distributed within the vehicle
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`located distinct from the video monitor. [Ex. 1007, column 4, line 27-column 5, line
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`34 and Figures 3 and 6]. Although Chang discloses that the audio portion of an
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`audiovideo source signal can be transmitted wirelessly (from the video monitor(s) to,
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`for example, independent headphones worn by vehicle passengers), Chang shows
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`wiring and cables used to connect the video monitors to the video source(s):
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`The mobile video system 248 preferably also includes a first set of input jacks
`262, a second set of input jacks 264, a first video monitor 258, and a second
`video monitor 260. A first audiovisual signal line 266 that has an audio
`branch 266A and a video branch 266B is provided to interconnect the input
`jacks 262 and the first video monitor 258. A second audiovisual signal line
`268 having an audio branch 268A and a video branch 268B is provided to
`interconnect the input jacks 264 and the second video monitor 260. [Ex. 1007
`column 9 line 66-column 10 line 7.]
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`[See also Ex. 1007, column 4, line 27-column 5, line 34 and Figures 3 and 6].
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`Chang’s Figures 2, 3, 5, and 6 show the media source located remote from the
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`display(s) in the headrests [Ex. 2003, Declaration of Nranian, ¶59].
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`8
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`Chang does not describe or suggest “a door pivotally connected to the base
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`unit by a hinge, the door comprising a display and a media player comprising at
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`least one of a DVD player, an MPEG player or a video game player” as required by
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`claim 1 of the ‘274 Patent.
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`2. Chang explicitly teaches away from claim 1 by emphasizing limited
`space within the headrest.
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`A POSITA would not have found it obvious to modify the teachings of Chang
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`to embed a media player into or within the headrest. [Ex. 2003, ¶61] Chang
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`explicitly teaches away from claim 1 by emphasizing the limited space allowed
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`within the headrest and the need to limit the size of the component within the
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`headrest for safety reasons. [Ex. 1007, column 14, line 63-column 15, line 39].
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`Chang explicitly teaches “limited space is available within the headrest”. [Ex.
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`1007, column 12, lines 20-24; see also, column 15, lines 13-14]. “Thus, the overall
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`monitor 410 occupies relatively little depth of the headrest”. [Ex. 1007, column 15,
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`lines 20-24]. “With prior art monitors…. additional depth beyond the thickness of
`9
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`the screen structure would be required”. [Ex. 1007, column 15, lines 6-9].
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`The function of a headrest is to provide padding for comfort and safety.
`Thus, a headrest must comprise at least a minimum amount of
`padding. When a monitor is added to a headrest, padding is displaced.
`The padding may be eliminated entirely, but such elimination makes
`the headrest less comfortable and less safe. Alternatively, the padding
`may be retained but moved elsewhere within the headrest.
`Disadvantageously, this option makes the headrest larger. If the
`headrest is made wider, the extra width obstructs a larger portion of
`the driver's view. If instead the headrest is made deeper, (extends
`farther into rear passenger area) the portion of the headrest that
`protrudes into the rear passenger area presents an obstacle to rear
`seat passengers. Therefore, a headrest-mounted monitor desirably
`occupies minimal space.
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`[Ex. 1007, lines 15-28, emphasis added].
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`Chang teaches against additional components of the audiovisual system to a pivotal
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`door including a monitor since Chang explicitly states that this would result in an
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`increased monitor depth, and, therefore result in decreased padding in the headrest.
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`[Ex. 2003, ¶63].
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`Chang cautions against adding extra thickness or size to the headrest and
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`thus teaches away from such combination. JSI argued against an obviousness
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`combination during prosecution of the Chang patent citing the limited space within
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`the headrest. [Exhibit 2004, pages 95-96, Applicant Arguments/Remarks made in
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`Amendment filed 2003-12-17]. Specially, during the prosecution of the Chang
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`patent, JSI submitted arguments in an Amendment filed August 7, 2013 in
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`response to a non-Final Office Action dated August 7, 2003. [Exhibit 2004, pages 95-
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`96, Applicant Arguments/Remarks made in Amendment filed 2003-12-17]. JSI
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`argued against an obviousness combination because of the size limitations of the
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`headrest. That is, JSI argued the headrest had limited space to mount Rosen’s
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`large display and thus a POSITA “would not be motivated [to] modify the
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`arrangement of Rosen to the arrangement of the present application” (Id., page 96).
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`JSI now asserts it would have been obvious to incorporate the audiovisual
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`source with the display/monitor and placing this combination into the headrest
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`[Paper No. 1, pages 24 and 41].  
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`Voxx submits it is improper for JSI to assert a position that is inconsistent
`
`with the position JSI took when prosecuting the Chang application. JSI’s
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`statements during the prosecution of the Chang patent application should be found
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`“persuasive insofar as it relates to the prior art relied on by Petitioner”. ABB INC.
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`v. ROY-G-BIV Corporation, IPR2013-00062, page 19 (PTAB Final Written Decision,
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`2014). 
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`Accordingly, Chang teaches away from the invention defined by claim 1. [Ex.
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`2003, ¶63].
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`3. Secondary considerations of non-obviousness: commercial success
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`The law deems evidence of “(1) commercial success, and (2) some causal
`
`relation or ‘nexus’ between an invention and commercial success of a product
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`embodying that invention, probative of whether an invention was nonobvious.”
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`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376– 77 (Fed. Cir.
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`2005).
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`A prima facie case of nexus is made when the patentee shows that there is
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`commercial success, and that the product that is commercially successful is covered
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`11
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`by the patent. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310-11 (Fed. Cir.
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`2010). “Objective indicia of nonobviousness plays a critical role in the obviousness
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`analysis.” Leo Pharmaceutical Products, Ltd. v. Rea, 107 U.S.P.Q.2d 1943, 1952-53
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`(Fed. Cir. 2013). “They are not just a cumulative or confirmatory part of the
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`obviousness calculus but constitute independent evidence of nonobviousness.” Id.
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`The Federal Circuit emphasizes that “consideration of objective indicia of
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`[nonobviousness] is part of the whole obviousness analysis, not just an
`
`afterthought.” Id. Indeed, objective indicia “may often be the most probative and
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`cogent evidence of nonobviousness in the record,” and enables the court to avert the
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`trap of hindsight. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
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`USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012).
`
`The products which embody the invention of the ‘274 Patent have
`
`experienced commercial success. [Ex. 2003, ¶ 66]. The Declaration by James R.
`
`Tranchina [Ex. 2006] provides evidence of the commercial success of products
`
`covered by claims 1, 5 and 11 of the ‘274 Patent and illustrates a nexus between the
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`commercial success and the invention of the ‘274 Patent. [Ex. 2003, ¶ 66]. The
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`relevant market for products which embody the invention of claims 1, 5 and 11 of
`
`the ‘274 Patent, as well as products which compete with the invention of the ‘274
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`Patent, are headrest mounted monitors. [Ex. 2006, 6]. The products which embody
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`the invention of claims 1, 5 and 11 of the ‘274 Patent comprise approximately
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`seventy-five percent (75%) of Audiovoxx Electronics Corporation n/k/a Voxx
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`Electronics Corporation and Invision Automotive Systems (“Voxx”) total headrest
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`12
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`mounted monitor sales since the issue date of the ‘274 Patent. [Ex. 2006, 7]. In the
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`years following issuance of the ‘274 Patent, Voxx saw an increased demand for
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`products covered by the ‘274 Patent. [Ex. 2006, 8]. Over one hundred million dollars
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`($100,000,000.00) in sales of the products that embody the invention of claims 1, 5,
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`and 11 of the ‘274 Patent demonstrate that Voxx has had great commercial success
`
`with such products. [Ex. 2006, 9]. Voxx has demonstrated commercial success as
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`well as a causal relation or ‘nexus’ between the invention embodied in claims 1, 5,
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`and 11 and the commercial success of the products embodying the invention of
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`claims 1, 5, and 11. [Ex. 2003, ¶ 67].
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`Petitioner sells the following models which copy the invention embodied in
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`claims 1 and 5 of the ‘274 Patent: JSI models AHHB7, DVLV, EVLV, RSE Subaru,
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`KHDM7, AGG7/AHG37, and P7GGLR. [Ex. 2003, ¶ 69]. Transocean Offshore
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`Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed.
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`Cir. 2012) (“The objective evidence relevant to this appeal includes industry
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`skepticism, long-felt industry need, commercial success, and copying”)(emphasis
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`added).
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`The commercial success enjoyed by VOXX and copying by JSI of products
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`embodying the invention of claims 1 and 5 of the ‘274 Patent offers strong evidence
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`that claims 1 and 5 would not have been obvious to a POSITA at the time invention.
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`[Ex. 2003, ¶ 70].
`
` 4.
`
`Chang is substantially similar to Chang `546 considered by the
`USPTO
`
`
`Although the USPTO did not consider Chang during the prosecution of the
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`13
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`‘274 patent, another substantially similar JSI patent, US Patent No. 7,044,546 to
`
`Chang [Ex. 2007, “Chang ‘546”], was used as a prior art reference in a rejection
`
`during the prosecution of the `274 Patent corresponding US patent application No.
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`10/438,724. [Ex. 1002, pages 158-160, 2006-06-05 Non-Final Office Action]. The
`
`Examiner allowed the Challenged Claims after considering the Chang ‘546
`
`reference [Ex. 1002, pages 29-32, 2007-04-04 Notice of Allowance and Fees Due].
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`Chang ‘546 is substantially similar to Chang and was assigned to JSI on
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`October 28, 2004. (Ex. 2008, USPTO Assignment Record for Chang ‘546).
`
`Therefore, JSI was aware of Chang ‘546 when submitting the Petition relying on
`
`Chang.
`
`The Decision referenced column 12, lines 24-27 and 28-32 and column 14,
`
`lines 1-10 of Chang [Decision, pages 9, 12, and 14].
`
`The following compares column 4, line 63 through column 5, line 14 of Chang
`
`‘546 (strikethrough) with cited column 12, lines 24-40 of Chang (underlined):
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`14
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`
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`The teachings of these portions of Chang and Chang ‘546 are substantially
`
`the same. [Ex. 2003, ¶ 75].
`
`The following compares column 6, lines 42-50 of Chang ‘546 (strikethrough)
`
`with cited column 14, lines 1-22 of Chang (underlined):
`
`
`
`
`The only identifiable difference between these portions of Chang and Chang
`
`‘546 are the numbers, corresponding to the Figures, have been amended. [Ex. 2003,
`
`¶ 77]. A POSITA would understand the teachings of these portions of Chang and
`
`Chang ‘546 are the same. [Ex. 2003, ¶ 77].
`
`The Decision also references Chang Figures 2, 3, 4, 9A, 13, 13B [Decision,
`
`pages 9, 12, 14]. Chang ‘546 includes disclosure overlapping with the Chang patent
`
`including several identical or nearly identical Figures set forth below:
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`15
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`Ghana ‘lfi-l- Figure 1.
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`Ghana 'fi+I.-fl- Fitura 1!.
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`16
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`Chang ‘B56 — Figures ‘BA-C
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`Chang’ 546 — Figures BA-C
`(333.1 also Figures 9-11)
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`17
`17
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`Chang ‘B56 — Figure 10
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`Chang ‘546- Figure 4
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`18
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`A POSITA would understand the above figures of Chang and Chang ‘546 disclose
`
`substantially the same invention. [Ex. 2003, ¶ 79].
`
`Thus, the USPTO considered a reference (Chang ‘546) disclosing
`
`substantially similar subject matter to Chang in the patent application which
`
`issued as the ‘274 Patent. [Ex. 1002, pages 158-160, Office Action dated 2006-06-
`
`05]. This is demonstrated through the use of Chang ‘546 by the Examiner as the
`
`sole reference in a rejection under 35 U.S.C 102(e). [Ex. 1002, pages 158-160, Office
`
`Action dated 2006-06-05].
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`19
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`
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`On page 13 of the Decision, the PTAB states:
`
`Patent Owner argues that Jost was considered by the Examiner
`and that the Board should “place extra weight on, and agree
`with, the Examiner’s decision to allow the claims over the
`considered references.” Prelim. Resp. 8. We determine,
`nonetheless, that Patent Owner has not shown the proposed
`combination of Chang, Mathis, and Jost is the same as, or
`substantially the same as, a combination considered by the Office
`during original prosecution. Indeed, Jost was simply listed on an
`Information Dis