UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`JOHNSON SAFETY, INC.,
`Petitioner,
`
`v.
`
`VOXX INTERNATIONAL CORPORATION
`Patent Owner.
`
`_______________
`
`
`
`Patent No. 7,245,274
`Filing Date: May 15, 2003
`Issue Date: July 17, 2007
`Title: HEADREST MOUNTABLE VIDEO SYSTEM
`_______________
`
`Inter Partes Review No. IPR2016-01070
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,245,274 UNDER
`35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`
`
`i
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`

`
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES ...............................................................................................................1
`A. REAL PARTY-IN-INTEREST ............................................................................................................1
`B. RELATED MATTERS .......................................................................................................................1
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3), AND SERVICE
`INFORMATION UNDER 37 C.F.R. § 42.8(B)(4) ...............................................................................1
`II. GROUNDS FOR STANDING .........................................................................................................2
`III. INTRODUCTION.............................................................................................................................3
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................................................4
`V. THE ‘274 PATENT...........................................................................................................................4
`VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED ................................................................................................................................8
`A. CLAIMS FOR WHICH REVIEW IS REQUESTED ................................................................................8
`B. STATUTORY GROUNDS OF CHALLENGE ........................................................................................8
`C. CLAIM CONSTRUCTION .................................................................................................................8
`1.
`“coupled” (Claim 1) ..................................................................................................................9
`2.
`“an internal headrest support structure” (Claim 1) ..................................................................11
`3.
`“wherein the base portion accommodates a media player” (Claim 11) ..................................12
`4.
`“slot-type device” (Claims 5 & 6) ...........................................................................................13
`VII. CLAIMS 1, 5-7, 9, & 11 OF THE ‘274 PATENT ARE UNPATENTABLE .............................13
`A. THE PRIOR ART ...........................................................................................................................13
`1.
`Tseng .......................................................................................................................................15
`2. Chang ......................................................................................................................................15
`3. Mathias ....................................................................................................................................15
`4.
`Swaim ......................................................................................................................................16
`5.
`PC Magazine TC1000 Articles & the Compaq Manual ..........................................................16
`6.
`Jost ...........................................................................................................................................17
`B. CHANG IN VIEW OF MATHIAS RENDERS OBVIOUS CLAIMS 1, 5-7, AND 9 .................................17
`1.
`[1.0] Both Chang and Mathias disclose “a video system” .......................................................17
`2.
`[1.1] Chang discloses “a base unit coupled to an internal headrest support structure” ...........18
`3.
`[1.2] Both Chang and Mathias disclose “a door pivotally connected to the base unit
`by a hinge” ...............................................................................................................................20
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`ii
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`4.
`5.
`
`6.
`
`3.
`
`7.
`8.
`
`[1.3] Both Chang and Mathias disclose “the door comprising a display” ...............................23
`[1.4] Mathias discloses “the door comprising a media player comprising at least one
`of a DVD player, an MPEG player or a video game player” ..................................................23
`It would have been obvious to a POSITA to modify Chang as taught by Mathias to
`arrive at the claimed invention of Claim 1 ...............................................................................23
`[5.0] Mathias discloses “wherein the video system is a slot-type device” ..............................29
`[6.0] Mathias discloses “wherein a slot for receiving a data media is positioned on a
`side of the door” .......................................................................................................................29
`[7.0] Mathias discloses “further comprising a wireless transmitter” .......................................30
`9.
`10. [9.0] Mathias discloses “further comprising a port for connecting to an external
`device” .....................................................................................................................................31
`11. Claim Charts ............................................................................................................................31
`C. CHANG IN VIEW OF JOST AND MATHIAS RENDERS OBVIOUS CLAIMS 1, 5-7, AND 9 ................37
`1.
`[1.0] Chang, Jost, and Mathias disclose “a video system” ......................................................37
`2.
`[1.1] Chang and Jost disclose “a base unit coupled to an internal headrest support
`structure” ..................................................................................................................................37
`[1.2] Both Chang and Mathias disclose “a door pivotally connected to the base unit
`by a hinge” ...............................................................................................................................40
`[1.3] Both Chang and Mathias disclose “the door comprising a display” ...............................40
`[1.4] Mathias discloses “the door comprising a media player comprising at least one
`of a DVD player, an MPEG player or a video game player” ..................................................40
`It would have been obvious to a POSITA to modify Chang as taught by Jost and
`further as taught by Mathias to arrive at the claimed invention of Claim 1 ............................40
`[5.0] Mathias discloses “wherein the video system is a slot-type device” ..............................44
`[6.0] Mathias discloses “wherein a slot for receiving a data media is positioned on a
`side of the door” .......................................................................................................................45
`[7.0] Mathias discloses “further comprising a wireless transmitter” .......................................45
`9.
`10. [9.0] Mathias discloses “further comprising a port for connecting to an external
`device” .....................................................................................................................................45
`11. Claim Charts ............................................................................................................................45
`D. CHANG IN VIEW OF TSENG RENDERS OBVIOUS CLAIM 11 .........................................................48
`1.
`[11.0] Both Chang and Tseng disclose “a video system” ........................................................48
`2.
`[11.1] Chang discloses “a base portion positioned in a headrest of a vehicle seat” ................48
`3.
`[11.2] Tseng discloses “wherein the base portion accommodates a media player
`comprising at least one of a DVD player, an MPEG player, or a video game player” ...........50
`
`4.
`5.
`
`6.
`
`7.
`8.
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`iii
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`4.
`
`5.
`
`3.
`
`[11.3] Both Chang and Tseng disclose “a display pivotally connected to the base
`portion” ....................................................................................................................................51
`It would have been obvious to a POSITA to modify Chang as taught by Tseng to
`arrive at the claimed invention of Claim 11 .............................................................................51
`6. Claim Charts ............................................................................................................................57
`E. SWAIM IN VIEW OF COMPAQ MANUAL RENDERS OBVIOUS CLAIMS 1, 5-7, AND 9 ...................61
`1.
`[1.0] Both Swaim and Compaq Manual disclose “a video system” ........................................61
`2.
`[1.1] Swaim discloses “a base unit coupled to an internal headrest support structure”
`and Compaq Manual discloses “a base unit” ...........................................................................63
`[1.2] Compaq Manual discloses “a door pivotally connected to the base unit by a
`hinge” .......................................................................................................................................66
`[1.3] Compaq Manual discloses “the door comprising a display” ...........................................68
`4.
`5. Compaq Manual discloses “the door comprising a media player comprising at least
`one of a DVD player, an MPEG player or a video game player” ............................................68
`It would have been obvious to a POSITA to modify Swaim as taught by Compaq
`Manual to arrive at the claimed structure of Claim 1 ..............................................................69
`[5.0] Compaq Manual discloses “wherein the video system is a slot-type device” ................73
`[6.0] Compaq Manual discloses “wherein a slot for receiving a data media is
`positioned on a side of the door” .............................................................................................73
`[7.0] Compaq Manual discloses “further comprising a wireless transmitter” .........................74
`9.
`10. [9.0] Compaq Manual discloses “further comprising a port for connecting to an
`external device” .......................................................................................................................75
`11. Claim Charts ............................................................................................................................76
`VIII. CONCLUSION ...............................................................................................................................80
`
`6.
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`7.
`8.
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`LIST OF EXHIBITS
`
`
`
`U.S. Patent No. 7,245,274 to Schedivy
`Patent Prosecution History of U.S. Application No.
`10/438,724 (now U.S. Patent No. 7,245,274)
`in Johnson Safety,
`Inc. v. Voxx
`Complaint
`filed
`International Corporation et al., Case No. 5:14-cv-2591-
`ODW-DTB (C.D. Cal.)
`Counterclaims filed in Johnson Safety, Inc. v. Voxx
`International Corporation et al., Case No. 5:14-cv-2591-
`ODW-DTB (C.D. Cal.)
`Glenn Wiener. “Audiovox Corporation Announces Name
`Change to Voxx International Corporation.” December 5,
`2011.
`U.S. Patent Application Publication No. 2004/0130616 A1
`to Tseng (“Tseng”)
`U.S. Patent No. 6,871,356 to Chang (“Chang”)
`International Application Publication No. WO 00/38951 to
`Mathias (“Mathias”)
`Voxx Patents – Agreed Constructions, filed in Johnson
`Safety, Inc. v. Voxx International Corporation et al., Case
`No. 5:14-cv-2591-ODW-DTB (C.D. Cal.)
`Patent Prosecution History of U.S. Application No.
`10/688,611 (now U.S. Patent No. 7,679,578)
`U.S. Patent No.6,685,016 to Swaim et al. (“Swaim”)
`Compaq, Hardware Guide, Compaq Tablet PC TC1000
`Series, document part no. 280133-001 (Nov. 2002)
`Declaration of Ralph V. Wilhelm
`PC Magazine, December 3, 2002 Issue, Page 38.
`PC Magazine, April 8, 2003 Issue, Pages 106-112.
`U.S. Patent No. 6,883,870 to Jost (“Jost”)
`Declaration of Keith D. Harden
`
`Exhibit 1001:
`Exhibit 1002:
`
`Exhibit 1003:
`
`Exhibit 1004:
`
`Exhibit 1005:
`
`Exhibit 1006:
`
`Exhibit 1007:
`Exhibit 1008:
`
`Exhibit 1009:
`
`Exhibit 1010:
`
`Exhibit 1011:
`Exhibit 1012:
`
`Exhibit 1013:
`Exhibit 1014:
`Exhibit 1015:
`Exhibit 1016:
`Exhibit 1017:
`
`
`
`v
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`

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`I. MANDATORY NOTICES
`
`A. Real Party-In-Interest
`
`The real party-in-interest is Petitioner, Johnson Safety, Inc.
`
`B. Related Matters
`
`Patent Owner has asserted USP 7,245,274, as well as U.S. Patent Nos.
`
`7,839,355, 5,775,762, 6,678,892, and 7,050,124 in counterclaims filed against
`
`Petitioner in a lawsuit captioned Johnson Safety, Inc. v. Voxx International
`
`Corporation et al., Case No. 5:14-CV-2591-ODW-DTB (C.D. Cal.), in which
`
`Petitioner is the plaintiff.
`
`Petitioner is also filing concurrently herewith a Petition for inter partes
`
`review of USP 7,839,355, which, as stated above, has also been asserted by Patent
`
`Owner against Petitioner.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3), and
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Petitioner provides the following designation and service information for
`
`lead and back-up counsel. Please direct all correspondence regarding this
`
`proceeding to lead and back-up counsel at their respective email addresses listed
`
`1
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`below.
`
`
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`

`
`Lead Counsel
`
`Back-Up Counsel
`
`Gregory M. Howison (Reg. No. 30,646)
`ipr@dalpat.com
`
`Postal and Hand-Delivery Address:
`HOWISON & ARNOTT, L.L.P.
`5420 LBJ Freeway
`Suite 660
`Dallas, Texas 75240
`Telephone: (972) 479-0462
`Facsimile: (972) 479-0464
`
`
`
`
`
`
`John J. Arnott (Reg. No. 39,095)
`ipr@dalpat.com
`
`Postal and Hand-Delivery Address:
`HOWISON & ARNOTT, L.L.P.
`5420 LBJ Freeway
`Suite 660
`Dallas, Texas 75240
`Telephone: (972) 479-0462
`Facsimile: (972) 479-0464
`Back-Up Counsel
`Keith D. Harden (Reg. No. 74,472)
`ipr@dalpat.com
`
`Postal and Hand-Delivery Address:
`HOWISON & ARNOTT, L.L.P.
`5420 LBJ Freeway
`Suite 660
`Dallas, Texas 75240
`Telephone: (972) 479-0462
`Facsimile: (972) 479-0464
`
`Petitioner consents
`
`to electronic
`
`service of
`
`all documents
`
`at
`
`IPR@dalpat.com.
`
`II. GROUNDS FOR STANDING
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘274 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ‘274 Patent challenging the subject patent
`
`claims on the grounds identified in this Petition. This Petition is timely filed under
`
`35 U.S.C. § 315(b) because it is filed within one year of the service of the
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`counterclaims alleging infringement of the ‘274 Patent. See Exs. 1003, 1004.
`
`III.
`
`INTRODUCTION
`
`Petitioner Johnson Safety, Inc. (“Petitioner”) requests inter partes review of
`
`claims 1, 5-7, 9, and 11 of USP 7,245,274 (“the ‘274 Patent”) (Ex. 1001). The
`
`‘274 Patent is owned by Voxx International Corporation (“Patent Owner”). Voxx
`
`International Corporation is the current name for Audiovox Corporation, original
`
`assignee of the ‘274 Patent. Ex. 1005, 1.
`
`The ‘274 Patent is directed to a “headrest mountable video system” and was
`
`filed on May 15, 2003. The ‘274 Patent describes a video system capable of
`
`playing various types of digital media, coupled to a headrest of a vehicle, with the
`
`video system allowing for a screen to pivot away from a base unit. See Ex. 1001,
`
`3:3-5, 3:15-20, 3:28-34. However, International Publication No. WO 00/38951 to
`
`Mathias (Ex. 1008) had already disclosed a media player having a pivotable screen
`
`positioned in a vehicle. Also, the application for USP 6,871,356 to Chang (Ex.
`
`1007) had already disclosed video systems capable of playing various types of
`
`digital media with pivotable screens coupled
`
`to headrests of vehicles.
`
`Additionally, USP 6,883,870 to Jost (Ex. 1016) had also already disclosed securing
`
`video systems to vehicle seats as well. For the reasons set forth below, Claims 1,
`
`5-7, 9, and 11 of the ‘274 Patent would have been obvious to a person of ordinary
`
`skill in the art at the time of the claimed invention.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`The ‘274 Patent was filed on May 15, 2003. A person of ordinary skill in
`
`the art (“POSITA”) in May 2003 would possess a BS in electrical, mechanical,
`
`and/or computer science/engineering and/or some experience in connection with
`
`consumer automotive electronics and the basic principles and processes used in
`
`automotive design at the time. Ex. 1013, ¶ 14.
`
`V. THE ‘274 PATENT
`
`The ‘274 Patent relates to a portable video system that can be coupled to a
`
`vehicle headrest. Ex. 1001, 3:1-5. The portable video system allows for data
`
`media, such as DVD, MP3 disk, or video game disk, to be received into a slot of
`
`the video system in order to access data stored on the medium. Id., 3:10-15. In
`
`one embodiment, the video system is described as having a base portion and a
`
`video screen portion, with a hinge connecting the video screen portion to the base
`
`portion, allowing for the screen portion to pivot in order to provide a user access to
`
`a slot for inserting a data medium. Id., 3:15-20, 3:28-34. The video system is
`
`illustrated in FIGURE 3B, below:
`
`4
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`
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`To couple the video system to the headrest, the video system is secured to a
`
`docking station 303, while the docking station 303 is secured to “an internal
`
`headrest support structure 305.” Ex. 1001, 3:19-24. The docking station 303 is
`
`illustrated in FIGURE 3C, below:
`
`
`
`5
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`

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`The docking station is secured in the headrest by using catches, screws, adhesive,
`
`and/or other means of securing the docking station. Id., 3:19-28. The docking
`
`station secures “a base portion of the video system 301, and allows a video screen
`
`portion 306 to pivot away from the base portion.” Id., 3:26-29.
`
`In one embodiment, a slot 302 for receiving the medium is on the side of the
`
`video screen, as shown in FIGS. 3A and 3B, below:
`
`
`
`As shown above, the video system includes a base portion 307 (marked in
`
`diagonal lines above) and a video screen portion 306 pivotally attached by a hinge
`
`304. Id., 3:20-35.
`
`
`
`In another embodiment described in the ‘274 Patent, the base portion 503
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`alternatively receives the data medium. FIGURE 5A illustrates the video system
`
`with the door closed, while FIGURE 5D illustrates what is seen when the door is
`
`open.
`
`As seen above, the front of the door includes the video screen and other controls.
`
`The door pivots away from the base portion via a hinge 504 to allow the media
`
`player to be accessed. The data medium can then be inserted after opening a cover
`
`
`
`510.
`
`The ‘274 Patent further discloses that the video system may have input and
`
`output ports, including audio/visual input and output ports 802, a headphone port
`
`803, and a power port 804. Ex. 1001, 4:65-5:5.
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`7
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`VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A. Claims for which Review is Requested
`
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1, 5-
`
`7, 9, and 11 of the ‘274 Patent, and the cancellation of these claims as
`
`unpatentable.
`
`B.
`
`Statutory Grounds of Challenge
`
`Petitioner requests that claims 1, 5-7, 9, and 11 be cancelled as unpatentable
`
`under 35 U.S.C. § 103. The claim construction, reasons for unpatentability, and
`
`specific evidence supporting this request are detailed below.
`
`C. Claim Construction
`
`A claim subject to IPR receives the “broadest reasonable construction in
`
`light of the specification as they would be interpreted by one of ordinary skill in
`
`the art.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061-62 (Fed. Cir. 2016).
`
`Unless otherwise noted below, Petitioner proposes, for purposes of IPR only, that
`
`the claim terms of the ‘274 Patent are presumed to take on their ordinary and
`
`customary meaning that the term would have to a POSITA. The claim
`
`construction analysis is not, and should not be viewed as, a concession by
`
`Petitioner as to the proper scope of any claim term in any litigation. These
`
`assumptions are not a waiver of any argument in any litigation that claim terms in
`
`the ‘274 Patent are indefinite or otherwise invalid or have different scope. The
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`8
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`following terms and phrases from the claims of the ‘274 Patent require
`
`construction for this proceeding.
`
`1.
`
`“coupled” (Claim 1)
`
`Claim 1 requires “a base unit coupled to an internal headrest support
`
`structure.” Petitioner proposes that the term “coupled” should be given its broadest
`
`reasonable construction as “connected” in its plain and ordinary sense. The
`
`specification of the ‘274 Patent supports a broad construction of the term
`
`“coupled.” The term does not denote permanence as shown by the video system
`
`being meant to be “decoupled” from the docking station and used independently.
`
`Ex. 1001, 3:33–43. And the term is used distinctly from “permanently installed.”
`
`Id., 4:26–30. And even the ‘274 Patent’s use of the narrower phrase “directly
`
`coupled” contemplates the use of a “harness” to couple things otherwise remote
`
`from each other. Id.
`
`The plain language of the claims also shows that a broad construction is
`
`appropriate. For example, Claim 17 uses the phrase “directly coupled” as
`
`compared to Claim 1’s use of merely “coupled” which confirms the broader and
`
`more general meaning of “connected”. This common term has also been construed
`
`by the Federal Circuit in the mechanical arts in Johnson Worldwide Associates,
`
`Inc. v. Zebco Corp. which explicitly noted that inferences drawn from preferred
`
`embodiments were insufficient to narrow this “broad and general term.” 175 F.3d
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`9
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`985, 992 (Fed. Cir. 1999); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358
`
`F.3d 870, 875 (Fed. Cir. 2004) (embodiments do not narrow broad claim
`
`language).
`
`Patent Owner will likely point to embodiments in the specification as
`
`limiting the term “coupled.” Such would be inappropriate as noted by Johnson
`
`Worldwide. There is no explicit disclaimer to limit otherwise broad claim
`
`language. Further, the Patent Owner will likely try to conflate the state of being
`
`coupled with how or where something is coupled. But the claims of the ‘274
`
`Patent explicitly delineate the state of being coupled from how or where something
`
`is coupled. For example:
`
` Claim 1 - “connected … by a hinge.”
`
` Claim 2, which depends from Claim 1, permits something to be
`
`deposed between the base and the headrest.
`
` Claim 11 - “base portion positioned in a headrest.”
`
` Claim 16 – “a base unit coupled to a headrest support structure located
`
`within a headrest”
`
` Claim 12 & 17 - “a portion of the docking station .. disposed within
`
`the headrest”
`
` Claim 17 - “directly coupled to the headrest support structure”
`
`The Patent Owner may also try to argue that the term “internal” requires a coupling
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`10
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`

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`internal to the headrest. But Claim 1 does not require a headrest. Thus the
`
`inference that the coupling must be inside a headrest is merely importing
`
`limitations from the specification which is improper. Further, “internal” is an
`
`adjective and modifies the noun “structure” and not the verb “coupled.” Thus
`
`Claim 1 does not limit how or where the coupling of the base unit to the internal
`
`headrest support structure must happen. Accordingly, the term “coupled” has its
`
`ordinary, reasonable, and broad meaning of “connected.”
`
`2.
`
`“an internal headrest support structure” (Claim 1)
`
`Claim 1 requires “a base unit coupled to an internal headrest support
`
`structure.” Petitioner proposes that the “internal headrest support structure” should
`
`be construed to mean “a support structure, all or a part of which is disposed inside
`
`a headrest.” The specification of the ‘274 Patent only states that “the docking
`
`station 303 is secured in the headrest 102, and more particularly to an internal
`
`headrest support structure,” without describing what “an internal headrest support
`
`structure” may be. Ex. 1001, 3:20-33.
`
`Claim 10 explicitly contemplates a headrest support element “disposed
`
`inside and outside of the headrest,” such as headrest rods. Claim 16 further claims
`
`the much narrower “headrest support structure located within a headrest of a
`
`vehicle seat.” Therefore, the broadest reasonable interpretation of “an internal
`
`headrest support structure” is “a support structure, all or a part of which is disposed
`
`11
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`

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`inside a headrest.” This construction has been agreed to by Patent Owner in
`
`litigation. Ex. 1009, Agreed Constructions.
`
`The net result of Petitioner’s constructions of “a base unit coupled to an
`
`internal headrest support structure” is that Claim 1 is properly broad enough to
`
`encompass embodiments that couple media players to headrest support rods by
`
`way of straps. Unlike other claims that Patent Owner might argue should be
`
`construed to require the coupling to occur inside the headrest (e.g., Claim 17), no
`
`such narrowing language is present in Claim 1. This issue arises with respect to
`
`Swaim and the Compaq Manual as discussed later.
`
`3.
`
`“wherein the base portion accommodates a media player”
`(Claim 11)
`
`Claim 11 requires “a 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 and a display pivotally
`
`connected to the base portion” (emphasis added). “Accommodates” plainly refers
`
`to providing space for something. As described in the discussion of FIGS. 5A-5D
`
`in section V herein, the only embodiment of the ‘274 Patent where the base portion
`
`provides space for a media player is where the base has the media player
`
`incorporated into it (and not in the display). E.g. ‘274 Patent, Fig. 5D.
`
`Accordingly, “wherein the base portion accommodates a media player” should be
`
`construed to mean “the base portion, and not the display, incorporates a media
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`12
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`player.”
`
`
`
`4.
`
`“slot-type device” (Claims 5 & 6)
`
`Claim 5 requires a slot-type device which the ‘274 Patent describes as a
`
`“video system 301 comprising a slot 302 that receives a data media into a
`
`mechanism for accessing data stored on the medium, such as a digital videodisk
`
`(DVD) player, MPEG layer 3 (MP3) disk, or video game disk.” Ex. 1001, 3:11–16.
`
`But the term is not limited by the embodiments of the specific media type. “[A]
`
`particular embodiment appearing in the written description may not be read into a
`
`claim when the claim language is broader than the embodiment.” SuperGuide, 358
`
`F.3d at 875. And neither Claim 5 or 6 use narrowing language, but rather plainly
`
`invoke the broadest meaning. Accordingly, a slot-type device should be construed
`
`as “a device that has a slot that receives a data media into a mechanism for
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`accessing data stored on the medium.”
`
`VII. CLAIMS 1, 5-7, 9, & 11 OF THE
`UNPATENTABLE
`
`‘274 PATENT ARE
`
`A. The Prior Art
`
`This section summarizes the prior art references relied upon in this Petition.
`
`Tseng was cited in an information disclosure statement dated January 18, 2007,
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`Mathias was cited in an information disclosure statement dated September 19,
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`2006, and Chang was cited in an information disclosure statement dated February
`
`7, 2006, and each of these references were considered (as indicated by the
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`Examiner’s initials on the submitted Information Disclosure Statements) by the
`
`Examiner during prosecution of the ‘274 Patent. See Ex. 1002 at 20, 33, 64, 91.
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`Additionally, a related patent to Chang, USP 7,044,546, was considered by the
`
`Examiner and used in a §102 rejection of the claims in the ‘274 Patent in an Office
`
`Action dated June 5, 2006. Ex. 1002 at 74, 156-161. However, Petitioner believes
`
`that the foregoing art, though considered by the Examiner, anticipate or render
`
`obvious the ‘274 Patent as presented in this Petition. Swaim, Jost, and Compaq
`
`Manual (and related art) were not specifically cited by the Applicant nor
`
`considered by the Examiner during prosecution of the ‘274 Patent.
`
`Importantly, Chang and Mathias have been found to be an obvious
`
`combination by the USPTO. For example, Patent Owner’s App No. 10/688,611
`
`(the ‘611 App.) claims priority to App. No. 10/438,724 which issued as the ‘274
`
`Patent. The figure below shows that relationship. Ex. 1010, USP 7,679,578.
`
`On June 16, 2006, during the prosecution of the ‘611 App, the examiner
`
`explicitly noted how similar the claims of the ‘724 App and the ‘611 App. were.
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`The examiner of the ‘611 App. then rejected the claims “as being unpatentable
`
`over Chang (US 6,871,356) in view of Mathias et al (WO 00/38951 hereinafter
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`Mathias).” Ex. 1010, 374.
`
`Thereafter, with respect to the ‘724 App., on Sept. 9, 2006, Patent Owner
`
`filed an IDS listing Mathias, as noted above, but did not include the ‘611 App.’s
`
`office action or otherwise inform the examiner that nearly identical claims had
`
`been rejected. And later in the ‘611 App.’s prosecution, Tseng was used to reject
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`other claims. Ex. 1010 at 269.
`
`1.
`
`Tseng
`
`U.S. Patent Application Publication No. 2004/0130616A1 to Tseng (Ex.
`
`1006) published July 8, 2004, from an application filed January 3, 2003. As such,
`
`Tseng is prior art under 35 U.S.C. §102(e).
`
`2.
`
`Chang
`
`USP 6,871,356 to Chang (Ex. 1007) issued March 22, 2005, from an
`
`application filed February 7, 2003. Additionally, Chang claims priority to two
`
`provisional applications: 60/435,810, filed December 20, 2002, and 60/421,936,
`
`filed October 28, 2002. As such, Chang is prior art under 35 U.S.C. §102(e).
`
`3. Mathias
`
`International Publication No. WO 00/38951 to Mathias et al. (Ex. 1008)
`
`published July 6, 2000, from an international application filed December 28, 1999,
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`which claims priority to U.S. Provisional Application No. 60/113,876, filed
`
`December 28, 1998. As such, Mathias is prior art under 35 U.S.C. §102(b).
`
`4.
`
`Swaim
`
`USP 6,685,016 to Swaim et al. (Ex. 1011) issued February 3, 2004, from an
`
`application filed December 1, 2001. As such, Swaim is prior art under 35 U.S.C.
`
`§102(b).
`
`5.
`
`PC Magazine TC1000 Articles & the Compaq Manual
`
`Compaq, Hardware Guide, Compaq Tablet PC TC1000 Series, document
`
`part no. 280133-001 (Ex. 1012) is a hardware manual for the Compaq Tablet PC
`
`TC1000, published on or around November 2002. The Compaq Manual was
`
`published either online or distributed with the TC1000 to end users. Ex. 1012 at 1-
`
`2. As such, Compaq Manual is prior art and a printed publication under 35 U.S.C.
`
`§102(a). Additionally, and in the alternative, Exs. 1014 and 1015 (collectively
`
`“PC Magazine TC1000 Articles”) are each excerpts from various issues of PC
`
`Magazine, dated December 3, 2002 and April 8, 2003, respectively. PC Magazine
`
`is a well-known printed publication. Ex. 1013, ¶ 10, 42. As such, these PC
`
`Magazine TC1000 Articles are each § 102(a) art.
`
`Further, each disclose a TC1000 unit to a POSITA. Ex. 1013, ¶ 42. Thus,
`
`the Compaq Manual also represents (1) the understanding of a POSITA with
`
`respect to the disclosure in the TC1000 in PC Magazine articles, as well as (2)
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`what the TC 1000 inherently discloses.
`
`6.
`
`Jost
`
`U.S. Patent No. 6,883,870 to Jost (Ex. 1016) issued April 26, 2005, from an
`
`application filed March 20, 2002. As such, Jost is prior art under 35 U.S.C.
`
`§102(e).
`
`B.
`
`Chang in View of Mathias Renders Obvious Claims 1, 5-7, and 9
`
`1.
`
` [1.0] Both Chang and Mathias disclose “a video system”
`
`a.) Chang discloses a video system, as recited in Claim 1. In particular,
`
`Chang discloses “[a] mobile video system” that “includes a first video source, a
`
`second video source, a first video monitor, a second video monitor, an audio signal
`
`receiver, and a wireless transmitter.” Ex. 1007, Abstract. The video system of
`
`Chang provides a video source 52 for playing media to be displayed on a video
`
`monitor. Ex. 1007, 4:50-60; see also Chang, FIG. 2, below:
`
`
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`b.) Mathias discloses a video system, as recited in Claim 1. In particular,
`
`Mathias discloses an “integrated visual display/digital media player in the form of
`
`an LCD/DVD un