UNITED STATES PATENT AND TRADEMARK OFFICE
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` ________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON SAFETY, INC.,
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`Petitioner,
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`v.
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`VOXX INTERNATIONAL CORPORATION,
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`Patent Owner.
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`________________
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`Case IPR2016-01070
`Patent 7,245,274
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`________________
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107
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`IPR2016-01070
`U.S. Patent No. 7,245,274
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`TABLE OF CONTENTS
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`EXHIBIT LIST ............................................................................................................................................. ii
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`I.
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`INTRODUCTION ............................................................................................................................... 1
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`II. OVERVIEW OF THE PETITION .................................................................................................... 1
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`III.
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`Claim Construction ......................................................................................................................... 1
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`A.
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`B.
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`“coupled” and “an internal headrest support structure” (claim 1) ............................................ 2
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`“wherein the base portion accommodates a media player” (claim 11) ....................................... 4
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`IV.
`Petitioner fails to demonstrate that Chang in view of Mathias renders obvious claims 1, 5-7,
`and 9 (Ground 1) .......................................................................................................................................... 5
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`1. Neither Chang nor Mathias disclose ‘an internal headrest support structure’ in claims 1, 5-7,
`and 9. ......................................................................................................................................................... 5
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`2. Chang teaches away from a combination that Petitioner is advocating ..................................... 6
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`V.
`Petitioner fails to demonstrate that Chang in view of Jost and Mathias renders obvious
`claims 1, 5-7, and 9 (Ground 2) ................................................................................................................... 7
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`1.
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`Jost (U.S. Patent 6,883,870, Ex. 1016) was considered by the Examiner .................................... 8
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`2. Chang teaches away from a combination that Petitioner is advocating ..................................... 8
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`VI.
`Petitioner fails to demonstrate that Chang in view of Tseng renders obvious claim 11
`(Ground 3) ..................................................................................................................................................... 9
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`1. Neither Chang nor Tseng disclose all the elements of claim 11. .................................................. 9
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`2. Chang teaches away from a combination that Petitioner is advocating ..................................... 9
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`VII.
`Petitioner fails to demonstrate that Swaim In View of Compaq Manual renders Obvious
`Claims 1, 5-7, and 9. (Ground 4) ................................................................................................................10
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`1. The cited prior art lacks a material limitation in all claims .......................................................10
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`CONCLUSION ............................................................................................................................................12
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`CERTIFICATE OF WORD COUNT ........................................................................................................13
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`CERTIFICATE OF SERVICE ..................................................................................................................14
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`IPR2016-01070
`U.S. Patent No. 7,245,274
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`Exhibit
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`Description
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`EXHIBIT LIST
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`2001
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`The New Oxford American Dictionary (Second Edition 2005)
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`ii
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`U.S. Patent No. 7,245,274
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`I.
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`INTRODUCTION
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`Patent Owner Voxx International Corporation (“Voxx” or “Patent Owner”)
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`submits this Preliminary Response to the petition (Paper 3, the “Petition”) filed on May
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`19, 2016 by Johnson Safety, Inc. (“Johnson Safety” or “Petitioner”). The Petition
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`challenges claims 1, 5, 6, 7, 9, and 11 (collectively, “the challenged claims”) of U.S.
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`Patent No. 7,245,274 (“the ‘274 patent”) on four grounds of alleged unpatentability.
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`The Patent Trial and Appeal Board should deny the Petitioner’s request to
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`institute an inter partes review (“IPR”) of the ‘274 patent because the grounds in the
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`Petition do not demonstrate a reasonable likelihood of any of the challenged claims being
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`invalid.
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`II.
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`OVERVIEW OF THE PETITION
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`The Petition presents four grounds of alleged unpatentability, those grounds are:
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`Ground 1: Chang in view of Mathias renders obvious claims 1, 5-7, and 9
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`Ground 2: Chang in view of Jost and Mathias renders obvious claims 1, 5-7, and 9
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`Ground 3: Chang in view of Tseng renders obvious claim 11
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`Ground 4: Swaim in view of Compaq Manual renders obvious claims 1, 5-7, and
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`9.
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`III. Claim Construction
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`For purposes of inter partes review "[a] claim in an unexpired patent shall be
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`given its broadest reasonable construction in light of the specification of the patent in
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`which it appears." 37 C.F.R. § 42.100(b); see Pet. 7. However, "[e]ven under the
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`broadest reasonable interpretation, the Board's construction cannot be divorced from the
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`specification and the record evidence, and must be consistent with the one that those
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`1
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`skilled in the art would reach." Microsoft Corp.V. Proxyconn, Inc., 789 F.3d 1292, 1297
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`(Fed. Cir. 2015). While reserving further discussion of claim construction as may be
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`appropriate for its § 42.120 Patent Owner Response if any trial is instituted, or as may
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`arise in another proceeding, Patent Owner notes here some of Petitioner’s violations of
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`these basic principles of claim construction.
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`A. “coupled” and “an internal headrest support structure” (claim 1)
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`Claim 1 requires “a base unit coupled to an internal headrest support structure.”
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`Petitioner proposes that the term “coupled” should be construed separately from “an
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`internal headrest support structure”, and then recombined to mean ‘a base unit connected
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`to a headrest support structure’, irrespective of how and where such connection is made,
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`to a headrest support structure, that can be either internal or external to a headrest. Pet.
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`9-11. Such construction is neither supported by the plain and ordinary meaning of the
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`claim terms nor the intrinsic evidence. Under Petitioner’s construction, “”a base unit
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`coupled to an internal headrest support structure” is broad enough to encompass
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`embodiments that couple media players to headrest support rods by way of straps.” Pet.
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`12. Petitioner’s contorted construction is solely for the purpose of eliminating the
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`“internal” limitation and rendering such claim requirement entirely meaningless.
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`The plain and ordinary meaning of “a base unit coupled to an internal headrest
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`support structure” can be understood by a person ordinary skilled in the art reading the
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`specification. For example, an embodiment shown in FIG. 3C (reproduced below) and in
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`Col. 3, 20-29 of the ‘274 patent:
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`As shown in FIG. 3[C], the docking station 303 is secured in the
`headrest 102, and more particularly to an internal headrest support
`structure 305. The docking station 303 can be secured by, for example, a
`catch 401 as shown in FIG. 4A and/or a screw 402 as shown in FIG. 4B.
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`One of ordinary skill in the art would recognize tOne of ordinary skill in the art would recognize that other means of hat other means of
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`securing the docking station can be used, for example, an adhesive securing the docking station can be used, for example, an adhesive securing the docking station can be used, for example, an adhesive
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`compound. The docking stationcompound. The docking station 303 secures a base portion of the video secures a base portion of the video
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`system 301, and allows a video screen portion, and allows a video screen portion 306 to pivot away from the to pivot away from the
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`base portion. Ex. 1001 Col.Ex. 1001 Col. 3, 20-29.
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`Fig. 3C of the ‘274 Patent (Ex. 1001)
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`This claim term does not need construction. One of ordinary skill in the art would readily his claim term does not need construction. One of ordinary skill in the art would readily his claim term does not need construction. One of ordinary skill in the art would readily
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`understand the base unit is securedsecured to the headrest via attachment to a support structuresupport structure
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`inside of the headrest.
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`In stark contrast, Petitioner’s In stark contrast, Petitioner’s contorted construction removes the term “internal” the term “internal”
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`from the claim, so that the claim would from the claim, so that the claim would “encompass embodiments that couple media embodiments that couple media
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`players to headrest support rodsplayers to headrest support rods [external to the headrest] by way of straps”, essentially , essentially
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`as shown in Fig. 7 of Swaim, Ex. 100Fig. 7 of Swaim, Ex. 1001 (reproduced here).
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`Fig. 7 of Swaim (Ex. 1011)
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`The removal of any claim limitation The removal of any claim limitation and rewriting the claim to eliminate eliminate a
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`limitation would be improper, even under the broadest reasonable interpretation awould be improper, even under the broadest reasonable interpretation awould be improper, even under the broadest reasonable interpretation and
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`inconsistent with the constructionconstruction that those skilled in the art would reach. The Board that those skilled in the art would reach. The Board
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`should reject the Petitioner’s proposed constshould reject the Petitioner’s proposed construction of the terms in claim 1.
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`B. “wherein the base portion accommodates a media player” (claim 11)
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`“wherein the base portion accommodates a media player” (claim 11)“wherein the base portion accommodates a media player” (claim 11)
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`The `274 patent discloses a headrest mountable video system that comprises a scloses a headrest mountable video system that comprises a scloses a headrest mountable video system that comprises a
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`base unit or portion coupled to an internal headrest support structure. The base portion base unit or portion coupled to an internal headrest support structure. The base portion base unit or portion coupled to an internal headrest support structure. The base portion
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`houses a media player as illustrated in Figures 3A, 3B, 3C, 3D, 5D, and 9. Ex. 1001.
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`This claim term does not need construction. One of ordinary skill in the art would
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`understand the base portion is sized “to provide sufficient space for” the media player.
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`Claim 11 states “the base portion accommodates a media player.”. According to The
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`New Oxford American Dictionary (Second Edition 2005), a plain and ordinary meaning
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`of accommodate is to “provide lodging or sufficient space for.” See Exhibit 2001. Patent
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`Owner’s proposed construction is logical and consistent with the specification and
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`drawings of the `274 Patent.
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`Here again, Petitioner contorts the claim terms. Petitioner’s proposed
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`construction adds limitations into claim 11. Petitioner adds the restrictive limitation “the
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`base portion, and not the display, incorporate a media player.” Pet. 12-13. Claim 11
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`requires “the base portion accommodates a media player” but does not include “and not
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`the display.” Ex. 1001, 6:41-47. Adding such limitation in the claim and rewriting the
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`claim to require additional features would be improper, even under the broadest
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`reasonable interpretation, and inconsistent with the interpretation that one skilled in the
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`art would reach. The Board should reject the Petitioner’s proposed construction of the
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`terms in claim 11.
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`IV.
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`Petitioner fails to demonstrate that Chang in view of Mathias renders
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`obvious claims 1, 5-7, and 9 (Ground 1)
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`1.
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`Neither Chang nor Mathias disclose ‘an internal headrest support
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`structure’ in claims 1, 5-7, and 9.
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`During prosecution of the application leading to the ‘274 Patent, the Examiner
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`considered both Chang and Mathias (Pet. 13-14), and allowed the claims to grant in view
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`of amendments and arguments made by Applicant. Claim 1 of the ‘274 Patent is
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`independent and claims 5-7 and 9 depend from claim 1. Claim 1 recites, inter alia, “a
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`base unit coupled to an internal headrest support structure”. Neither Chang nor Mathias
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`disclose “an internal headrest support structure” as claimed in claims 1, 5-7, and 9.
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`Chang discloses a headrest with a monitor housing disposed within a headrest, but
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`there is no description nor showing anywhere in Chang of any “internal headrest support
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`structure”. Not having any evidence that Chang discloses any “internal headrest support
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`structure”, Petitioner strains to posit that Chang explicitly discloses securing the housing
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`to the interior of the headrest” (Pet. 18-20). But securing to an interior of a headrest does
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`not equate to securing to an internal headrest support structure. Indeed, recognizing such
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`deficiency in Chang, Petitioner attempts to cure such deficiency by adding Jost (to be
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`further discussed in Section V below for Ground 2), and in doing so, admits that
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`“[h]owever, Chang only implicitly discloses the internal headrest support structure.” Pet.
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`40.
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`Mathias discloses a video display system in an overhead console. Mathias does
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`not disclose a headrest, much less an internal headrest support structure.
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`Chang and/or Mathias lack a material limitation in all challenged claims, and the
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`Petition based on Ground 1 should be denied.
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`2.
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`Chang teaches away from a combination that Petitioner is advocating
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`The Petition based on Ground 1 should be denied for another reason. Claim 1
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`further requires, “a door pivotally connected to the base unit by a hinge, the door
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`comprising a display and a media player…”. Chang fails to disclose “the door
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`comprising a display and a media player”. Petitioner argues that Mathias cures this
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`deficiency.
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`In enumerating problems with prior art monitors, Chang teaches that additional
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`depth beyond the thickness of the screen structure is required within a headrest to
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`accommodate the prior art monitors, and that the extra thickness is disadvantageous
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`"because limited space is available within a headrest.”
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`Chang further states:
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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
`head rest that protrudes into the rear passenger area presents an obstacle to
`rear seat passengers. Therefore, a headrest-mounted monitor desirablv
`occupies minimal space. Chang, Ex. 1007, 15:15-28 (emphasis added).
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`To avoid adding extra thickness or size to the headrest, Chang teaches positioning
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`the media player remote from the headrest, including “beneath the front seat”, “in the
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`dashboard”, “the trunk”, or “mounted overhead”. See Ex. 1007, 5:16-34.
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`Thus, a person ordinary skilled in the art reading Chang would be taught away
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`from mounting both a media player and a display to a headrest, and would not be
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`motivated to combine the teachings of Chang and Mathias. The Petition based on
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`Ground 1 should be denied for this additional reason.
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`V.
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`Petitioner fails to demonstrate that Chang in view of Jost and Mathias
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`renders obvious claims 1, 5-7, and 9 (Ground 2)
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`1.
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`Jost (U.S. Patent 6,883,870, Ex. 1016) was considered by the Examiner
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`Recognizing that Chang fails to disclose an internal headrest support structure,
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`Petitioner attempts to cure such deficiency by adding Jost. See Section IV (1) and Pet. 40.
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`Petitioner represents that Jost was not considered by the Examiner. Pet. 14. As can be
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`seen listed on the front page of Jost, Ex. 1016, item (87), the ‘870 patent claims priority
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`to a PCT application which was published as PCT Pub. No.: WO02/074577. During
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`prosecution of the application leading to the ‘274 patent, Patent Owner’s representative
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`submitted the Jost PCT publication WO02/074577 along with an Information Disclosure
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`Statement dated February 3, 2006. Ex. 1002: 191, and the Examiner indicated that he
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`considered the Jost reference on July 25, 2006. Ex. 1002: 165. No material differences
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`exist between the Jost PCT publication and the Jost reference. Thus, the Examiner
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`considered all the teachings from references Chang, Mathias and Jost, prior to allowing
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`the challenged claims to grant in view of amendments and arguments made by Applicant.
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`Therefore, one cannot reasonably reach the conclusion that the Examiner would not have
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`granted the claims if he had considered the teachings of Jost. Patent Owner respectfully
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`urges the Board to place extra weight on, and agree with, the Examiner’s decision to
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`allow the claims over the considered references, and deny the Petition based on Ground
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`2.
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`2.
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`Chang teaches away from a combination that Petitioner is advocating
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`Assuming arguendo, that Chang’s failure to disclose an internal headrest support
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`structure was cured by Jost, Chang still lacks disclosure of a media player mounted to a
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`headrest. Petitioner argues that claim 1 would be met by combining Chang with Mathias,
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`which allegedly discloses “a door pivotally connected to the base unit by a hinge, the
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`door comprising a display and a media player…”. However, Chang teaches away from
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`such combination, as explained in detail above in Section IV (2). The Petition based on
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`Ground 2 should be denied for this additional reason.
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`VI.
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`Petitioner fails to demonstrate that Chang in view of Tseng renders obvious
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`claim 11 (Ground 3)
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`1. Neither Chang nor Tseng disclose all the elements of claim 11.
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`Claim 11 recites “A video system comprising:
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`a base portion positioned in a headrest of a vehicle seat, wherein the base portion
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`accommodates a media player comprising at least one of a DVD player, an MPEG player
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`or a video game player and a display pivotally connected to the base portion.
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`Chang does not disclose a DVD player, an MPEG player or a video game player
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`pivotally connected to the base portion. Pet. 51. Tseng does not disclose a base portion
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`in a headrest. Pet. 49.
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`2. Chang teaches away from a combination that Petitioner is advocating
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`Petitioner argues that all elements of claim 11 would be present if Chang was
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`modified to add the media player disclosed in Tseng. However, Chang cautions against
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`adding extra thickness or size to the headrest and thus teaches away from such
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`combination, as explained in detail above in Section IV (2). Thus, a person ordinary
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`skilled in the art reading Chang would be taught away from adding extra depth or size in
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`the base portion in the headrest to accommodate the media player, and would not be
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`motivated to combine the teachings of Chang and Tseng. For these reasons, the Petition
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`based on Ground 3 should be denied.
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`VII. Petitioner fails to demonstrate that Petitioner fails to demonstrate that Swaim In View of Compaq Manual View of Compaq Manual
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`renders Obvious Claims 1, 51, 5-7, and 9. (Ground 4)
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`1. The cited prior art lacks a mateThe cited prior art lacks a material limitation in all claims rial limitation in all claims
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`All claims challenged in Ground 4 require at leAll claims challenged in Ground 4 require at least “a base unit coupled to an “a base unit coupled to an
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`internal headrest support structure”internal headrest support structure”. None of the references cited in Ground 4 None of the references cited in Ground 4 of the
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`Petition discloses or suggestss an internal headrest support structure, much less “a base an internal headrest support structure, much less “a base
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`unit coupled to an internal headrest support coupled to an internal headrest support structure”.
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`Petitioner argues that SwaiPetitioner argues that Swaim discloses the above claimed feature:
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`Fig. 7 of Swaim
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`Petitioner states:
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`As shown in FIG. 7 above, straps 60 are looped around support rods for As shown in FIG. 7 above, straps 60 are looped around support rods for As shown in FIG. 7 above, straps 60 are looped around support rods for
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`the headrests of the front seats in a vehicle. Taking into account the proposed the headrests of the front seats in a vehicle. Taking into account the proposed the headrests of the front seats in a vehicle. Taking into account the proposed
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`claim construction provided herein for “internal headrest support structure” claim construction provided herein for “internal headrest support structure” claim construction provided herein for “internal headrest support structure”
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`presented in this Petition, coupling the storage bag, containing an entertainment
`device/base unit, satisfies the claim language “a base unit coupled to an internal
`headrest support structure.” Pet. 65.
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`In order for this argument to stand, Petitioner must rely on its erroneous
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`construction to remove the claim term internal from “internal headrest support structure”.
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`The removal of any claim limitation to rewrite the claim to eliminate this limitation
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`would be improper, even under the broadest reasonable interpretation, and if permitted,
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`would render claim requirements entirely meaningless. See discussion above in Section
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`III.A. No reasonable person of ordinary skill in the art, who the Petitioner posits as one
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`having a BS degree in electrical, mechanical, and/or computer science/engineering,
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`would read “coupled to an internal headrest support structure” to mean ‘straps looping
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`around support rods external to the headrest’.
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`The Compaq Manual is a manual of a Compaq portable computing device. This
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`reference makes no mention of a headrest support structure of any kind.
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`Accordingly, the art cited in Ground 4 lacks a material limitation in all claims
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`challenged. The Petition based on Ground 4 should be denied.
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`CONCLUSION
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`For the foregoing reasons, the Petition has failed to show that, in light of the prior
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`art references it cited, it is likely to show by a preponderance of evidence that the
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`challenged claims of the ‘274 patent are invalid. The Patent Owner respectfully urges the
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`Board to deny the instant Petition.
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`Dated: August 25, 2016 Respectfully submitted,
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`By: /Frank Chau/
` Frank Chau
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` Registration No. 34,136
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` F. Chau & Associates LLC
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` 130 Woodbury Rd.
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` Woodbury, NY 11797
` (516) 692-8888
` chau@chauiplaw.com
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. §42.24(d), Patent Owner hereby certifies, in reliance
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`on the word count of the word-processing system (Microsoft Office Word 2010)
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`used to prepare this preliminary response, that the number of words in this paper
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`is 2,630. This word count excludes the table of contents, table of authorities,
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`exhibit list certificate of word count, and certificate of service.
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` /s/ Frank Chau
` Frank Chau
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`Dated: August 25, 2016
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`IPR2016-01070
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that on this 25th day of August 2016, a copy of Patent
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`Owner’s Preliminary Response to Petition Pursuant to 37 C.F.R. §42.107 has
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`been served in its entirety via email on the following:
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`Gregory M. Howison
`John J. Arnott
`Keith D. Harden
`Howison & Arnott, L.L.P.
`5420 LBJ Freeway
`Suite 660
`Dallas, Texas 75240
`ipr@dalpat.com
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`Dated: August 25, 2016 Respectfully submitted,
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`By: /s/ Frank Chau
` Frank Chau
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` Registration No. 34,136
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` F. Chau & Associates LLC
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` 130 Woodbury Rd.
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` Woodbury, NY 11797
` (516) 692-8888
` chau@chauiplaw.com
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`14