UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`American Honda Motor Co., Inc.
`Petitioner
`
`v.
`
`Blitzsafe Texas, LLC
`Patent Owner
`
`
`Patent No. 7,489,786
`Filing Date: December 11, 2002
`Issue Date: February 10, 2009
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`
`
`
`
`Inter Partes Review No. IPR2016-01472
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
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`

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`TABLE OF CONTENTS
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`
`Page
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`B.
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`C.
`D.
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`
`Introduction ..................................................................................................... 1
`I.
`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a) .............................. 2
`III. The ‘786 Patent ............................................................................................... 2
`A.
`Summary of the ‘786 Patent ................................................................. 2
`B.
`Prosecution History of the ‘786 Patent ................................................ 4
`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b) ..................... 6
`A.
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes
`Review Is Requested ............................................................................ 6
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds
`On Which The Challenge to the Claims Is Based ................................ 6
`37 C.F.R. § 42.104(b)(3): Claim Construction ................................... 9
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable ....................................................................................... 10
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ............................... 10
`E.
`There Is a Reasonable Likelihood That at Least One Claim of the ‘786
`Patent Is Unpatentable .................................................................................. 10
`A. Ground 1: Claims 57, 60, 61, 64, and 65 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Bhogal, Berry, and
`Onishi ................................................................................................. 10
`1.
`Bhogal ...................................................................................... 11
`2.
`Berry ......................................................................................... 12
`3.
`Onishi ....................................................................................... 14
`4.
`Claim 57 ................................................................................... 15
`5.
`Claims 60 and 61...................................................................... 21
`6.
`Claims 64 and 65...................................................................... 23
`B. Ground 2: Claim 62 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Bhogal, Berry, Onishi, and Ohmura ........................ 24
`C. Ground 3: Claims 64 and 65 are Unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Bhogal, Berry, Onishi, and Okagaki ......... 26
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`-i-
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`IV.
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`V.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`D. Ground 4: Claims 1, 6, 7, 10, and 14 are Unpatentable under 35
`U.S.C. § 103(a) as obvious over Bhogal, Onishi, and Owens ........... 28
`1.
`Claims 1 and 14 ........................................................................ 30
`2.
`Claim 6 ..................................................................................... 34
`3.
`Claim 7 ..................................................................................... 35
`4.
`Claim 10 ................................................................................... 35
`Ground 5: Claim 5 is Unpatentable under 35 U.S.C. § 103(a) as
`obvious over Bhogal, Onishi, Owens, and Berry ............................... 37
`Ground 6: Claim 8 is Unpatentable under 35 U.S.C. § 103(a) as
`obvious over Bhogal, Onishi, Owens, and Ohmura ........................... 38
`G. Ground 7: Claim 10 is Unpatentable under 35 U.S.C. § 103(a)
`as obvious over Bhogal, Onishi, Owens, and Knobl ......................... 39
`H. Ground 8: Claims 1, 6, 7, 10, 14, 57, 60, and 61 are
`Unpatentable under 35 U.S.C. § 103(a) as obvious over JP
`‘954, Onishi, and Owens .................................................................... 41
`1.
`Claims 1, 7, and 14 .................................................................. 43
`2.
`Claim 6 ..................................................................................... 48
`3.
`Claim 10 ................................................................................... 49
`4.
`Claim 57 ................................................................................... 50
`5.
`Claim 60 and 61 ....................................................................... 53
`Ground 9: Claim 5 is Unpatentable under 35 U.S.C. § 103(a) as
`obvious over JP ‘954, Onishi, Owens, and Berry .............................. 54
`Ground 10: Claims 8 and 62 is Unpatentable under 35 U.S.C. §
`103(a) as obvious over JP ‘954, Onishi, Owens, and Ohmura .......... 56
`K. Ground 11: Claims 64 and 65 is Unpatentable under 35 U.S.C.
`§ 103(a) as obvious over JP ‘954, Onishi, Owens, and Okagaki ....... 57
`VI. Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(1) ............................... 58
`A.
`C.F.R. § 42.8(b)(a): Real Party-In-Interest ....................................... 58
`B.
`C.F.R. § 42.8(b)(2): Related Matters ................................................ 58
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`E.
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`F.
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`I.
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`J.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`C.
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`C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................ 59
`VII. Conclusion .................................................................................................... 59
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`-iii-
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`LIST OF EXHIBITS
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`Exhibit 1001: U.S. Patent No. 7,489,786 to Marlowe (“the ’786 patent”)
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`Exhibit 1002: File History of U.S. Patent No. 7,489,786 (Part 1 of 2)
`
`Exhibit 1003: Decision, Institution of Inter Partes Review, Paper 13, in Case
`IPR2016-00421 (July 7, 2016)
`
`Exhibit 1004: U.S. Patent No. 6,629,197 to Bhogal et al. (“Bhogal”)
`
`Exhibit 1005: U.S. Patent No. 6,559,773 to Berry (“Berry”)
`
`Exhibit 1006: Japanese Unexamined Patent Application Publication No. JP 2001-
`128280A to Onishi et al.
`
`Exhibit 1007: English Translation of Japanese Unexamined Patent Application
`Publication No. JP 2001-128280A to Onishi et al. (“Onishi”)
`
`Exhibit 1008: U.S. Patent Application Publication No. 2001/0028717 A1 to
`Ohmura et al. (“Ohmura”)
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`Exhibit 1009: European Patent Application No. EP 0 953 486 A2 to Okagaki et al.
`(“Okagaki”)
`
`Exhibit 1010: U.S. Patent Application Publication No. 2002/0084910 A1 to Owens
`et al. (“Owens”)
`
`Exhibit 1011: Japanese Unexamined Utility Model Application Publication No. JP
`H7-6954 to Ouchida
`
`Exhibit 1012: English Translation of Japanese Unexamined Utility Model
`Application Publication No. JP H7-6954 to Ouchida (“JP ‘954”)
`
`Exhibit 1013: U.S. Patent Application Publication No. 2001/0025376 to Knobl
`(“Knobl”)
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`Exhibit 1014: Declaration of James T. Geier (“Geier Decl.”)
`
`Exhibit 1015: File History of U.S. Patent No. 7,489,786 (Part 2 of 2)
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`-iv-
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`American Honda Motor Co., Inc. (“Petitioner”) respectfully requests inter
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`partes review under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100, of claims 1, 5,
`
`6, 7, 8, 10, 14, 57, 60, 61, 62, 64, and 65 of U.S. Patent No. 7,489,786 (“the ‘786
`
`patent”).
`
`The undersigned representative of Petitioner authorizes the Patent Office to
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`charge the $23,000 Petition Fee, along with any additional fees, to Deposit
`
`Account 503013, ref: 651377-600009. Thirteen claims are requested for review;
`
`accordingly no excess claim fees are required.
`
`I.
`
`Introduction
`
`The ‘786 patent is directed to audio device integration systems for
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`integrating after-market components with factory-installed or after-market car
`
`stereo systems. ‘786 patent, Ex. 1001, at 1:7-12. The systems claimed in the ‘786
`
`patent were neither new nor non-obvious when the ‘786 patent was filed. Two
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`petitions for inter partes review of the ‘786 patent were previously filed by Toyota
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`Motor Corporation. One of the petitions, in Case IPR2016-00422, was denied, and
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`the other petition, in Case IPR2016-00421, was instituted on claims 44 and 47.
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`This petition sets forth grounds of invalidity that are independent of, and distinct
`
`from, the grounds proffered in Toyota’s petitions. Each of these grounds herein
`
`are based upon patents or printed publications that were publicly available prior to
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`the filing date of the ‘786 patent. The prior art references relied upon in this
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`-1-
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`Petition are only a handful of the multitude of patents and printed publications
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`from the late 1990s and early 2000s focused on integrating after-market audio and
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`video devices to existing car stereo equipment. Petitioner hereby challenges the
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`patentability of claims 1, 5, 6, 7, 8, 10, 14, 57, 60, 61, 62, 64, and 65.
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`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘786 patent is available for inter partes review. This
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`Petition is being submitted within one year of the earliest service of a complaint for
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`patent infringement against Petitioner or its privies in Blitzsafe Texas, LLC v. Honda
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`Motor Co., Ltd. et al., No. 2:15-cv-1274 (E.D. Tex.) (the “Lawsuit”). American Honda
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`Motor Co., Inc., Honda of America Mfg., Inc., Honda Manufacturing of Alabama,
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`LLC, and Honda Manufacturing of Indiana, LLC are defendants in the Lawsuit, and
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`the earliest any of them, or any party in privity with Petitioner, was served was
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`July 22, 2015. Petitioner is not barred or estopped from requesting inter partes review,
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`nor is Petitioner in privity with any party who is barred or estopped from challenging
`
`the patent claims on the grounds identified herein.
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`III. The ‘786 Patent
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`Summary of the ‘786 Patent
`
`A.
`The ‘786 patent was filed on December 11, 2002, and issued on February 10,
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`2009. The ‘786 patent does not claim priority any earlier applications. The ‘786
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`patent is directed to an “audio device integration system” for integrating one or
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`-2-
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`more after-market audio devices with an existing OEM or after-market car stereo
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`systems. ‘786 patent, Ex. 1001, at Abstract. Once integrated, “control commands
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`can be issued at the car stereo and responsive data from the audio device can be
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`displayed on the car stereo.” Id. Examples of after-market audio devices that may
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`be integrated via the invention of the ‘786 patent include CD players, CD changers,
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`MP3 players, satellite receivers, and DAB receivers. Id. Additionally, one or
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`more auxiliary input sources can also be integrated, and a user can select between
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`the device or one or more auxiliary input sources by issuing selection commands
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`through the car stereo. Id.
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`The ‘786 patent sought to address a common problem in using after-market
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`devices with car stereos: original equipment manufacturers often produce car
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`stereos having CD players or CD changers that use proprietary buses and
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`protocols, which made the car stereos inoperable with after-market audio devices
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`not made by the same manufacturer. Id. at 1:21-36. The invention described in the
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`‘786 patent addressed this problem by receiving commands generated at the car
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`stereo and converting them into a format recognizable by the after-market audio
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`device, and receiving information from the audio device and converting it into a
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`format recognizable by the car stereo. Id. at 2:35-42. The invention described in
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`‘786 patent also generates a “device presence signal.” This signal is continuously
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`transmitted to the car stereo, and it prevents the car stereo from shutting off,
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`-3-
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`entering a sleep mode, or otherwise being unresponsive to signals and/or data from
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`the after-market device. Id. at 12:29-35.
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`Prosecution History of the ‘786 Patent
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`B.
`The application for the ‘786 patent, U.S. App. No. 10/316,961 (“the ‘961
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`application”), was filed on December 11, 2002. File History of ‘786 patent, Ex.
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`1002, at 1-85. In a first Office Action date June 5, 2006, all pending claims were
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`rejected on prior art grounds. Ex. 1002, at 204-230. The Examiner relied
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`primarily on U.S. Patent No. 6,993,615 (Falcon). Id. In response, the Applicant
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`distinguished Falcon on the basis that it failed to show an interface “connected
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`between a car stereo and an external audio source.” Ex. 1002, at 267 (Sept. 11,
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`2006 Amendment). The applicant also distinguished Falcon as “unconcerned with
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`integrating an external audio device, which is ordinarily alien to and incompatible
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`with a car stereo system, for use with the car stereo system.” Id.
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`In response, the Examiner issued another Office Action on November 14,
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`2006 rejecting all of the claims on new grounds, relying primarily on U.S. Patent
`
`No. 6,163,079 (Miyazaki). Ex. 1002, at 282-326. A final rejection was issued on
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`April 19, 2007, again relying primarily on Miyazaki. Ex. 1002, at 378-442.
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`In response to these Office Actions, the Applicant amended the independent
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`claims to specify the interface performed a “format” conversion of control
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`commands from the car stereo to the external device. Ex. 1002, at 335-358 (Feb.
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`-4-
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`14, 2007 Amendment). The Applicant distinguished Miyazaki because its
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`interface was directed to devices that were “already compatible with each other.”
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`Ex. 1002 at 604 (Sept. 6, 2007 Amendment). The Applicant also amended some
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`claims to add “connectors” to the interface (e.g., claim 1 amended to add a “first
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`connector” that connects the interface to the “car stereo” and a “second connector”
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`that connects the interface to the after-market (external) device) Ex. 1002, at 575-
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`601.
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`On February 20, 2008, the Examiner issued a Final Office Action rejecting
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`all of the pending claims on new grounds, relying primarily on U.S. Patent
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`Application Publication No. 2002/0084910 (Owens) (Ex. 1010) and U.S. Patent
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`No. 6,175,789 (Beckert). Ex. 1015 at 616-665. With respect to claim 1 of the
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`application, the Examiner found that Owens disclosed all of the limitations, but
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`that Owens did not disclose expressly that the interface comprises a
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`microcontroller programmed to execute code portions to process control
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`commands into compatible formats between the car stereo and after-market
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`devices. Ex. 1015 at 619-621. The Examiner found that Beckert disclosed the
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`missing limitation. Id.
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`Thereafter, the Applicant filed an Amendment on April 21, 2008. Ex. 1015
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`at 679-705. The amendments made included additional language requiring that the
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`microcontroller was “pre-programmed” to perform the recited format conversion
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`operations (e.g., “for remotely controlling the after-market audio device…” and
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`“for receiving data from the after-market audio device…” E.g., Ex. 1015 at 679-
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`680 (amendment to claim 1); id. at 706-09 (arguing “pre-programmed” aspect as
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`basis for overcoming prior art). A Notice of Allowance followed on July 31, 2008.
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`Ex. 1015 at 1035-41.
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`IV.
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`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b)
`A.
`Requested
`Inter partes review is requested for claims 1, 5, 6, 7, 8, 10, 14, 57, 60, 61,
`
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes Review Is
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`62, 64, and 65 of the ‘786 patent.
`
`B.
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds On
`Which The Challenge to the Claims Is Based
`Inter partes review is requested in view of the following prior art references:
`
` U.S. Patent No. 6,629,197 to Bhogal et al. (“Bhogal”) (Ex. 1004). Bhogal was
`
`filed on November 3, 2000, and issued on September 30, 2003, and is prior art
`
`under 35 U.S.C. § 102(e).
`
` U.S. Patent No. 6,559,773 to Berry (“Berry”) (Ex. 1005). Berry was filed on
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`December 21, 1999, and issued on May 6, 2003, and is prior art under § 102(e).
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` Japanese Unexamined Patent Application Publication No. JP 2001-128280A to
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`Onishi et al. (“Onishi”) (Exs. 1006 and 1007 (English translation)). Onishi was
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`published on May 11, 2001, and is prior art under 35 U.S.C. § 102(b).
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`-6-
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` U.S. Patent Application Publication No. 2001/0028717 A1 to Ohmura et al.
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`(“Ohmura”) (Ex. 1008). Ohmura was published on October 11, 2001, and is prior
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`art under 35 U.S.C. § 102(b).
`
` European Patent Application No. EP 0 953 486 A2 to Okagaki et al.
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`(“Okagaki”) (Ex. 1009). Okagaki was published on November 11, 1999, and is
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`prior art under 35 U.S.C. § 102(b).
`
` U.S. Patent Application Publication No. 2002/0084910 A1 to Owens et al.
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`(“Owens”) (Ex. 1010). Owens was filed on December 29, 2000, and was
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`published on July 4, 2002, and is prior art under 35 U.S.C. §§ 102(a) & (e).
`
` Japanese Unexamined Utility Model Application Publication JP H7-6954 to
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`Ouchida (“JP ‘954”) (Exs. 1011 and 1012 (English translation)). JP ‘954 was
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`published on January 31, 1995, and is prior art under 35 U.S.C. § 102(b).
`
` U.S. Patent Application Publication No. 2001/0025376 to Knobl (“Knobl”) (Ex.
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`1013). Knobl was published on September 27, 2001, and is prior art under 35
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`U.S.C. § 102(b).
`
`The specific statutory grounds on which the challenge to the claims is based
`
`and the patents or printed publications relied upon for each ground are as follows:
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`Ground 1: Claims 57, 60, 61, 64, and 65 are unpatentable under 35 U.S.C. §
`
`103(a) as obvious over Bhogal, Berry, and Onishi.
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`Ground 2: Claim 62 is unpatentable under 35 U.S.C. § 103(a) as obvious
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`-7-
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`over Bhogal, Berry, Onishi, and Ohmura.
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`Ground 3: Claims 64 and 65 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious over Bhogal, Berry, Onishi, and Okagaki.
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`Ground 4: Claims 1, 6, 7, 10, and 14 are unpatentable under 35 U.S.C. §
`
`103(a) as obvious over Bhogal, Onishi, and Owens.
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`Ground 5: Claim 5 is unpatentable under 35 U.S.C. § 103(a) as obvious
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`over Bhogal, Onishi, Owens, and Berry.
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`Ground 6: Claim 8 is unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over Bhogal, Onishi, Owens, and Ohmura.
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`Ground 7: Claim 10 is unpatentable under 35 U.S.C. § 103(a) as obvious
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`over Bhogal, Onishi, Owens, and Knobl.
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`Ground 8: Claims 1, 6, 7, 10, 14, 57, 60, and 61 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over JP ‘954, Onishi, and Owens.
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`Ground 9: Claim 5 is unpatentable under 35 U.S.C. § 103(a) as obvious
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`over JP ‘954, Onishi, Owens, and Berry.
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`Ground 10: Claims 8 and 62 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious over JP ‘954, Onishi, Owens, and Ohmura.
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`Ground 11: Claims 64 and 65 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious over JP ‘954, Onishi, Owens, and Okagaki.
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`37 C.F.R. § 42.104(b)(3): Claim Construction
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`C.
`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this
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`review, Petitioner construes the claim language such that the claims are given their
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`broadest reasonable interpretation in light of the specification of the ‘786 patent.
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`For terms not specifically listed and construed below, Petitioner interprets them for
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`purposes of this review in accordance with their plain and ordinary meaning under
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`the required broadest reasonable interpretation.
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` “interface” – In the Board’s Decision instituting review in IPR2016-00421
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`(the “-00421 Decision”) (Ex. 1003), the Board adopted the construction “a physical
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`unit that connects one device to another and that has a functional and structural
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`identity separate from that of both connected devices,” and Petitioner adopts the
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`same for the purposes of this Petition. Ex. 1003 at 12-15.
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`“portable” –In the -00421 Decision, the Board adopted the construction
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`“capable of being carried by a user,” and Petitioner adopts the same for the
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`purposes of this Petition. Ex. 1003 at 11-12.
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`“device presence signal” – In the -00421 Decision, the Board adopted the
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`construction “a signal indicating that an audio device (claim 57) or video device
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`(claim 86) or portable audio device (claim 92), other than the car stereo, is
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`connected to the interface,” and Petitioner adopts the same for the purposes of this
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`Petition. Ex. 1003 at 16-18.
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`Because the broadest reasonable interpretation standard for claim
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`construction in inter partes review proceedings is different than that used during a
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`U.S. district court litigation, see Cuozzo Speed Techs. v. Lee, __ S. Ct. __, 2016
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`WL 3369425, at *12-14 (June 20, 2016), Petitioner reserves the right to argue a
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`different claim construction in litigation for any term of the ‘786 patent as
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`appropriate in that proceeding.
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`D.
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`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable
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`
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`An explanation of how claims 1, 5, 6, 7, 8, 10, 14, 57, 60, 61, 62, 64, and 65 are
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`unpatentable is set forth below at Section V.
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`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`A List of Exhibits supporting this Petition is included. Included at Exhibit 1014
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`is a Declaration of James T. Geier under 37 C.F.R. § 1.68 (hereinafter, “Geier Decl.”).
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`Unless otherwise noted, citations to page numbers in this Petition are to the page
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`numbers appended to each page of the exhibits and not to any page numbers present in
`
`the original document.
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`V.
`
`There Is a Reasonable Likelihood That at Least One Claim of the ‘786
`Patent Is Unpatentable
`A. Ground 1: Claims 57, 60, 61, 64, and 65 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Bhogal, Berry, and Onishi
`
`Claims 57, 60, 61, 64, and 65 are obvious over Bhogal, Berry, and Onishi.
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`Bhogal was cited by the Applicant during prosecution of the ‘786 patent but was
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`not addressed by the Examiner. Neither Berry nor Onishi were of record during
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`prosecution. For those claims shown to be rendered obvious in light of a
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`combination of prior art, the subject matter claimed is no more than “[t]he
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`combination of familiar elements according to known methods” that “do[] no more
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`than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
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`(2007).
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`Bhogal
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`1.
`Bhogal describes a digital audio unit that can emulate a CD-changer unit.
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`Bhogal, Ex. 1004, at 3:1-20. Like the ‘786 patent, Bhogal recognized that, at the
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`time Bhogal was filed in November 2000, “CD-changer units and car stereo units
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`[were] designed so that they are compatible only if they are made by the same
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`manufacturer.” Id. at 4:57-62. Bhogal addressed this problem via an “emulator
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`unit” that “resides as an intermediary unit between” a car stereo (also referred to as
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`the “base unit”) and a CD-changer. Id. at 5:34-39. In one mode of operation
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`called the “pass-thru mode,” the emulator unit “receives and forwards commands
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`from the [car stereo] to the CD-changer unit and also receives and forwards data
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`from the CD-changer unit to the [car stereo.]” Id. at 7:39-42. The emulator unit
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`can process commands from the car stereo into a format understandable by the CD-
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`changer, and it can process data from the CD-changer into a format understandable
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`by the car stereo. Id. at 7:12-35, 8:21-29. Figure 2 below shows the interaction
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`between the car stereo, emulator unit, and CD-changer of Bhogal.
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`Id. at FIG. 2.
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`Additionally, Bhogal describes an alternative mode of operation called the
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`“end-unit mode,” where the “emulator unit replaces the CD-changer unit entirely
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`and emulates the presence of a CD-changer unit.” Id. at 47-49. In the end-unit
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`mode, digital audio files (including MP3 files) can be stored on the emulator unit
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`itself, and upon receiving commands from the car stereo unit, can return digital
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`audio data or other data stored in the emulator unit. Id. at 6:45-48; 7:54-8:1.
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`Because audio files may be stored in emulator unit, it may also be used as a stand-
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`alone, portable, digital audio player. Id. at 10:29-32. In yet another mode of
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`operation called the “combination mode,” the emulator unit can act as an
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`intermediary between a CD-changer unit and car stereo in the pass-thru mode, but
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`it may also operate in the end-unit mode and send digital audio data stored in the
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`emulator itself to the car stereo unit. Id. at 8:4-29.
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`2.
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`Berry
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`Berry discloses an “electronic accessory display/control system” that can
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`interact with multiple devices on a dynamic local network in a vehicle. Ex. 1005,
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`at Abstract, 2:1-3. The system allows new portable electronic accessory devices to
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`connect to and interact with other devices on the network. Id. at Abstract, 2:43-59.
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`Examples of such portable devices include a cellular phone, MP3 audio player, and
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`a palm-sized PC or personal digital assistant. Id. at 3:51-54. The system includes
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`a control panel/display subsystem 10 with “standard embedded features such as an
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`audio tuner or CD player.” Id. at 2:48-52, 2:60-61, FIG. 1. A human-machine
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`interface (HMI) controller inside the control panel/display subsystem 10 interfaces
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`and communicates with the devices on the network. Id. at 3:24-27. The HMI
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`controller has access to a memory which stores a plurality of “interface specifiers,”
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`or drivers. Id. at 3:27-31. Each interface specifier defines interaction between a
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`display subsystem and a particular portable device. Id. at 2:5-11, 3:27-31, 3:66-
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`4:6. Based on an identified display type and device type, the HMI controller loads
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`a corresponding interface specifier to support communication between the control
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`panel/display subsystem and the portable device. Id. at 3:27-39, 3:62-7:9, 5:14-40,
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`6:26-27, 6:45-50. Once communication is supported, the control panel/display
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`subsystem may interact with the portable device such as by “processing user input
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`events, processing device events, rendering graphic displays, and sending
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`commands to devices. Id. at 5:35-40.
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`3. Onishi
`Onishi describes an on-vehicle audio device, or a head unit, that may be
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`connected to a portable Mini Disc (MD) recorder/player. Ex. 1007, at [0002],
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`[0004], [0012]. The on-vehicle audio device contains a CD player as well as a
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`tuner. Id. at [0020]. The on-vehicle audio device may receive audio sound from
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`an external audio device via an AUX input terminal. Id. at [0020]. A user of the
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`on-vehicle audio device can choose between the CD player, tuner, or the input
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`from the AUX terminal as the audio source to be output from the speakers of the
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`vehicle. Id. at [0023], [0063]-[0065]. When the MD recorder/player is connected
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`to the on-vehicle audio device via the AUX terminal, sound from the MD
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`recorder/player can be sent to the on-vehicle audio device. Id. at [0026], [0067],
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`Additionally, display information from the MD recorder/player can also be sent to
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`the output on the on-vehicle audio device, id. at [0025], [0030], [0068], [0073], and
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`operation information signals from the on-vehicle audio device may be sent to the
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`MD recorder/player. Id. at [0026], [0028], [0069]-[0071]. Figure 5 of Onishi
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`depicts an MD recorder/player connecting, via headphone terminal 21, to on-
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`vehicle audio device 50:
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`Id. at FIG. 5, [0060], [0066]-[0068].
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`Claim 57
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`4.
`Claim 57 is obvious over the combination of Bhogal, Berry, and Onishi.
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`Claim 57 is directed to an "audio device integration system” comprising, inter alia,
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`(a) a first electrical connector connectable to a car stereo, (b) a second electrical
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`connector connectable to a portable MP3 player external to the car stereo, and (c)
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`and an interface connected between the first and second electrical connectors for
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`transmitting audio from a portable MP3 player to a car stereo.
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`Bhogal discloses a car stereo unit 202 (car stereo), a CD-changer unit 204,
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`and an emulator unit 206 (interface) that “resides as an intermediary unit between
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`them.” Ex. 1004, at 5:11-43, FIG. 2. Bhogal discloses “transmitting audio” from
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`the CD-changer unit to a car stereo, as one of the functions performed by emulator
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`unit 206 in Bhogal is “returning digital audio data” to the car stereo unit. Id. at
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`9:41-50, 7:36-46, 8:10-14. Bhogal further discloses that “[p]hysical cables may be
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`used to connect the emulator unit with the car stereo/base unit and/or the CD-
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`changer unit,” and also that the emulator unit is preferably a “portable” device. Id.
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`at 5:44-47; 4:46-47. A person of ordinary skill in the art would have understood
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`Bhogal to teach the use of electrical connectors to connect the emulator unit with
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`the car stereo and with the CD-changer unit via physical cables. Geier Decl., Ex.
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`1014, ¶ 45; see also id. at ¶ 44.
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`Although Bhogal describes a CD-changer unit being connected to a car
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`stereo via an interface, Bhogal does not expressly disclose a portable MP3 player
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`being connected to the car stereo via an interface, as required by claim 57. Bhogal
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`does teach, however, that emulator unit 206 itself can store digital MP3 audio files,
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`Ex. 1003 at 6:45-48, 7:54-60, and that it can be used as a “stand-alone, portable,
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`digital audio player.” Id. at 10:29-32. Nonetheless, Berry specifically teaches
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`integrating an “MP3 audio player 41” with a car stereo via the HMI controller in
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`the car stereo loading the appropriate interface specifier for the MP3 audio player.
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`See Berry, Ex. 1004, 3:51-57, 3:62-4:9. See also Geier Decl., Ex. 1014, ¶¶ 46-47.
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`It would have been obvious for one of ordinary skill in the art as of the filing
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`date of the ‘786 patent to combine Berry’s teaching of integrating a portable MP3
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`player to a car stereo with Bhogal’s teaching of integrating a CD-changer unit to a
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`car stereo via an emulator unit. Both Bhogal and Berry recognized a problem that
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`car stereos were typically designed in manufacture to operate with limited devices.
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`See Bhogal, Ex. 1004, 4:57-62; Berry, Ex. 1005, 1:39-45; Geier Decl., Ex. 1014, ¶
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`49. Bhogal also acknowledges that car stereos have difficulty integrating with
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`“newer portable digital audio device[s], such as an MP3 player.” Ex. 1004 at 1:66-
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`2:3. Bhogal’s emulator unit contains a CD-changer unit specification database 312
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`that stores the specifiers for integrating CD-changer units with car stereos. See id.
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`at 7:1-4, FIG. 3. Berry uses the same concept of “interface specifiers” stored in a
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`memory to integrate portable devices like MP3 players to a car stereo. See Berry,
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`Ex. 1005, 3:62-4:9. It would have been obvious for one of ordinary skill in the art
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`to apply the techniques taught in Berry to modify the emulator unit in Bhogal to
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`interface not only with after-market CD-changer units, but also with various other
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`portable devices including portable MP3 players. Geier Decl., Ex. 1014, ¶ 51.
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`Such modification would have increased the versatility of the emulator unit of
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`Bhogal, and would have yielded a predictable result. Id.; see also id. at ¶¶ 46-51.
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`Claim 57 additionally requires that the “interface” includes a microcontroller
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`pre-programmed to execute (i) a first pre-programmed code portion for generating
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`a device presence signal and transmitting the signal to the car stereo to maintain
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`the car stereo in an operational state (the “device presence signal” limitation), and
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`(ii) a second pre-programmed code portion for remotely controlling the MP3
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`player using the car stereo by receiving a control command from the car stereo
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`through said first electrical connector in a format incompatible with the MP3
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`player, processing the control command into a formatted control command
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`compatible with the MP3 player, and transmitting the formatted command to the
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`MP3 player through said second electrical connector for execution by the MP3
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`player (the “control command format conversion” limitation).
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`Bhogal teaches an interface with a pre-programmed microcontroller. Bhogal
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`discloses that its emulator unit is “preferably embodied in a mobile or portable
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`package and has a basic computer architecture,” Ex. 1004, at 3:48-50, including a
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`CPU, RAM, ROM, and other hardware. Id. at 3:64-4:7. The functionality of the
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`emulator unit is achieved through the hardware and software (which may be stored
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`in the RAM or ROM) within the emulator u