IPR2016-01472
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`PATENT NO. 7,489,786
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`American Honda Motor Co., INC.
`Petitioner
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
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`
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`Patent No. 7,489,786
`Issue Date: Feb. 10, 2009
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`BLITZSAFE TEXAS, LLC’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,489,786
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`Case No. IPR2016-01472
`__________________________________________________________________
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`I.
`II.
`III.
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`TABLE OF CONTENTS
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`Page No(s).
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`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 3
`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-4 AND
`THE PETITION SHOULD BE DENIED. ...................................................... 4
`A.
`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ........................................................................................................ 4
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`B.
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`Claims 57, 60, 61, 64, and 65 Are Not Obvious over Bhogal,
`Berry, and Onishi (Ground 1) ............................................................... 6
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`1.
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`2.
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`3.
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`4.
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“First” and “Second” “Electrical Connections” Required
`by the Claims .............................................................................. 6
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“Pre-Programmed Code Portion” for “Command
`Conversion” Required by the Claims ......................................... 8
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“Device Presence Signal” Required by the Claims .................. 12
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“Data Conversion” Pre-programmed Code Portion
`(Claims 60 and 61) .................................................................... 16
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`C.
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`D.
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`E.
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`Claim 62 Is Not Obvious over Bhogal, Berry, Onishi, and
`Ohmura (Ground 2) ............................................................................. 17
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`Claims 64 and 65 Are Not Obvious over Bhogal, Berry, Onishi,
`and Okagaki (Ground 3) ...................................................................... 18
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`Claims 1, 6, 7, 10, and 14 Are Not Obvious over Bhogal,
`Onishi, and Owens (Ground 4) ........................................................... 18
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`Owens does not teach or disclose “a third connecter that
`is electrically connected to one or more auxiliary input
`sources external to the car stereo and the after-market
`audio device” or “a code portion in the microcontroller
`within the interface for switching to one or more
`auxiliary input sources connected to the third electrical
`connector” ................................................................................. 19
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`1.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`Claim 5 Is Not Obvious over Bhogal, Onishi, Owens, and Berry
`(Ground 5) ........................................................................................... 21
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`Claim 8 Is Not Obvious over Bhogal, Onishi, Owens, and
`Ohmura (Ground 6) ............................................................................. 22
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`Claim 10 Is Not Obvious over Bhogal, Onishi, Owens, and
`Knobl (Ground 7) ................................................................................ 23
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`Claims 1, 6, 7, 10, 14, 57, 60, 61 Are Not Obvious over JP
`’954, Onishi, and Owens (Ground 8) .................................................. 23
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`Claim 5 Is Not Obvious over JP '954, Onishi, Owens, and Berry
`(Ground 9) ........................................................................................... 27
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`Claims 8 and 62 Are Not Obvious over JP ’954, Onishi, Owens,
`and Ohmura (Ground 10) .................................................................... 28
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`L.
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`Claims 64 and 65 Are Not Obvious over JP ’954, Onishi,
`Owens, and Okagaki (Ground 11)....................................................... 29
`IV. CONCLUSION .............................................................................................. 29
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB, June 26, 2015) .............................................................. 6
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`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) ..................................... 19, 20, 24, 25, 29, 30, 31
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`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB, Aug. 29, 2014) .............................................................. 7
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 4, 5, 6
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 6
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 6, 7
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`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939 (PTAB, Dec. 17, 2014) .............................................................. 7
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`Toyota Motor Corporation v. Blitzsafe Texas, LLC,
`IPR2016-00421 (PTAB, July 6, 2016) ........................................................... 5, 23
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`Whole Space Indus. v. Zipshade Indus.,
`IPR2015-00488 (PTAB, July 24, 2015) ........................................................... 6, 7
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`Federal Statutes
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`35 U.S.C. § 103 .......................................................................................................... 5
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`35 U.S.C. § 314(a) ..................................................................................................... 5
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`Other Authorities
`37 C.F.R. § 1.75(c) ............................................................................................passim
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`37 C.F.R. § 42.6(a)(3) ............................................................................................ 5, 7
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`37 C.F.R. § 42.104(b) ................................................................................................ 4
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`I.
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`INTRODUCTION
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`On July 21, 2016, American Honda Motor Co., Inc. (“Honda”) submitted a
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`Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent
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`No. 7,489,786 (Ex. 1001, “the ’786 Patent”), challenging Claims 1, 5, 6, 7, 8, 10,
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`14, 57, 60, 61, 62, 64, 65 (“the Challenged Claims”). Petitioner on the same day
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`also filed an additional Petition alleging unpatentability of the related U.S. Patent
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`No. 8,155,342 (“the ’342 Patent”).
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`Most of the Challenged Claims have already survived multiple attacks by
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`Toyota, Petitioner’s co-defendant in the related Texas Litigation. See Pet. at 1.
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`The Board denied institution as to all claims in IPR2016-00422 and as to all claims
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`in IPR2016-00421, except for Claims 44 and 47 (which relate to a “docking
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`station”). Volkswagen followed up with its own volley of Petitions including
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`IPR2016-01448 against some of the same claims of the ’786 Patent. Honda
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`repeats Toyota’s and Volkswagen’s mistakes, and this latest salvo of redundant art
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`succumbs to at least the same critical deficiencies as those of the preceding
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`Petitions.
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`The Petition should be denied because there is not a reasonable likelihood
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`that Petitioner will succeed on any of its four grounds of unpatentability, all of
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`which rely on obviousness combinations based on the amalgam of references
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`Petitioner sets forth. None of these references teach or disclose the “interface” of
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`the Challenged Claims. All of the claims, other than Claims 44 and 47, require a
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`“pre-programmed code portion” that performs command conversion. All of the
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`claims also require either a “pre-programmed code portion” to generate a device
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`presence signal, or a “second pre-programmed code portion” that performs data
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`reformatting. None of the references teach these pre-programmed code portions,
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`and Petitioner does not even attempt to locate and point to code portions in the
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`amalgam of references. Instead, Petitioner resorts to broad generalizations and
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`base conclusions that reek of hindsight.
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`In view of these and other fundamental deficiencies, Petitioner’s request for
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`inter partes review should be denied for at least the following reasons addressed
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`more fully below in this Preliminary Response:
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`(1) The Petition does not “specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon,” as required by 37
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`C.F.R. § 42.104(b)(4), because each Ground has at least one of the following
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`deficiencies: (i) failing to map each claim term to a specific teaching from an
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`asserted reference; (ii) providing citations to the asserted references that do not
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`teach the claim elements against which such citations are applied; and
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`(iii) mischaracterizing the citations to the asserted references.
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`(2) The Petition fails to identify the difference(s) between the claims and the
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`asserted references as required by Graham v. John Deere Co., 383 U.S. 1, 17-18
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`PATENT NO. 7,489,786
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`(1966).
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`(3) The Petition fails to identify the level of skill in the art as required by
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`Graham, 383 U.S. 1, 17–18.
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`(4) The Petition improperly attempts to support its assertions of obviousness
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`with mere conclusory statements and by impermissibly incorporating by reference
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`arguments from the Geier Declaration (Ex. 1014) in violation of 37 C.F.R.
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`§ 42.6(a)(3).
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`Due to at least these deficiencies, the Petition does not establish “a
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`reasonable likelihood that the Petitioner would prevail with respect to at least one
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`of the claims challenged in the petition.” 35 U.S.C. § 314(a). Patent Owner
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`explicitly reserves the right to provide further distinctions between the prior art and
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`the Challenged Claims. The deficiencies of the Petition noted herein, however, are
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`sufficient for the Board to find that Petitioner has not met its burden to
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`demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
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`II. CLAIM CONSTRUCTION
`For the purposes of this review, Respondent adopts the constructions set
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`forth in the Board's Decision IPR2016-00421.
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`III. PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-4 AND
`THE PETITION SHOULD BE DENIED.
`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103.
`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`skill in the art, and (4) where in evidence, so-called secondary considerations.
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`Graham, 383 U.S at 17-18. The Board has held that a failure to identify the
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`differences between the claimed subject matter and the prior art is fatal to an
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`obviousness challenge. See, Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
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`00355, Decision Denying Institution of Inter Partes Review, Paper 9 at 9-10
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`(PTAB, June 26, 2015) (denying institution for failure to identify the differences
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`between the claimed subject matter and the prior art).
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`Furthermore, in proposing that a person of ordinary skill in the art at the time
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`of the invention would have combined the references in a particular way to meet
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`the claimed invention, an obviousness analysis must support the proposed
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`combination with “some articulated reasoning with some rational underpinning.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006)). A proposed combination cannot be supported
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`based on “mere conclusory statements.” In re Kahn, 441 F.3d at 988. In a petition
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`IPR2016-01472
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`seeking institution of an inter partes review, “articulated reasons with rational
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`underpinnings” must be found in the petition itself. Whole Space Indus. v.
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`Zipshade Indus., IPR2015-00488, Decision Denying Institution of Inter Partes
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`Review, Paper 14 at 15 (PTAB, July 24, 2015) (“[C]onclusory labels do not
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`substitute for a fact-based analysis in the Petition establishing what is being
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`modified, and why it would have been obvious to a person of ordinary skill to
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`make the modification”). Id. at 17. The arguments needed to support a conclusion
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`of obviousness may not be incorporated by reference to another document. 37
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`C.F.R. §42.6(a)(3) (“Arguments must not be incorporated by reference from one
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`document into another document.”); Cisco Sys., Inc., v. C-Cation Techs., LLC,
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`IPR2014-00454, Decision Denying Institution of Inter Partes Review, Paper 12 at
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`10 (PTAB, Aug. 29, 2014); see also, Plant Science, Inc. v. The Andersons, Inc.,
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`IPR2014-00939, Decision Denying Institution of Inter Partes Review, Paper 8 at
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`15 (PTAB, Dec. 17, 2014).
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`Petitioner’s obviousness arguments are woefully inadequate. Petitioner fails
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`to identify any differences between the prior art and the claims and leaves such
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`tasks to Patent Owner and to the Board. Moreover, the boilerplate used by
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`Petitioner does not pass muster under KSR. Even something as basic as the “level
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`of skill in the art” is left to the imagination––Petitioner does not include it. The
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`Petition should not be saved by the Geier Declaration, which is similarly
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`insufficient. Additionally, to the extent there were to be more robust arguments in
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`an expert declaration, merely citing to that declaration without discussing its
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`substance would be an impermissible incorporation by reference under 37 C.F.R.
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`§ 42.6(a)(3).
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`B. Claims 57, 60, 61, 64, and 65 Are Not Obvious over Bhogal,
`Berry, and Onishi (Ground 1)
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`Petitioner states that Bhogal “describes a CD-changer unit being connected
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`to a car via an interface” and “a microcontroller that operates by executing pre-
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`programmed code portions.” Pet. at 16, 17-19. Petitioner admits that Bhogal does
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`not disclose an MP3 player, as required by Claim 57, but states that Berry
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`“specifically teaches integrating an ‘MP3 audio player 41’ with a car stereo via the
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`HMI controller in the car stereo loading the appropriate interface specifier for the
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`MP3 audio player.” Pet. at 17. With regard to the device presence signal,
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`Petitioner states that “[n]either Bhogal or Berry discloses the device presence
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`signal limitation, but Onishi does.” Pet. at 19. As outlined below, Petitioner's
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`misrepresents these references which cannot be combined to include each
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`limitation set forth in the claims.
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`1.
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“First” and “Second” “Electrical Connections” Required
`by the Claims
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`Petitioner does not appear to argue that any of the references explicitly teach
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`or disclose any of the “electrical connections” required by the claims. Instead,
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`PATENT NO. 7,489,786
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`Petitioner states that “[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,” essentially
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`conceding that Berry and Onishi fall short of meeting this limitation. Pet. at 16.
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`Petitioner relies primarily on Figure 2 of Bhogal:
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`Ex. 1004 at Fig. 2. However, nothing in Bhogal indicates that the arrows in Figure
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`2 represent “connections” and Bhogal does not disclose either a “first” or “second”
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`“electrical connection.” Not only are these connections required limitations, but
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`the connections must also be arranged in a particular manner as the claims require.
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`Rather than confront the lack of disclosure, Petitioner chooses to simply ignore
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`these aspects of the claims. For this reason alone, Ground 1 fails.
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`Further, the Board previously construed “interface” to mean “a physical unit
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`that connects one device to another and that has a functional and structural identity
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`separate from that of both connected devices.” Ex. 1003 at 12-15. Petitioner
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`merely assumes that Bhogal’s emulator unit acts as an “interface” within the
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`boundaries specified by claim construction and provides no analysis as to whether
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`the emulator has a functional and structural identity separate from that of both
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`connected devices. In fact, the entire purpose of Bhogal’s invention is that the
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`emulator can assume the function of a portable device. Bhogal teaches that the
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`emulator can store digital MP3 audio files, Ex. 1004 at 6:45-48; 7:54-60, and states
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`that “[w]hile the emulator unit of the present invention may operate with some
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`functions similar to that of many commercially available portable digital audio
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`devices, the emulator unit also provides additional functionality . . . .” Ex. 1004
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`6:61-64 (emphasis added). Petitioner does not address these additional
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`functionalities of the emulator and, thus, does not argue that the devices in Bhogal
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`have the required separate structural and functional identity.
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`Accordingly, Ground 1 should be denied.
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`2.
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“Pre-Programmed Code Portion” for “Command
`Conversion” Required by the Claims
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`Each of the Challenged Claims requires a pre-programmed code portion to
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`perform command conversion. Petitioner appears to rely only on Bhogal for this
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`limitation. Petitioner states that “Bhogal teaches an interface with a pre-
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`programmed microcontroller,” essentially conceding that Berry and Onishi are
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`deficient in this regard. Pet. at 18.
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`As a preliminary matter, Petitioner fails to point to any evidence in Bhogal
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`of “a microcontroller” that is “pre-programmed.” Petitioner states:
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`Bhogal teaches an interface with a pre-programmed microcontroller.
`Bhogal discloses that its emulator unit is “preferably embodied in a
`mobile or portable package and has a basic computer architecture,”
`Ex. 1004, at 3:48-50, including a CPU, RAM, ROM, and other
`hardware. Id.at 3:64-4:7. The functionality of the emulator unit is
`achieved through the hardware and software (which may be stored in
`the RAM or ROM) within the emulator unit. Id. at 6:56-60. As such,
`Bhogal discloses a microcontroller that operates by executing pre-
`programmed code portions. Geier Decl., Ex. 1014, ¶ 52.
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`Pet. at 18-19. Petitioner incorrectly assumes that the disclosure of stored software
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`is commensurate with the disclosure of “a microcontroller” that executes the
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`claimed code portions. Moreover, Petitioner’s citation to Bhogal excerpts critical
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`language. Bhogal states “the functionality of the emulator unit is achieved through
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`a variety of hardware and software within the emulator unit.” Ex. 1004 at 6:56-60
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`(bolded portion omitted by Petitioner). Petitioner’s citation to the self-serving
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`Geier Declaration does not remedy this deficiency.
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`Next, with regard to the code portion itself, the second pre-programmed
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`code portion (i.e., the “command conversion” code portion) requires three steps:
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`remotely controlling the MP3 player using the car stereo by (1) receiving a control
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`command from the car stereo through said first electrical connector in a format
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`incompatible with the MP3 player, (2) processing the control command into a
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`formatted control command compatible with the MP3 player, and (3) transmitting
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`the formatted control command to the MP3 player through said second electrical
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`connector for execution by the MP3 player. Bhogal does not disclose the claimed
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`pre-programmed command control code portion because Bhogal does not teach or
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`disclose receiving a control command in an incompatible format or processing a
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`control command into a compatible format. Petitioner conflates several passages
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`in Bhogal, and when analyzed in context of the reference, these passages fall short
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`of the claim limitation. Bhogal teaches several modes of operation including
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`“pass-thru mode; end-unit mode; combination mode; and learning mode.” Since
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`the “end-unit” mode does not communicate with the CD-changer, Petitioner
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`appears to be relying on “pass-thru” mode which does not convert any commands.
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`First, Petitioner relies on the first paragraph in column 7, which states in its
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`entirety:
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`CD-changer specification database 312 contains operational
`information about various models of CD-changer units and the
`manner in which emulator unit 302 can interface with a particular type
`of CD-changer unit. User interface unit 304 may receive commands
`that direct user configurability unit 310 to update or retrieve
`information within CD-changer specification database 312. A user
`may control a selection of a particular type of CD-changer unit, after
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`which the emulator unit operates in a particular manner that is
`compatible with the CD-changer to which the emulator unit is
`connected.
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`Ex. 1004 at 7:1-12. Petitioner relies on the disclosure of the “user interface unit
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`304” as supplying control commands from the car stereo for conversion, but the
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`user interface unit 304 is not part of the car stereo, but rather is part of Bhogal’s
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`emulator. Accordingly, the commands originating at the “user interface” are not
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`commands originating from the car stereo. Thus, the disclosure in the first
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`paragraph in column 7 of Bhogal is irrelevant to the claimed command conversion
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`code portion.
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`The next paragraph of Bhogal discloses receiving control indications from
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`the car stereo and monitoring them. Ex. 1004 at 7:13-23. This passage falls short
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`of receiving control commands in a format incompatible, or converting the
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`commands to a compatible format. Instead, Bhogal contemplates only a “pass
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`through mode.”
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`In pass through mode:
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`[T]he emulator unit merely receives and forwards commands from the
`base unit to the CD-changer unit and also receives and forwards data
`from the CD-changer unit to the base unit. In a second manner, the
`emulator unit may listen for commands from the base unit but
`otherwise merely acts as a bus for transferring signals back and forth
`from the base unit to the actual CD-changer unit.
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`IPR2016-01472
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`PATENT NO. 7,489,786
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`Ex. 1004 at 7:39-46. Petitioner relies on a final passage which, contrary to
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`Petitioner’s contention, is only related to end-unit mode and, therefore, is irrelevant
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`to the claim. Ex. 1004 at 8:21-28. Accordingly, because pass-through mode only
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`“forwards” or “acts as a bus,” it does not convert commands as required by the
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`claims and Bhogal does not teach or disclose the command conversion limitation.
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`Accordingly, Ground 1 should be denied for all claims.
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`3.
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“Device Presence Signal” Required by the Claims
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`Petitioner admits that Bhogal and Berry do not teach or disclose the claimed
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`device presence signal and instead, Petitioner only relies on Onishi for that
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`limitation. Pet. at 19. Petitioner states:
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`When an AUX device has been detected, “a control is performed”
`(i.e., a device presence signal is sent) to the source selector 63 to
`select the AUX input as the audio source. Id. at [0084], FIG. 6 (S105).
`Consequently, analog audio signals from the MD player/recorder are
`output as sound from the vehicle speakers, id.at [0085], FIG. 6 (S106),
`and the car stereo is maintained in an operational state.
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`Pet. at 20-21 (emphasis added). This analysis is fatally flawed in at least two
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`ways.
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`First, Petitioner does not point to any pre-programmed code portion.
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`Petitioner makes general allegations regarding signals and states that “a control is
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`performed.” Even if the “control” were a device presence signal, there is no
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`indication that the signal is generated as a result of a pre-programmed code
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`portion. Moreover, Petitioner does not even allege that any of the references teach
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`a pre-programmed code portion for this limitation. Thus, the combination must
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`fail.
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`Second, Petitioner does not provide any support for the remainder of the
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`device presence signal limitation. The limitation does not stop at the generation of
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`a device presence signal. Instead, the claim requires that the device presence
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`signal is transmitted “to the car stereo to maintain the car stereo in an operational
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`state.” Ex. 1001 at Claim 57. However, Petitioner makes the bare conclusion that
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`this aspect of the device presence signal is met without citing to any evidence or
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`providing any reasoning. Such bare conclusions alone cannot support institution.
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`Additionally, the disclosure of Onishi does not teach the transmission of the
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`claimed device presence signal. Onishi does not even disclose an interface;
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`instead, it discloses a media player that is part of the car stereo. Within the car
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`stereo, Onishi sets forth an algorithm, represented by Figure 1 that is described in
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`the portions of the reference cited by Petitioner:
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`Ex. 1007 at Fig. 1. Petitioner points to Steps 106 and 107 as the alleged device
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`presence signal. However, there is no indication that either of these steps occurs in
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`the interface itself or are related to signals indicating that a device is present. First,
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`regarding Step 106, this step merely indicates the output of the play command to
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`the device, and is not directly related to the presence of a device. Moreover, Step
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`106 is outside of the “completion of operation” loop and would only be run once.
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`Next, regarding Step 107, there is no indication that the loop would terminate if
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`Step 107 does not receive any data from a device. Instead, it is just as likely that
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`the loop would continue, as would be the case if a song did not have any display
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`data associated with it. Accordingly, none of the disclosure of Onishi relates to the
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`claimed device presence signal. Even if this signal were a device presence signal,
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`there is no indication as to how Onishi could interact with the car stereo to keep the
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`car stereo responsive.
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`Petitioner also points to Step 117 as evidence that the system would turn off
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`if a device were not present. However, upon closer inspection, the process
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`described in Step 117 relates to device authentication for power-on and does not
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`relate to the claimed device presence signal. Step 117 is only reached when a
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`device is not present at startup and does not relate to testing for device presence
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`after startup.
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`Petitioner also points to the disclosure of a voltage detector, but this
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`disclosure similarly only relates to power-on in order to “recognize the AUX
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`device” in power-on step 104. Ex. 1007 at 83. Thus, none of the disclosure of
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`Onishi relates to a code portion that generates a signal to maintain the car stereo in
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`a responsive state. Instead, the disclosure of Onishi is similar to the state diagram
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`of the Lau reference that was already rejected by the Board in IPR2016-00421.
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`Accordingly, Ground 1 should be denied for all claims.
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`4.
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`Bhogal, Berry, and Onishi Fail to Teach or Disclose the
`“Data Conversion” Pre-programmed Code Portion (Claims
`60 and 61)
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`Claims 60 and 61 require an additional code portion for converting data.
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`This code portion requires three steps: wherein said microcontroller is pre-
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`programmed to execute a third code portion for (1) receiving data from the MP3
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`player in a format incompatible with the car stereo, (2) processing received data
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`into formatted data compatible with the car stereo, (3) and transmitting formatted
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`data to the car stereo for display thereby. None of Bhogal, Berry, or Onishi teach
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`or disclose the “converting data” limitation.
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`Petitioner relies on Bhogal to allegedly teach this limitation. However,
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`Bhogal only discloses that data sent from the CD-changer is in a format compatible
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`with the car stereo base unit. Therefore, Bhogal does not disclose the required pre-
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`programmed code portion. As described above, Bhogal only discloses two modes
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`of operation, pass-through and emulation mode.
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`In pass-thru mode, Bhogal does not teach any data conversion as the device
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`“merely receives and forwards commands from the base unit to the CD-changer
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`unit and also receives and forwards data from the CD-changer unit to the base
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`unit.” Ex. 1004 at 7:36-46. In emulator mode, because the “emulator unit
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`replaces the CD-changer unit entirely and emulates the presence of a CD-changer
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`unit,” Bhogal does not teach or disclose the required “first” and “second”
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`connections because the data is stored and transmitted by the emulator. Ex. 1004
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`at 7:36-46. Thus, Bhogal does not teach or disclose any data conversion as
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`between an external MP3 player and a car stereo.
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`Accordingly, for this additional reason, Ground 1 should be denied as to
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`Claims 60 and 61.
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`C. Claim 62 Is Not Obvious over Bhogal, Berry, Onishi, and
`Ohmura (Ground 2)
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`Claim 62 depends from Claim 57. The dependent claims of Claim 57 are
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`valid because they further narrow the invention recited in Claim 57, which is valid
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`in view of Ground 1. A dependent claim that adds additional limitations to a valid
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`independent claim cannot be invalid for anticipation or obviousness. 37 C.F.R.
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`§ 1.75(c) (dependent claims further limit independent claims); Callaway Golf Co.
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`v. Acushnet Co., 576 F.3d 1331, 1343-45 (Fed. Cir. 2009) (vacating a judgment
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`and ordering a new trial on obviousness when a jury found a dependent claim
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`obvious while finding its independent claim nonobvious).
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`Petitioner adds another reference, Ohmura, but Petitioner does not allege
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`that Ohmura addresses any of the deficiencies outlined with regard to Ground 1
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`above. Instead, Petitioner only describes Ohmura as allegedly teaching “artist
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`name.”
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`Accordingly, Ground 2 should be denied.
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`D. Claims 64 and 65 Are Not Obvious over Bhogal, Berry, Onishi,
`and Okagaki (Ground 3)
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`Claims 64 and 65 depend from Claim 57. The dependent claims of Claim 57
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`are valid because they further narrow the invention recited in Claim 57, which is
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`valid in view of Ground 1. As set forth above, a dependent claim that adds
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`additional limitations to a valid independent claim cannot be invalid for
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`anticipation or obviousness. 37 C.F.R. § 1.75(c) (dependent claims further limit
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`independent claims); Callaway Golf Co., 576 F.3d at 1343-45 (vacating a
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`judgment and ordering a new trial on obviousness when a jury found a dependent
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`claim obvious while finding its independent claim nonobvious).
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`Petitioner adds another reference, Okagaki, but Petitioner does not allege
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`that Okagaki addresses any of the deficiencies outlined with regard to Ground 1
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`above. Instead, Petitioner only describes Okagaki as related to bus technology.
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`Accordingly, Ground 3 should be denied.
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`E. Claims 1, 6, 7, 10, and 14 Are Not Obvious over Bhogal, Onishi,
`and Owens (Ground 4)
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`Petitioner's reliance on Bhogal and Onishi fails for the same reasons