Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 12
`
` Filed: January 24, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYUNDAI MOTOR COMPANY, HYUNDAI MOTOR AMERICA,
`HYUNDAI MOTOR MANUFACTURING ALABAMA, LLC,
`KIA MOTORS CORPORATION, KIA MOTORS AMERICA, INC., and
` KIA MOTORS MANUFACTURING GEORGIA, INC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01476
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, MIRIAM L. QUINN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a), 37 C.F.R. § 42.108
`
`
`
`Hyundai Motor Company, Hyundai Motor America, Hyundai Motor
`Manufacturing Alabama, LLC, Kia Motors Corporation, Kia Motors
`America, Inc., and Kia Motors Manufacturing Georgia, Inc. (collectively,
`
`
`
`
`
`

`

`IPR2016-01476
`Patent 8,155,342 B2
`“Petitioner”) filed a Petition requesting inter partes review of claims 49–57,
`62–64, 71, 73, 77–80, 95, 97, 99–103, 106, 109–111, and 120 (“challenged
`claims”) of U.S. Patent No. 8,155,342 B2 (Ex. 1001, “the ’342 patent”).
`Paper 1 (“Pet.”). Blitzsafe Texas, LLC (“Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 11 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Having considered the Petition and the Preliminary Response, we
`determine that the information presented does not show that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any of the challenged claims of the ’342 patent.
`Accordingly, we deny institution of an inter partes review.
`I. BACKGROUND
`A. RELATED MATTERS
`The parties represent that the ’342 patent is the subject of five ongoing
`
`infringement actions before the U.S. District Court for the Eastern District of
`Texas and was previously the subject of two infringement actions before the
`U.S. District Court for the District of New Jersey. Pet. 2; Paper 8, 1–2. In
`addition, the ’342 patent is or was previously the subject of several inter
`partes review proceedings before the Office, namely IPR2016-00118,
`IPR2016-00418, IPR2016-00419, IPR2016-01445, IPR2016-01449,
`IPR2016-01473, IPR2016-01533, IPR2016-01557, and IPR2016-01560.
`Paper 8, 2; see Pet. 2. Related U.S. Patent No. 7,489,786 B2 is or was
`previously involved in IPR2016-00421, IPR2016-00422, IPR2016-01448,
`IPR2016-01472, and IPR2016-01477. Paper 8, 2; see Pet. 2.
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`IPR2016-01476
`Patent 8,155,342 B2
`
`B. THE ’342 PATENT
`The ’342 patent explains that integrating an after-market audio/video
`system with an existing car audio/video system, such as a stereo system
`provided by an original equipment manufacturer (“OEM”), presents a
`problem because “signals generated by both systems are in proprietary
`formats” and “are not capable of being processed by” or recognized by the
`other system. Ex. 1001, 1:54−60; see id. at 2:58–67. Thus, “in order to
`integrate after-market systems with existing car stereo and video systems, it
`is necessary to convert signals between such systems.” Id. at 1:60−63.
`The ’342 patent is directed to a multimedia device integration system
`that allows after-market portable devices to be integrated into an existing car
`audio/video system, such that data from the portable device can be displayed
`on the car system and control commands can be issued at the car system for
`execution by the portable device. Id. at [57], 2:44–54, 3:7–14. The portable
`device could, for example, comprise “a CD player, CD changer, digital
`media device (e.g., MP3 player, MP4 player, WMV player, Apple iPod,
`portable media center, or other device),” or “cellular telephone.” Id. at [57];
`see id. at 2:59–64, 5:9–13, 33:48–56.
`Certain embodiments of the ’342 patent provide for the “wireless
`integration” of a portable device with a car audio/video system, including
`“the wireless exchange” of commands, data, and signals between the
`portable device and the car system. Id. at 5:7−18; see id. at 33:43–35:37.
`These embodiments include an integration subsystem or module that can be
`positioned within either the portable device or the car audio/video system.
`Id. at 5:13–15, 5:29–31, 34:12–14, 35:23–25, Figs. 18–19. The integration
`subsystem or module receives control commands, such as a play command,
`
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`IPR2016-01476
`Patent 8,155,342 B2
`issued at the car audio/video system; processes the commands into a format
`compatible with the portable device; and transmits them to the portable
`device for execution. Id. at 5:19–23, 34:19–32; see id. at [57]. The
`integration subsystem or module also receives data from the portable device,
`such as track, song, artist, and time information; processes the data into a
`format compatible with the car system; and transmits the data to the car
`system for display. Id. at 5:23−29, 34:32–42; see id. at [57].
`Figure 19 of the ’342 patent is reproduced below.
`
`
`Figure 19 illustrates an embodiment of the disclosed system that provides
`wireless integration between car audio/video system 1010 and portable
`device 1024 in which integration subsystem 1032 is positioned within the
`car system. Id. at 8:3−8, 35:17–32. Wireless interface 1016 in the car
`system and wireless interface 1026 in the portable device form wireless
`link 1022. Id. at 34:15–18; see id. at 35:21–23.
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`IPR2016-01476
`Patent 8,155,342 B2
`
`C. ILLUSTRATIVE CLAIM
`Of the challenged claims, claims 49, 73, 97, and 120 of the
`’342 patent are independent. Claim 49, reproduced below, is illustrative:
`49.
` A multimedia device integration system, comprising:
`an
`integration subsystem
`in communication with a car
`audio/video system; and
`a first wireless interface in communication with said integration
`subsystem, said first wireless interface establishing a
`wireless communication
`link with a second wireless
`interface in communication with a portable device external
`to the car audio/video system,
`wherein said integration subsystem
`link,
`communication
`obtains, using
`said wireless
`information about an audio file stored on the portable
`device,
`transmits the information to the car audio/video system for
`subsequent display of the information on a display of the
`car audio/video system,
`instructs the portable device to play the audio file in
`response to a user selecting the audio file using controls
`of the car audio/video system, and
`receives audio generated by the portable device over said
`wireless communication link for playing on the car
`audio/video system.
`Ex. 1001, 42:29–47 (line breaks added).
`D. ASSERTED PRIOR ART
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 7,110,755 B2 (filed July 22, 2002) (issued Sept. 19,
`2006) (Ex. 1006, “Shibasaki”);
`Advanced Audio Distribution Profile Specification (Version 1.0 2003)
`(Ex. 1009, “A2DP”);
`Audio/Video Remote Control Profile (Version 1.0 2003) (Ex. 1008,
`“AVRCP”); and
`Larry Tong & Jimmy Lai, Optimize Bluetooth Car Kit Design,
`Implementation (Nov. 17, 2003) (Ex. 1007, “Tong”).
`
`
`
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`IPR2016-01476
`Patent 8,155,342 B2
`In addition to these references, the Petition supports its contentions with the
`Declaration of Chris Kyriakakis, Ph.D. (Ex. 1003).
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 5–6.
`Challenged Claims
`Basis
`Reference(s)
`49–52, 54, 56, 62–64,
`§ 1021 Shibasaki
`71, and 120
`53, 73–78, 95, 97, 99–
`101, 106, and 109–111
`55, 57, 73, 79, and 80
`53 and 77
`49, 73, 97, and 120
`
`§ 103 Shibasaki and the Knowledge of a
`Person of Ordinary Skill in the Art
`§ 103 Shibasaki and Tong
`§ 103 Shibasaki and AVRCP
`§ 103 Shibasaki and A2DP
`
`
`
`II. ANALYSIS
`A. LEVEL OF ORDINARY SKILL IN THE ART
`We begin our analysis by addressing the level of ordinary skill in the
`art. We determine that in this case, no express articulation of the level of
`ordinary skill is necessary and that the level of ordinary skill in the art is
`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`B. CLAIM CONSTRUCTION
`The Board interprets claims terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016). Under this standard, we presume a claim term carries its
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102–103, effective
`March 16, 2013. Because the patent application resulting in the ’342 patent
`was filed before the effective date of the AIA, we refer to the pre-AIA
`versions of §§ 102 and 103 throughout this Decision.
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`“ordinary and customary meaning,” which “is the meaning that the term
`would have to a person of ordinary skill in the art” at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A claim term will be interpreted more narrowly than its ordinary and
`customary meaning only where: (1) the “patentee sets out a definition and
`acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope
`of a claim term either in the specification or during prosecution.” Aventis
`Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012).
`1. “integration subsystem”
`Each challenged independent claim of the ’342 patent, claims 49, 73,
`
`97, and 120, recites an “integration subsystem.” Ex. 1001, 42:29–47, 44:4–
`23, 45:45–63, 46:63–47:19. Challenged dependent claims 50, 53–57, 74,
`77–80, 99, 102, 103, and 106 also recite the term. Id. at 42:48–46:24.
`Petitioner states that in prior Decisions on Institution in IPR2016-001182 and
`IPR2016-00418,3 the Board construed this term as:
`A subsystem to perform at least: (1) connecting one or more
`portable devices or inputs to the car audio/video system via an
`interface, (2) processing and handling signals, audio, and/or
`video information, (3) allowing a user to control the one or
`more portable devices via the car audio/video system, and
`(4) displaying data from the one or more portable devices on
`the car audio/video system.
`Pet. 15 (quoting 118-IPR Decision 11; 418-Decision 15). Petitioner adopts
`this construction in presenting its asserted grounds in the Petition. Id. at 14–
`15, 20. Patent Owner, in turn, represents that the Board stated in the
`
`
`2 Unified Patents Inc. v. Blitzsafe Texas LLC, Case IPR2016-00118,
`Paper 19 (PTAB Apr. 27, 2016) (“118-IPR Decision”).
`3 Toyota Motor Corp. v. Blitzsafe Texas, LLC, Case IPR2016-00418,
`Paper 13 (PTAB July 8, 2016) (“418-IPR Decision”).
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`IPR2016-01476
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`118-IPR Decision that a “subsystem” must be subordinate to another system
`to comply with the plain meaning of the term. Prelim. Resp. 3, 11–12
`(citing 118-IPR Decision 10).
`
`The Board construed the term “integration subsystem” in the 118- and
`418-IPR Decisions as well as a Decision on Institution in IPR2016-00419.4
`118-IPR Decision 11–12; 418-IPR Decision 15; 419-IPR Decision 15–16.
`By way of a summary, the Board determined that the “integration
`subsystem” performs “integration” as defined in the ’342 patent. E.g.,
`418-IPR Decision 14. In particular, the following passage of the
`specification, which defines “integration,” supports the Board’s
`construction:
`As used herein, the term “integration” or “integrated” is
`intended to mean [1] connecting one or more external devices
`or inputs to an existing car stereo or video system via an
`interface, [2] processing and handling signals, audio, and/or
`video information, [3] allowing a user to control the [external]
`devices via the car stereo or video system, and [4] displaying
`data from the devices on the car stereo or video system.
`Ex. 1001, 8:64–9:3 (emphases and brackets added). Accordingly, guided by
`the express definition in the specification, we adopted the above-described
`functions as the definition of “integration” subsystem.
`
`The passage above, however, focuses on “integration” and does not
`expressly address the term “subsystem.” With regard to “subsystem,” the
`Board noted in the 418- and 419-IPR Decisions that a “subsystem” is
`subordinate to another system. 418-IPR Decision 14; 419-IPR Decision 14;
`see 118-IPR Decision 10. This interpretation necessitates explanation given
`the parties’ positions in this proceeding. For example, to resolve the parties’
`
`4 Toyota Motor Corp. v. Blitzsafe Texas, LLC, Case IPR2016-00419,
`Paper 13 (PTAB July 19, 2016) (“419-IPR Decision”).
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`IPR2016-01476
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`dispute, we must determine whether a “subsystem” is itself a “system” that
`is subordinate to another system. See Prelim. Resp. 3, 11–13.
`
`We conclude that the plain and ordinary meaning of the word
`“subsystem” as understood by a person of ordinary skill in the art requires
`that both the “subsystem” and the “system” to which it is subordinate must
`be “systems.” As evidence of this construction, we note that a dictionary of
`electrical and electronics terms defines “subsystem” as “[a] system which is
`subordinate to another system.” Subsystem, WILEY ELECTRICAL AND
`ELECTRONICS ENGINEERING DICTIONARY 755 (2004) (also defining the term
`as “[a] system which is a part of, or assists, a larger system”) (Ex. 3001); see
`subsystem, ACADEMIC PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY
`2126 (1992) (“a portion of a system that can be treated as a single element in
`the main system, but that can also be considered a distinct system itself”)
`(Ex. 3002).
`
`We also note that, although the specification does not define the term,
`it describes the “integration subsystem” consistently with the
`above-referenced dictionary definition. Figures 18 and 19, for example,
`illustrate that integration subsystem 932, 1032 may be subordinate either to
`portable audio/video device 924 or car audio/video system 1010, depending
`on where the integration subsystem is located. Ex. 1001, Figs. 18−19; see
`also id. at Figs. 20−23 (similarly depicting or describing the integration
`subsystem). More particularly, the written description corresponding to
`Figure 18 provides that for Figure 18, the portable device includes its own
`device electronics (“e.g., circuitry and components provided by the portable
`device manufacturer”) in addition to an integration subsystem or module and
`a wireless interface/transceiver. Id. at 34:9−13. For Figure 19, the
`
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`Patent 8,155,342 B2
`specification also states that the car audio/video system includes the
`integration subsystem in addition to the car system electronics (“e.g.,
`circuitry and components provided by an OEM or after-market car audio
`and/or video system manufacturer”), wireless interface/transceiver, display,
`control panel, and an optional external interface port. Id. at 33:57−62,
`35:21−28. That is, regardless of where it is positioned, the integration
`subsystem is a system distinct from any other system (e.g., the car
`audio/video system).
`
`Accordingly, based on the express definition of the term “integration”
`provided by the ’342 patent, we reiterate here our previous construction of
`“integration subsystem” from IPR2016-00118, IPR2016-00418, and
`IPR2016-00419 for purposes of this Decision:
`A subsystem to perform at least: (1) connecting one or more
`portable devices or inputs to the car audio/video system via an
`interface, (2) processing and handling signals, audio, and/or
`video information, (3) allowing a user to control the one or
`more portable devices via the car audio/video system, and
`(4) displaying data from the one or more portable devices on
`the car audio/video system.
`To the above definition, consistent with the broadest reasonable
`interpretation in light of the specification, we add that the “integration
`subsystem” is a “system which is subordinate to another system.”
`2. “generated . . . for playing on the car audio/video system”
`The Petition represents that in a related case before the U.S. District
`
`Court for the Eastern District of Texas, Patent Owner proposed that
`“generated . . . for playing on the car audio/video system,” as recited in
`claims 49 and 73 of the ’342 patent, should be construed to mean “produced
`by the portable device during playback.” Pet. 16 (citing Ex. 1004, 47). As
`support, Petitioner provides a citation to the parties’ joint claim construction
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`Patent 8,155,342 B2
`chart filed with the district court. See id.; Ex. 1004, 47. Petitioner states that
`it presents this interpretation “to the Board for consideration in determining
`the [broadest reasonable interpretation] because Patent Owner considers [it]
`proper, and therefore necessarily within the scope of the [broadest
`reasonable interpretation].” Pet. 14. Patent Owner responds that the
`construction it advanced before the district court has “no bearing on the
`present proceeding where the claim construction standard is ‘broadest
`reasonable construction.’” Prelim. Resp. 5.
`
`Under 37 C.F.R. § 42.104(b)(3), the Petition “must set forth . . . [h]ow
`the challenged claim is to be construed.” Here, the Petition falls short of this
`requirement by merely listing, without endorsing, Patent Owner’s proposed
`construction before the district court under a different claim construction
`standard supported only by a citation to a claim chart filed in the district
`court, which lacks any analysis or evidentiary support (e.g., citations to the
`intrinsic record of the ’342 patent). See Pet. 13–14, 16; Ex. 1004, 47; see
`also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d
`734, 740–43 (Fed. Cir. 2016) (explaining that district courts apply the claim
`construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) and that this standard differs from the broadest reasonable
`interpretation standard that the Board applies to unexpired patents).
`Therefore, Petitioner has not complied with 37 C.F.R. § 42.104(b)(3) or
`adequately proffered the term for construction in this proceeding.
`
`Moreover, having considered the specification of the ’342 patent and
`the parties’ arguments in this proceeding, we determine that “generated . . .
`for playing on the car audio/video system,” as recited in claims 49 and 73 of
`the ’342 patent, does not require an express construction beyond the plain
`and ordinary meaning of its terms to resolve the issues presented by the
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`patentability challenges. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are
`in controversy” need to be construed and “only to the extent necessary to
`resolve the controversy”).
`
`3. Other Claim Terms
`Based on our review of the record and the dispositive issues in our
`
`determination of whether to institute inter partes review on the asserted
`grounds of unpatentability, we need not address the construction of any
`other claim terms. See id.; Pet. 13–16; Prelim. Resp. 5.
`C. ALLEGED ANTICIPATION BY SHIBASAKI
`Petitioner argues claims 49–52, 54, 56, 62–64, 71, and 120 of the
`’342 patent are unpatentable as anticipated by Shibasaki. Pet. 5, 17–43.
`1. Shibasaki
`Shibasaki discloses an information processing system in which car
`
`audio apparatus 10 forms a piconet with information terminals 20, such as
`MP3 players and mobile telephones, using a Bluetooth (“BT”) radio
`communication system. Ex. 1006, [57], 8:53–9:23, Fig. 1. The piconet
`enables car audio apparatus 10 to communicate with information
`terminals 20 and to “determine[] and collect” from the terminals “music files
`that can be played in the car audio apparatus 10.” Id. at [57], 12:3–7, 14:44–
`52, 14:61–65.
`Shibasaki explains that car audio apparatus 10 includes system control
`section 101, external storage section 103, internal storage section 105,
`operation section 107, data processing section 109, playback section 111,
`display section 113, and BT transmission/reception section 115. Id. at 9:61–
`10:3, Fig. 2. System control section 101 “is implemented as, for example, a
`CPU, a DSP (digital signal processor) . . . for controlling the components of
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`the car audio apparatus 10.” Id. at 10:4–6. Operation section 107, in turn, is
`“a remote controller [or] a console panel” for accepting user input. Id.
`at 10:7–10. BT transmission/reception section 115 “consists mainly of a
`general-purpose BT module” and transmits and receives signals to and from
`other BT machines. Id. at 10:10–15. Data processing section 109 processes
`music data, including data received through BT transmission/reception
`section 115 and read from external storage section 103. Id. at 10:38–46.
`Playback section 111 converts music data “into sound for output.” Id.
`at 10:44–50.
`Figure 4 of Shibasaki is reproduced below.
`
`
`Figure 4 is a sequence chart depicting file processing in the disclosed
`information processing system. Id. at 11:39–41; see id. at 8:15–17.
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`Shibasaki discloses that car audio apparatus 10, after being powered on in
`step S401, performs “INQUIRY processing” in steps S403 and S405 to
`inquire whether there is a communicable BT machine in its periphery. Id.
`at 11:45–67. Next, in steps S407–S413 and S417–423, car audio
`apparatus 10 performs “PAGING processing,” in which it transmits an
`ID packet and attribute information request to machines that it determines
`“hav[e] a high possibility of having a music file,” for example, MP3
`player 20-2 and MP3 player 20-3, and receives responsive information. Id.
`at 12:1–26, 13:16–21. Then, car audio apparatus 10 “performs
`determination processing of determining whether” each MP3 player 20-2
`(step S415) and MP3-player 20-3 (step S425) “has a music file that can be
`played in the car audio apparatus 10” based on the received attribute
`information, i.e., the “headers of the files” stored on the MP3 player. Id.
`at 12:27–32, 13:16–21; see id. at 9:23–26.
`For “each of the music files (music data) determined to be playable”
`in car audio apparatus 10, car audio apparatus 10 takes information
`regarding the music file, for example, the title, artist, play time, compression
`format, and storage location in the MP3 player, from the file header and
`displays the information in a list on display section 113 in step S427. Id.
`at 13:22–29; see id. at 9:25–28, 13:30–35, Fig. 6. In step S429, the user
`edits the displayed music list, for example, by changing the order of the
`music pieces. Id. at 13:36–41. When car audio apparatus 10 accepts a
`user’s playback instruction of a music piece in the edited music list, it
`transmits the instruction to “the MP3 player 20-2 having the music file
`corresponding to the given playback instruction ([step] S431), the MP3
`player 20-2 storing the music file transmits the music file corresponding to
`the given playback instruction through the BT radio communication system
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`(step S433), and the car audio apparatus 10 performs streaming of encoding
`the received music file in real time and performing play processing (step
`S435).” Id. at 13:41–51; see id. at 14:61–67.
`2. Discussion
`Anticipation under 35 U.S.C. § 102 requires “the presence in a single
`prior art disclosure of all elements of a claimed invention arranged as in the
`claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
`(Fed. Cir. 2010). Specifically, “each claim element must be disclosed, either
`expressly or inherently, in a single prior art reference, and the claimed
`arrangement or combination of those elements must also be disclosed, either
`expressly or inherently, in that same prior art reference.” Id. at 1332–33.
`Inherent disclosure is established where the reference “must necessarily
`include” an “unstated limitation.” Id. (emphasis omitted).
`a. Independent Claims 49 and 120
`i. “audio generated by the portable device”
`Independent claim 49 of the ’342 patent recites that the “integration
`subsystem” “instructs the portable device to play the audio file” and
`“receives audio generated by the portable device over said wireless
`communication link for playing on the car audio/video system.” Ex. 1001,
`42:37–47 (emphasis added). Similarly, independent claim 120 recites that
`the “integration subsystem instructs the portable device to play an audio file”
`and “channels audio generated by the portable device to the car audio/video
`system using the wireless communication link for subsequent playing of the
`audio on the car audio/video system, the audio corresponding to the audio
`file played by the portable device.” Id. at 47:3–12 (emphases added). Thus,
`each claim requires that “audio generated by the portable device” be
`transmitted over a wireless communication link for playing on the car
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`audio/video system. Each claim expressly distinguishes the recited “audio
`file,” played by the portable device, from the recited “audio” that is
`generated by the portable device and transmitted over the wireless
`communication link for playing on the car audio/video system. Stated more
`generally, the recited “audio” is distinct from the recited “audio file.”
`
`Petitioner argues Shibasaki discloses the “audio generated by the
`portable device” limitation of claim 49 and claim 120. See Pet. 19, 27–29,
`42, 52–53. Relevant to this assertion, the Petition represents in an overview
`discussion of Shibasaki that the functions of car audio apparatus 10 include
`“instructing the device 20 to play music, receiving the music from the
`device 20, and playing the music (e.g., steps 429-435),” citing as support
`column 12, lines 27–33 and column 13, lines 16–58 of Shibasaki. Id. at 18–
`19 (citing Ex. 1006, 12:27–33, 13:16–58). In addition, the Petition’s claim
`chart for the “audio generated by the portable device” limitation of claim 49
`features citations to column 8, lines 15–17, column 13, lines 41–51, and
`Figure 4 of Shibasaki as well as pages 37–39 of Dr. Kyriakakis’s
`declaration. Id. at 27–29. The claim chart states that Shibasaki “expressly
`discloses” “streaming audio over Bluetooth” and represents that in
`Shibasaki, “[t]he portable device streams the audio file, which is processed
`in real time by the car audio apparatus.” Id. at 27–28 (citing Ex. 1003, 37–
`39). The chart further represents that a person of ordinary skill in the art
`“would understand” Shibasaki’s disclosure at column 13, lines 49–50 “to
`mean the car audio apparatus receives Bluetooth-encoded streaming audio
`from the portable device after initiating playback on the portable device.”
`Id. at 28. Moreover, the Petition’s claim chart for the “audio generated by
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`the portable device” limitation of claim 1205 features citations to column 8,
`lines 11–12, column 13, lines 41–51, and Figure 2 of Shibasaki in addition
`to pages 64–65 of Dr. Kyriakakis’s declaration. Id. at 42, 52–53.
`
`Pages 37–39 and 64–65 of Dr. Kyriakakis’s declaration, cited in the
`Petition’s claim charts for the “audio generated by the portable device”
`limitation of claim 49 and claim 120, respectively, feature claim charts
`identical to those in the Petition other than the omission of citations to the
`declaration and the addition of “in my opinion” and “[i]t is my opinion that.”
`See id. at 27–29 (citing Ex. 1003, 37–39), 42, 52–53 (citing Ex. 1003, 64–
`65); Ex. 1003, 37–39, 64–65.
`
`Patent Owner argues Shibasaki fails to disclose or teach the “audio
`generated by the portable device” limitation of claim 49 and claim 120.
`Prelim. Resp. 6–11. According to Patent Owner, Petitioner’s relevant
`characterizations of Shibasaki are “erroneous” and “unsupported.” Id.
`at 7, 10. Patent Owner argues that each passage of Shibasaki cited in the
`
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`5 The Petition’s claim chart for the “audio generated by the portable device”
`limitation of claim 120 includes a cross-reference to the “above” “discussion
`of” the nearly identical limitation of independent claim 97. Pet. 42, 52; see
`Ex. 1001, 45:52–57, 47:7–12. The cross-reference is erroneous, because
`claim 97 is challenged in two asserted obviousness grounds that are
`addressed subsequently in the Petition. See, e.g., Pet. 5–6, 52–53.
`Nonetheless, we understand the cross-reference to refer to the Petition’s
`claim chart for the “audio generated by the portable device” limitation of
`claim 97 in the asserted ground of obviousness over Shibasaki and the
`knowledge of a person of ordinary skill in the art. See id. at 43, 52–53.
`Although this chart is for an obviousness—not an anticipation—ground, the
`error is harmless because the chart states that Shibasaki “discloses” the
`relevant limitation. Id. at 52. Accordingly, we treat the discussion in this
`claim chart for the “audio generated by the portable device” limitation of
`claim 97 as applicable to the corresponding limitation of claim 120 in this
`asserted anticipation ground. See id. at 42, 52–53.
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`Petition for the “audio generated by the portable device” limitations does not
`describe the claim requirements, and Patent Owner details the alleged
`deficiencies of each cited passage of Shibasaki in this regard. Id. at 7–11.
`For example, Patent Owner asserts that column 13, lines 46–52 of
`Shibasaki “teaches the exact opposite of the claimed invention.” Id. at 9; see
`id. at 10–11. According to Patent Owner, Shibasaki “explicitly states that an
`audio ‘file,’ not generated audio [as the claims require], is” transmitted by
`the MP3 player and “received by the car audio apparatus 10” for playback.
`Id. at 10–11; see id. at 9. Moreover, Patent Owner contends that “[i]nstead
`of ‘audio generated by the portable device,’ Shibasaki teaches play
`processing by the car [audio apparatus 10].” Id. at 9; see id. at 11. In
`addition, Patent Owner argues Shibasaki “defines streaming as ‘encoding the
`received music file in real time and performing play processing’ and teaches
`that streaming is performed at the car audio apparatus.” Id. at 9. With
`regard to the Petition’s statement as to how one of ordinary skill in the art
`allegedly would have understood column 13, lines 49–50 of Shibasaki,
`Patent Owner argues the statement is “unsupported” and seeks to “change
`both the functionality of the car audio apparatus 10 and [the] meaning of
`streaming explicitly set forth by Shibasaki” in order to meet the “audio
`generated by the portable device” limitations. Id. at 10 (quoting Pet. 28).
`We agree with Patent Owner that Petitioner has not shown adequately
`and persuasively that Shibasaki discloses the “audio generated by the
`portable device” limitation of claim 49 and claim 120, or that Shibasaki
`supports the Petition’s and Dr. Kyriakakis’s relevant representations
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`regarding its disclosures.6 Beginning with cited column 13, lines 16–58 of
`Shibasaki, the most relevant passage that Petitioner quotes in its claim charts
`is featured in lines 41–51:
`When a user’s playback instruction of the music piece in the
`music list edited at step S429 is accepted through the operation
`section 107, the playback instruction is transmitted to the MP3
`player 20-2 having the music file corresponding to the given
`playback instruction (S431), the MP3 player 20-2 storing the
`music file transmits the music file corresponding to the given
`playback instruction through the BT radio communication
`system (step S433), and the car audio apparatus 10 performs
`streaming of