IPR2016-01476
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`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`HYUNDAI MOTOR COMPANY LTD., HYUNDAI MOTOR AMERICA,
`HYUNDAI MOTOR MANUFACTURING ALABAMA LLC, KIA MOTORS
`CORPORATION, KIA MOTORS AMERICA, INC., AND KIA MOTORS
`MANUFACTURING GEORGIA, INC.
`
`Petitioners
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`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
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`
`
`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case No. IPR2016-01476
`__________________________________________________________________
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`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`HYUNDAI MOTOR COMPANY LTD., HYUNDAI MOTOR AMERICA,
`HYUNDAI MOTOR MANUFACTURING ALABAMA LLC, KIA MOTORS
`CORPORATION, KIA MOTORS AMERICA, INC., AND KIA MOTORS
`MANUFACTURING GEORGIA, INC.
`
`Petitioners
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`
`
`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2016-01476
`__________________________________________________________________
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`TABLE OF CONTENTS
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`Page No(s).
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS .................................................................... 1
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`PETITIONER’S CLAIM CONSTRUCTIONS AND PRIORITY
`STATEMENT ARE ERRONEOUS ............................................................... 5
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`I.
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`II.
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`III.
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`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONERS
`HAVE NOT DEMONSTRATED A REASONABLE LIKELIHOOD
`OF SUCCESS FOR GROUNDS 1-5 .............................................................. 6
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`A. Ground 1 Should Be Denied Institution Because the Challenged
`Claims Are Not Anticipated By Shibasaki ............................................ 6
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`B.
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`C.
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`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ...................................................................................................... 13
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`Grounds 2-5 Should Not Be Instituted Because Petitioners Fail
`To Establish Fundamental Requirements for Proving
`Obviousness ......................................................................................... 16
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`D. Ground 2 Should Not Be Instituted Because the Challenged
`Claims Are Not Obvious Over Shibasaki and the Knowledge of
`a Person of Ordinary Skill in the Art .................................................. 17
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`E.
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`F.
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`Ground 3 Should Not Be Instituted Because the Tong
`Reference Is Not Offered To Disclose, Nor Does Tong
`Disclose, “Audio Generated By the Portable Device” and “the
`Interface Subsystem” As Required By the Challenged Claims .......... 19
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`Ground 4 Should Not Be Instituted Because the AVRCP 1.0
`Reference Is Not Offered To Disclose, Nor Does AVRCP 1.0
`Disclose, “Audio Generated By the Portable Device” and “the
`Interface Subsystem” As Required By the Challenged Claims .......... 20
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`G. Ground 5 Should Not Be Instituted Because the AD2P 1.0
`Reference Is Not Offered to Disclose, Nor Does AD2P 1.0
`Disclose, “the Interface Subsystem,” and AD2P 1.0 Does Not
`Disclose “Audio Generated by the Portable Device” as
`Required by the Challenged Claims .................................................... 21
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`V.
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`CONCLUSION .............................................................................................. 23
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`TABLE OF AUTHORITIES
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`IPR2016-01476
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`PATENT NO. 8,155,342
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` Page(s)
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`Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB, June 26, 2015) ............................................................ 14
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`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
` IPR2013-00387 (PTAB, Dec. 24, 2014) ........................................................... 15
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`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB, Aug. 29, 2014) ............................................................ 15
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`GN Resound A/S v. Oticon A/S,
`IPR2015-00103 (PTAB, June 18, 2015) .............................................................. 2
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................ 4, 13, 15, 16
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`Indus. v. Zipshade Indus.,
`IPR2015-00488 (PTAB, July 24, 2015) ............................................................. 14
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 14
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 14, 15, 16
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`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939 (PTAB, Dec. 17, 2014) ............................................................ 15
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`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ............................................................................ 6
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`Toyota Motor Corporation, v. Blitzsafe Texas, LLC,
`IPR2016-00419 (PTAB, August 31, 2016) ........................................................ 11
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`Unified Patents Inc., v. Blitzsafe Texas, LLC,
`IPR2016-00118 (PTAB, April 27, 2016) ..................................................... 11, 12
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`iv
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`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) .............................................................................. 6
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`Statutes
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`35 U.S.C. § 102(b) ..................................................................................................... 6
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`35 U.S.C. § 103 .................................................................................................... 8, 13
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`Other Authorities
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`37 C.F.R. § 42.6(a)(3) .......................................................................................... 4, 14
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`37 C.F.R. § 42.22(a)(2) .......................................................................................... 1, 2
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`37 C.F.R. § 42.104(b)(4) .................................................................................... 1, 2, 3
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`v
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`I.
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`INTRODUCTION
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`Patent Owner, Blitzsafe Texas, LLC (“Patent Owner”), submits this
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`Preliminary Response to the Petition filed by Hyundai Motor Company Ltd.,
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`Hyundai Motor America, Hyundai Motor Manufacturing Alabama, LLC, Kia
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`Motors Corporation, Kia Motors America, Inc., and Kia Motors Manufacturing
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`Georgia, Inc., (collectively “Petitioners”) requesting inter partes review of
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`Claims 49, 50, 51, 52, 53, 54, 55, 56, 57, 62, 63, 64, 71, 73, 77, 78, 79, 80, 95, 97,
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`99, 100, 101, 102, 103, 106, 109, 110,111, and 120 (the “Challenged Claims”) of
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`U.S. Patent No. 8,155,342 (“the ’342 Patent”). The Petition is deficient on each
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`alleged Ground and should not be instituted.
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`SUMMARY OF ARGUMENTS
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`II.
`As a preliminary matter, the Petition fails to meet the statutory burdens
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`requiring specificity and detailed explanations for its anticipation and obviousness
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`grounds. The Board requires that “[t]he petition must specify where each element
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`of the claim is found in the prior art patents or printed publications relied upon.”
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`37 C.F.R. § 42.104(b)(4). The Board also requires “[a] full statement of the reasons
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`for the relief requested, including a detailed explanation of the significance of the
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`evidence.” 37 C.F.R. § 42.22(a)(2). The Petition falls short of this standard in
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`each ground.
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`For example, Petitioners introduce Ground 1 with an “Overview of
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`1
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`Shibasaki” which summarizes the reference without referring to any claim
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`elements or explaining how Shibasaki maps to any claim limitations. (Pet. at 17-
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`19.) Petitioners then present bare claim charts, listing the claims in a formulaic
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`and repetitive pattern: a bare statement that Shibasaki discloses the claimed
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`limitation, written verbatim; a citation to the expert report without explanation; and
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`quotations from and bare citations to Shibasaki. Nowhere do Petitioners present
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`“[a] full statement of the reasons for the relief requested, including a detailed
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`explanation of the significance of the evidence” as required by 37 C.F.R.
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`§ 42.22(a)(2). This approach is repeated in obviousness Grounds 2-5.
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`Petitioners’ claim charts do not cure the Petition of these deficiencies
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`because this Board has expressly held that claim charts alone are not enough to
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`show a reasonable likelihood of success, and that merely presenting citations and
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`quotes in claim charts alone is a violation of 37 C.F.R. § 42.104(b)(4). See, GN
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`Resound A/S v. Oticon A/S, IPR2015-00103, Paper 13 at 6 (June 18, 2015). As
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`described below, the relationship between the Shibasaki reference and the ’342
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`Patent claims are not self-evident, and Petitioners’ failure to explain how Shibasaki
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`teaches specific claim elements and limitations improperly shifts the burden to the
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`Patent Owner and the Board to create arguments for Petitioners.
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`Grounds 1 through 5 fail because Shibasaki, alone and in combination with
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`each of Tong, AVRCP 1.0, and AD2P 1.0, is silent regarding “audio generated by
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`the portable device.” Shibasaki describes transferring a file that is compressed and
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`encoded, instead of sending the required generated audio. Shibasaki teaches that
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`decoding is performed at the data processing section 109 and converting music
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`data into sound for output occurs at the playback section 111––both sections being
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`internal to the car audio apparatus 10. (Ex. 1006 at 10:38-46.).
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`Moreover, Shibasaki does not teach or disclose an “integration subsystem”
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`as required by the claims. Petitioners fail to demonstrate that cherry-picked
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`sections of the car audio apparatus constitute an “integration subsystem” under the
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`claims, and nowhere do Petitioners explain how the sections are a “subsystem,”
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`i.e., “subordinate to another system” as required by the Board. Petitioners’ choice
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`of components to label as the “integration subsystem” is an exercise in hindsight in
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`an attempt to meet the limitations of the Challenged Claims.
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`Last, in addition to the above deficiencies, Petitioners’ request for inter
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`partes review should be denied for at least the following reasons addressed more
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`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
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`37 C.F.R. § 42.104(b)(4), because the Petition 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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`(1966).
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`(3) The Petition improperly attempts to support its assertions of obviousness
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`with mere conclusory statements and by impermissibly incorporating, by
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`reference, arguments from the Kyriakakis Declaration (Ex. 1003) in violation of
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`37 C.F.R. § 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 Petitioners 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 Petitioners have not met their burden to
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`demonstrate a reasonable likelihood that they would prevail in showing
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`unpatentability of any of the Challenged Claims. Patent Owner, therefore,
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`respectfully requests denial of the Petition.
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`III. PETITIONER’S CLAIM CONSTRUCTIONS AND PRIORITY
`STATEMENT ARE ERRONEOUS
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`Several of Petitioner’s constructions are inaccurate. Specifically with regard
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`to the “generated . . . for playing on the car audio/video system,” and “format
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`incompatible with the portable device” limitations, Petitioner cites to the Joint
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`Claim Construction Chart from the District Court Litigation pending in the Eastern
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`District of Texas.1 Pet. at 16. The arguments advanced in the Joint Claim
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`Construction Statement have no bearing on the present proceeding where the claim
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`construction standard is “broadest reasonable construction.” Moreover, the Board
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`has already interpreted these very claim limitations in several Petitions (e.g.,
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`IPR2016-00118; IPR2016-00418 and IPR2016-00419), and Patent Owner adopts
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`the constructions and claim interpretations set forth by the Board therein.
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`Patent Owner also notes that Petitioner alleges that the claims of the ’342
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`Patent have an effective filing date no later than June 27, 2006. Patent Owner
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`disagrees with this statement, and, while not relevant to Patent Owner’s arguments
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`1 Petitioner also inaccurately characterizes Patent Owner’s infringement
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`contentions, which do not allege that a control command merely being transmitted
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`over a Bluetooth link could satisfy format conversion. Additionally, the
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`contentions were preliminary and submitted prior to the production of any source
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`code in the District Court Litigations.
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`advanced herein, Patent Owner is entitled to priority at least as early as January
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`2005, as was set forth in IPR2016-00418.
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`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONERS
`HAVE NOT DEMONSTRATED A REASONABLE LIKELIHOOD
`OF SUCCESS FOR GROUNDS 1-5
`A. Ground 1 Should Be Denied Institution Because the Challenged
`Claims Are Not Anticipated By Shibasaki
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`Anticipation under 35 U.S.C. § 102(b) is a high bar to meet. A claim is
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`anticipated only if each and every element as set forth in the claim is found, either
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`expressly or inherently described, in a single prior art reference. Verdegaal Bros.
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`v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The identical
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`invention must be shown in as complete detail as is contained in the claim.
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`Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Shibasaki
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`misses the mark with respect to numerous limitations.
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`The Shibasaki reference is silent regarding “audio generated by the portable
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`device,” as recited in both Claims 49 and 120. Specifically, Shibasaki fails to
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`disclose or teach “wherein said integration subsystem…receives audio generated
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`by the portable device over said wireless communication link for playing on the car
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`audio/video system,” as recited in Claim 49. Similarly, Shibasaki fails to disclose
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`“wherein said integration subsystem channels audio generated by the portable
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`device to the car audio/video system, as recited in Claim 120.
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`While Petitioners fail to map a specific portion of Shibasaki to this
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`limitation, it appears that Petitioners characterize the reference, with respect to the
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`limitation “audio generated by the portable device,” as follows:
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`The data processing section processes music data received through the
`BT transmission/reception section 115. The playback section 111
`converts the music data into sound. The display section 113 displays
`music data. Ex. 1006 at 10:4-53.
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`Pet. at 18. Petitioners also characterize Shibasaki as disclosing: “instructing the
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`device 20 to play music, receiving the music from the device 20, and playing the
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`music (e.g., steps 429-435). Ex. 1006 at 12:27-33 and 13:16-58.” Id. at 19. To be
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`clear, both characterizations are erroneous, and the Shibasaki reference alone fails
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`to disclose the transferring or channeling of audio, i.e., “audio generated by the
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`portable device.”
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`Petitioners’ Shibasaki citation “Ex. 1006 at 10:4-53” does not describe
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`“audio generated by the portable device.” Instead, this lengthy section describes
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`internally transferring music data within the car audio apparatus 10––from section
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`BT Transmission/Reception Section 115 to Data Processing Section 109––to
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`compress (encode) the music data. Here, Shibasaki also describes reading music
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`data from an external storage section 103, which is also an internal section of the
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`car audio apparatus.
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`Petitioners’ Shibasaki citation “Ex. 1006 at 12:27-33” also fails to describe
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`“audio generated by the portable device.” Remarkably, this section describes a
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`file-type compatibility determination, i.e., whether a music file (not generated
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`audio) can be played using the car audio apparatus 10 (not a portable device).
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`Petitioners’ cited section reads as follows:
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`Next, the car audio apparatus 10 performs determination processing of
`determining whether or not the MP3 player 20-2 has a music file that
`can be played in the car audio apparatus 10 based on the attribute
`information of the MP3 player 20-2 obtained at step S413 (the headers
`of the files that the MP3 player 20-2 has) (step S415).
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`Ex. 1006 at 12:27-33. Nothing in the above-cited section shows that the
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`integration subsystem receives “audio generated by the portable device” as recited
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`in the claims.
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`Not surprisingly, Petitioners’ Shibasaki citation to “13:16-58” also misses
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`the mark. In this section, Shibasaki defines “music data” as a music file in a
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`compressed format. (Ex. 1006 at 13:22-30.) Shibasaki describes the contents of a
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`music list, which is wholly irrelevant. (Ex. 1006 at 13:30-35.) Shibasaki then
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`describes transferring a “playback instruction” to the MP3 player 20-2 and, in
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`response:
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`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 encoding the received music file in real time
`and performing play processing (step S435).
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`(Ex. 1006 at 13: 46-52 (emphasis added).) The above-cited portion teaches the
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`exact opposite of the claimed invention. Instead of “generated audio,” Shibasaki
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`teaches a compressed and encoded music file. Instead of “audio generated by the
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`portable device,” Shibasaki teaches play processing by the car radio. Shibasaki
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`also defines streaming as “encoding the received music file in real time and
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`performing play processing” and teaches that streaming is performed at the car
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`audio apparatus 10. Shibasaki could not be further from meeting the claimed
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`limitation.
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`The claim charts largely point to the same citations with two additions. The
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`claim charts cite to 8:15-17, which merely explains that Figure 4 is a sequence
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`chart. Petitioners outline a section of Figure 4 explained by the cited portion above
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`(Ex. 1006 at 13:46-52.), but Figure 4 itself adds nothing to teach the claimed
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`limitation at issue.
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`The second addition is the inclusion of an unsupported blanket statement:
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`A POSITA would understand that [car audio apparatus 10 performs
`streaming of encoding the received music file in real time] to mean
`the car audio apparatus receives Bluetooth-encoded streaming audio
`from the portable device after initiating playback on the portable
`device.
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`(Pet. at 28.) This statement works against Petitioners for several reasons. As noted
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`above, anticipation must be found expressly or inherently. Since Petitioners do not
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`contend that the claimed limitation is inherently found in Shibasaki, Petitioners
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`must demonstrate that “audio generated by the portable device” is expressly found
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`in Shibasaki. But instead, Petitioners contend that a POSITA would change both
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`the functionality of the car audio apparatus 10 and meaning of streaming explicitly
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`set forth by Shibasaki to meet this limitation. Petitioner appears to be looking
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`outside the context of Shibasaki, and its argument is nothing more than a failed
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`single-reference obviousness challenge improperly inserted into a Ground based on
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`anticipation. Petitioner’s Ground must fail for at least this reason
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`In any event, Shibasaki explicitly states that an audio “file,” not generated
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`audio, is received by the car audio apparatus 10 of Shibasaki. Upon receipt of a
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`playback instruction, Shibasaki teaches that “the MP3 player 20-2 storing the
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`music file transmits the music file corresponding to the given playback instruction”
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`to the car stereo 10 for playback. (Ex. 1006 at 13:46-52.) The decoding of the
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`music file is performed at the data processing section 109, and converting music
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`data into sound for output occurs at the playback section 111––both sections being
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`internal to the car audio apparatus 10. (Ex. 1006 at 10:38-46.)
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`Therefore, Shibasaki does not teach or disclose each and every element as
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`set forth in Claims 49 and 120 because Shibasaki is silent regarding “audio
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`generated by the portable device.”
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`This teaching is exactly the same type of disclosure as was the case in the
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`Ohmura reference, which the Board has repeatedly found to lack the disclosure of
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`“audio generated by the portable device.” See, Unified Patents Inc., v. Blitzsafe
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`Texas, LLC, IPR2016-00118, Paper No. 19, Decision Denying Institution at 20,
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`(P.T.A.B., April 27, 2016); Toyota Motor Corporation, v. Blitzsafe Texas, LLC,
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`IPR2016-00419, Paper No. 13, Decision Denying Institution at 27-28, (P.T.A.B.,
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`July 19, 2016); Toyota Motor Corporation, v. Blitzsafe Texas, LLC, IPR2016-
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`00419, Paper No. 15, Decision on Request for Rehearing at 5, (P.T.A.B., August
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`31, 2016).
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`Shibasaki also fails to disclose or teach the “integration subsystem” as
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`recited in Claims 49 and 120. As discussed above, the Board has found that the
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`integration subsystem must be subordinate to another system in order to comply
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`with the plain meaning of “subsystem.” See Unified Patents Inc., v. Blitzsafe
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`Texas, LLC, IPR2016-00118, Paper No. 19, Decision Denying Institution at 10,
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`(P.T.A.B., April 27, 2016). In its overview, Petitioners argue:
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`The car audio apparatus 10 includes, inter alia, a system control
`section 101, an operation section 107, a data processing section 109, a
`playback section 111, a display section 113, and a BT
`transmission/reception section 115. The control section 101 controls
`the components of the car audio apparatus 10. The operating section
`107 accepts user inputs. The BT transmission/ reception section 115
`communicates with other components of the piconet (e.g., MP3
`players or other media devices). The data processing section processes
`music data received through the BT transmission/reception section
`115. The playback section 111 converts the music data into sound.
`The display section 113 displays music data. Ex. 1006 at 10:4-53.
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`(Pet. at 18.) In the claim charts, Petitioners state that Shibasaki’s integration
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`subsystem “includes the BT Transmission/Reception section 115, system control
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`section 101, and data processing section 109.” (Pet. at 20.) However, Shibasaki
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`does not teach or disclose that the portions of the car audio apparatus 10 cherry-
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`picked by Petitioners are, together, a “subsystem” subordinate to the remainder of
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`the apparatus 10. Petitioners argue that these selected components constitute an
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`“integration subsystem” under the claims, but nowhere do Petitioners explain how
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`12
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`the sections are a “subsystem,” i.e., “subordinate to another system” as required by
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`the Board. Petitioners simply label the Shibasaki sections as a subsystem and
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`describe how the each section performs the functions of the integration subsystem
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`without identifying the system to which it is subordinate. Petitioners have,
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`therefore, failed to point to the claimed “integration subsystem” in Shibasaki.
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`Petitioners’ attempt to construct an integration subsystem from a selection of
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`components made solely for invalidity purposes should be rejected.
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`Patent Owner respectfully submits that Claims 50-52, 54, 56, 62-64, and 71
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`depend from Claim 49 are not anticipated for at least the same reasons above.
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`Accordingly, Ground 1 should be denied institution because Petitioners fail
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`to demonstrate a reasonable likelihood of prevailing with respect to any one of the
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`Challenged Claims.
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`B. 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. 1, 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-
`13
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`IPR2016-01476
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`PATENT NO. 8,155,342
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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.
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`In a petition seeking institution of an inter partes review, “articulated
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`reasons with rational underpinnings” must be found in the petition itself. Whole
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`Space Indus. v. Zipshade Indus., IPR2015-00488, Decision Denying Institution of
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`Inter Partes Review, Paper 14 at 17 (PTAB, July 24, 2015) (“[C]onclusory labels
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`do not 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”). The arguments needed to support a conclusion of
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`obviousness may not be incorporated by reference to another document. 37 C.F.R.
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`§ 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,
`14
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`IPR2016-01476
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`PATENT NO. 8,155,342
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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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`
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`As set forth below, the Petition is deficient because it fails to meet the
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`fundamental requirements for demonstrating invalidity. The Petition does not
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`explain how the combinations of references teach each element of each claim. See,
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`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at
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`30–31 (PTAB, Dec. 24, 2014). Additionally, the Petition fails to satisfy the tests of
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`KSR and Graham because it does not identify the differences between the claims
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`and the asserted references; neglects to provide a fact-based rationale for
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`combining the references; and does not explain the specific ways the references are
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`to be combined. Whole Space Indus., IPR2015-00488, Paper 14 at 9 (“[R]egarding
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`the grounds based on obviousness, the Petition does not articulate specific
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`modifications of the references that support its asserted obviousness grounds, nor
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`does it provide a persuasive rationale for the proposed combinations of
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`references.”).
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`
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`Accordingly, Grounds 2-5 should be denied institution because Petitioners
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`fail to demonstrate a reasonable likelihood of prevailing with respect to any one of
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`the Challenged Claims.
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`15
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`C. Grounds 2-5 Should Not Be Instituted Because Petitioners Fail To
`Establish Fundamental Requirements for Proving Obviousness
`The Petition fails to even acknowledge the Graham and KSR requirements
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`
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`for determining obviousness. Petitioners fail to recite any of these factors, and
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`instead rely on mere conclusory statements regarding the alleged obviousness of
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`each combination.
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`
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`Petitioners do not explain how the combinations teach each element of each
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`claim. Petitioners fail to satisfy the tests of KSR and Graham because they do not
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`identify the differences between the claims and the asserted references; neglect to
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`provide a fact-based rationale for combining the references; and do not explain the
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`specific ways the references are to be combined. The Petition does not articulate
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`any specific modifications of the references that support its asserted obviousness
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`grounds, nor does it provide a persuasive rationale for the proposed combinations
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`of references.
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`Finally, the motivations to combine set forth by Petitioners are all
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`conclusory and lack the “articulated reasoning with some rational underpinning”
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`required by KSR. The motivations to combine set forth by Petitioners are
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`essentially all based on the similarities of the references tied with a boilerplate mix
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`of predictable results, uses of known techniques, and obvious to try assertions.
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`These boilerplate statements are not sufficient motivation to combine and the
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`16
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`Petition should be denied as deficient.
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`Accordingly, Grounds 2-5 should be denied institution because Petitioners
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`fail to demonstrate a reasonable likelihood of prevailing with respect to any one of
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`the Challenged Claims.
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`D. Ground 2 Should Not Be Instituted Because the Challenged
`Claims Are Not Obvious Over Shibasaki and the Knowledge of a
`Person of Ordinary Skill in the Art
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`
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`Shibasaki fails to disclose or teach “wherein said integration subsystem . . .
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`receives audio generated by the portable device over said wireless communication
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`link for playing on the car audio/video system,” as required by Claims 53 (as it
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`depends from Claim 49) and Claim 73. Similarly, Shibasaki fails to disclose
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`“wherein said integration subsystem channels audio generated by the portable
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`device to the car audio/video system,” as recited in Claim 97. Commonly, the
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`Shibasaki reference is silent regarding “audio generated by the portable device,” as
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`required in Claims 53, 73, and 97. Shibasaki also fails to disclose or teach the
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`“integration subsystem” as required in Claims 53, 73, and 97.
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`For Ground 2, the Petition lacks any detailed argument or explanation.
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`Petitioners only present claim charts for Claims 53, 73, and 97, and the claim
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`charts largely cite back to or mirror the charts for Claim 49. Because Petitioners’
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`claim charts merely cite back to or mirror information already discussed above,
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`Patent Owner submits that Claims 53, 73, and 97 do not disclose the “audio
`17
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`IPR2016-01476
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`PATENT NO. 8,155,342
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`generated by the portable device” and “the integration subsystem” limitations for
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`the same reasons as those presented for Ground 1 in Section IV-A above.
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`Patent Owner respectfully submits that Petitioners do not explain why either
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`of these limitations would have been obvious in view of the knowledge of a person
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`of ordinary skill in the art. Because Petitioners have not shown that the knowledge
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`of a person of ordinary skill in the art cures
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