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
`
`U.S. Patent No. 7,489,786
`Filing Date: December 11, 2002
`Issue Date: February 10, 2009
`Title: Audio Device Integration System
`
`
`
`Inter Partes Review No.: (Unassigned)
`
`
`
`DECLARATION OF CHRIS KYRIAKAKIS, PH.D.
` IN SUPPORT OF PETITIONER’S REQUEST
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`Petitioners
`Exhibit 1003, Page 1
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................ 2
`A.
`Educational Background ...................................................................... 2
`B.
`Relevant Professional Experience ........................................................ 3
`III. SUMMARY OF MY OPINIONS .................................................................. 5
`A.
`Legal Principles and Instructions ......................................................... 7
`1.
`Priority Date of the ‘786 patent ................................................. 7
`2.
`Claim Construction .................................................................... 7
`3.
`Anticipation ................................................................................ 8
`4.
`Obviousness ............................................................................. 10
`5.
`Incorporation by Reference ...................................................... 12
`Person of Ordinary Skill in the Art .................................................... 13
`B.
`Prior Art Patents and Publications ..................................................... 13
`C.
`The Beckert References Can Be Treated as a Single Reference ....... 15
`D.
`IV. TECHNOLOGY OVERVIEW ..................................................................... 18
`A.
`Summary of the ’786 patent ............................................................... 18
`B.
`Summary of the Challenged Claims .................................................. 20
`C.
`Summary of the Prosecution History of the ‘786 patent .................... 21
`D.
`Claim Construction ............................................................................ 23
`1.
`“car stereo” ............................................................................... 24
`2.
`integration” / “integrating” ...................................................... 25
`3.
`“interface” ................................................................................ 25
`4.
`“device presence signal” .......................................................... 25
`5.
`“maintain . . . in an operational station” .................................. 26
`V. ALL CHALLENGED CLAIMS OF THE ’786 PATENT ARE
`UNPATENTABLE ....................................................................................... 26
`
`
`
`
`
`-i-
`
`Petitioners
`Exhibit 1003, Page 2
`
`

`
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`4.
`
`A. Ground 1: Claims 1, 10, 14, 23, and 24 are Obvious Under 35
`U.S.C. § 103(a) (pre-AIA) in Light of Beckert ’710 And
`Beckert ’164 ....................................................................................... 26
`1.
`Overview of Beckert ’710 ........................................................ 26
`2.
`Overview of Beckert ’164 ........................................................ 28
`3.
`A POSITA Would Have Found it Obvious to Combine
`Beckert ’710 with Beckert ’164 ............................................... 29
`Application of Beckert ’710 and Beckert ’164 to Claims
`1, 10, 14, 23, and 24 ................................................................. 30
`a.
`Claim 1 ........................................................................... 30
`b.
`Claim 10 ......................................................................... 47
`c.
`Claim 14 ......................................................................... 48
`d.
`Claim 23 ......................................................................... 51
`e.
`Claim 24 ......................................................................... 54
`B. Ground 2: Claim 5 is Obvious Under 35 U.S.C. § 103(a) (pre-
`AIA) in Light of Beckert ’710, Beckert ’164, the AutoPC
`Manual and USB 2.0 .......................................................................... 54
`1.
`Overview of the AutoPC Manual ............................................ 54
`2.
`Overview of USB 2.0 ............................................................... 55
`3.
`A POSITA Would Have Considered it Obvious to
`Combine the Auto PC Manual and USB 2.0 with Beckert
`’710 and Beckert ’164 .............................................................. 55
`Application of the Combination of Beckert ’710, Beckert
`’164, the Auto PC Manual, and USB 2.0 to Claim 5 ............... 57
`C. Ground 3: Claim 6 is Obvious Under 35 U.S.C. § 103(a) (pre-
`AIA) in Light of Beckert ’710, Beckert ’164 and Beckert ’363 ........ 60
`1.
`Overview of Beckert ’363 ........................................................ 60
`2.
`A POSITA Would Have Considered it Obvious to
`Combine Beckert ’363 with Beckert ’710 and Beckert
`’164 .......................................................................................... 60
`
`4.
`
`
`
`
`
`-ii-
`
`Petitioners
`Exhibit 1003, Page 3
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`E.
`
`F.
`
`3.
`
`2.
`
`3.
`
`3.
`
`Application of Beckert ’710 in view of Beckert ’164 and
`Beckert ’363 to Claim 6 ........................................................... 61
`D. Ground 4: Claim 7 is Obvious Under 35 U.S.C. § 103(a) (pre-
`AIA) in Light of Beckert ’710, Beckert ’164 and the AutoPC
`Manual ................................................................................................ 64
`1.
`A POSITA Would Have Considered it Obvious to
`Combine the Auto PC Manual with Beckert ’710 and
`Beckert ’164 ............................................................................. 64
`Application of Beckert ’710 in View of Beckert ’164 and
`the Auto PC Manual to Claim 7 ............................................... 65
`Ground 5: Claim 8 is Obvious Under 35 U.S.C. § 103(a) (pre-
`AIA) in Light of Beckert ’710, Beckert ’164 and the Sony XR-
`C5120R Manual ................................................................................. 66
`1.
`Overview of the Sony XR-C5120R Manual ............................ 66
`2.
`A POSITA Would have Considered it Obvious to
`Combine the Auto PC Manual and the Sony XR-C5120R
`Manual with Beckert ’710 and Beckert ’164 ........................... 66
`Application of Beckert ’710 in View of Beckert ’164 and
`the Sony XR-C5120R Manua .................................................. 67
`Ground 6: Claims 57, 60, 64 and 65 are Obvious Under 35
`U.S.C. § 103(a) (pre-AIA) in Light of Beckert ’710, Beckert
`’164 and USB ADF ............................................................................ 70
`1.
`Overview of USB ADF ............................................................ 70
`2.
`A POSITA Would Have Considered it Obvious to
`Combine USB ADF with Beckert ’710 and Beckert ’164 ...... 70
`Application of Beckert ’710 in View of Beckert ’164 and
`USB ADF to Claims 57, 60, 64, and 65 .................................. 71
`a.
`Claim 57 ......................................................................... 71
`b.
`Claim 60 ......................................................................... 74
`c.
`Claim 64 ......................................................................... 75
`d.
`Claim 65 ......................................................................... 76
`
`
`
`
`
`-iii-
`
`Petitioners
`Exhibit 1003, Page 4
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`G. Ground 7: Claim 61 is Obvious Under 35 U.S.C. § 103(a) (pre-
`AIA) in Light of Beckert ’710, Beckert ’164, USB ADF and the
`AutoPC Manual .................................................................................. 77
`1.
`A POSITA Would Have Considered it Obvious to
`Combine the Auto PC Manual with Beckert ’710,
`Beckert ’164, and USB ADF ................................................... 77
`Application of Beckert ’710 in View of Beckert ’164,
`USB ADF and the Auto PC Manual to Claim 61 .................... 78
`H. Ground 8: Claim 62 is Obvious Under 35 U.S.C. § 103(a) (pre-
`AIA) in Light of Beckert ’710, Beckert ’164, USB ADF, the
`AutoPC Manual and the Sony XR-C5120 Manual ............................ 78
`1.
`A POSITA Would Have Considered it Obvious to
`Combine the Auto PC Manual and the Sony XR-C5120
`Manual with Beckert ’710, Beckert ’164, and USB ADF ....... 78
`Application of Beckert ’710 in View of Beckert ’164,
`USB ADF, the Auto PC Manual and the Sony XR-C5120
`Manual ..................................................................................... 80
`VI. CONCLUSION ............................................................................................. 81
`
`2.
`
`2.
`
`
`
`
`
`-iv-
`
`Petitioners
`Exhibit 1003, Page 5
`
`

`
`
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,489,786 (“’786 patent”)
`File History of U.S. Patent No. 7,489,786
`Declaration of Chris Kyriakakis, Ph.D.
`Joint Claim Construction Chart from Blitzsafe Texas, LLC v. Honda
`Motor Co., Ltd. et al., 2:15-cv-01274 (E.D. Tex.)(lead case)
`Plaintiff’s Disclosure Of Asserted Claims And Infringement
`Contentions (with Appendices A-D) from Blitzsafe Texas, LLC v.
`Honda Motor Co., Ltd. et al., 2:15-cv-01274 (E.D. Tex.)(lead case)
`U.S. Patent No. 7,085,710 (“Beckert ’710”)
`U.S. Patent No. 5,794,164 (“Beckert ’164”)
`U.S. Patent No. 6,009,363 (“Beckert ’363”)
`Clarion AutoPC 310C Owner’s Manual, Clarion Co. Ltd. 1998
`(“AutoPC Manual”)
`Universal Serial Bus Specification - Rev. 2.0, April 27, 2000
`(“USB 2.0”)
`Universal Serial Bus Device Class Definition for Audio Data
`Formats - Release 1.0, March 18, 1998 (“USB ADF”)
`Sony XR-C5120 FM/AM Cassette Car Stereo Operating
`Instructions Manual (“Sony XR-C5120 Manual”)
`Minagawa et al., Open Architectural Car Multimedia Platform,
`Clarion Co., Ltd., Convergence 98 Int’l Congress on Transportation
`Elec’s., October 19-21, 1998 (“Minagawa,” Ex. 1013)
`Decision Instituting Inter Partes Review, Case IPR2015-00421,
`Paper No. 13 (July 7, 2016)
`
`
`
`Petitioners
`Exhibit 1003, Page 6
`
`

`
`
`
`I.
`
`INTRODUCTION
`1.
`
`I am a tenured Associate Professor in the Department of
`
`Electrical Engineering at the University of Southern California (“USC”). I
`
`have been retained by Hyundai and Kia as a technical expert to explain how
`
`a person of ordinary skill in the art would understand certain terms in the
`
`asserted claims of U.S. Patent No. 7,489,786 (“’786 patent”).
`
`2.
`
`I am being compensated for my time at a consulting rate of
`
`$475 per hour. My compensation does not depend on the outcome of this
`
`litigation.
`
`3.
`
`I have considered the ’786 patent, its prosecution history, and
`
`the documents cited in this declaration, and I have also applied my own
`
`knowledge and experience from more than two decades in the relevant art,
`
`as set forth more fully below.
`
`4.
`
`I reserve the right to modify or supplement my opinion, as well
`
`as the bases for my opinion, based on the nature and content of the
`
`documentation, data, proof, and other evidence or testimony that Blitzsafe
`
`Texas, LLC or its expert(s) may present or based on any additional
`
`discovery or other information provided to me or found by me in this matter.
`
`
`
`1
`
`Petitioners
`Exhibit 1003, Page 7
`
`

`
`
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`5.
`
`In this section I have summarized my education, career history,
`
`publications, and other relevant information. My curriculum vitae, which
`
`includes my qualifications as well as my publications, is attached as Exhibit
`
`A.
`
`A. Educational Background
`6.
`I earned my Bachelor of Science degree in Engineering and
`
`Applied Science from the California Institute of Technology in 1985. I
`
`received my Master of Science degree in Electrical Engineering in 1987 and
`
`my Ph.D. in Electrical Engineering in 1993, both from USC. My expertise
`
`is audio and acoustic sciences. My research interests lie at the intersection
`
`of acoustics, psychoacoustics (the science that studies human perception of
`
`sound), and audio signal processing. My recent research has focused on the
`
`study of audio systems in challenging environments including automobiles
`
`and mobile devices, as well as algorithms for enhancing the performance of
`
`voice recognition engines. I have published several technical papers on
`
`acoustical measurement and calibration methods that can be applied to
`
`listening rooms, movie theaters and automobiles, and developed novel signal
`
`processing algorithms for optimizing sound system performance. Other
`
`topics I have researched include multichannel audio acquisition and
`
`
`
`2
`
`Petitioners
`Exhibit 1003, Page 8
`
`

`
`
`
`rendering, virtual microphones and virtual speakers, hybrid headphone-
`
`loudspeaker rendering methods, and advanced signal processing techniques
`
`for optimizing sound quality in automobiles.
`
`B. Relevant Professional Experience
`7.
`I am the founding Director of the USC Immersive Audio
`
`Laboratory with facilities for experimental work in room acoustics,
`
`multichannel audio, and psychoacoustics. This laboratory also serves as a
`
`unique teaching facility for my undergraduate course in Introduction to
`
`Digital Audio and my graduate course in Immersive Audio Signal
`
`Processing. Both courses have a major acoustics component that examines
`
`the interaction of sound with the acoustical environment (home, movie
`
`theater, car). The graduate course was developed through a two-year grant I
`
`received from the National Science Foundation entitled “Collaborative
`
`Learning in Engineering Using Immersive Environments,” and was the first
`
`of its kind to assess the impact of audio immersion in student learning. In
`
`addition to the courses I teach, I have also supervised and served on Ph.D.
`
`dissertation committees for more than 30 students.
`
`8.
`
`I am also the founder and Chief Technology Officer of
`
`Audyssey Laboratories, a USC spin-off company that develops and licenses
`
`audio technology to leading automotive, professional and consumer
`
`
`
`3
`
`Petitioners
`Exhibit 1003, Page 9
`
`

`
`
`
`electronic companies around the world including Jaguar, Land Rover, Audi,
`
`Mercedes Benz, Volvo, IMAX, Denon and Intel. As part of my work at
`
`Audyssey, I have developed audio algorithms and designed speakers. These
`
`speakers were novel acoustical designs that used a combination of unique
`
`enclosures, and audio signal processing to optimize their performance and
`
`overcome limitations that arise from small drivers and enclosures. For
`
`example, we used signal processing technologies combined with novel
`
`acoustical design to extend the bass response of small woofers and passive
`
`radiators beyond what was previously possible in small speaker enclosures.
`
`The innovations in these designs have received awards, including Popular
`
`Science’s “Best of What’s New.”
`
`9.
`
`I am also a member of the Audio Engineering Society, an
`
`association for professionals in the audio industry. I have published nearly
`
`100 technical papers, including several peer reviewed papers. I have
`
`published a book entitled Immersive Audio Signal Processing, and hold
`
`several patents in acoustic measurement of loudspeakers in rooms and cars,
`
`loudspeaker crossover optimization, and loudspeaker response correction
`
`using signal processing. My publications examine various aspects of sound
`
`measurement, how sound interacts with the acoustical elements of the
`
`environment, novel methods for surround sound recording and reproduction,
`
`
`
`4
`
`Petitioners
`Exhibit 1003, Page 10
`
`

`
`
`
`and the perception of sound by human listeners. In 2006, I received a World
`
`Technology Network Award. This organization presents awards to
`
`innovators in several areas in which technology can foster a paradigm
`
`change. My award was for innovations in immersive audio that enable new
`
`capabilities in media and journalism. Other award recipients at that event
`
`included Vice President Al Gore, Google, and Space-X.
`
`10.
`
`In the late 1990s and early 2000s, I was a faculty researcher and
`
`later Deputy Director of the National Science Foundation’s engineering
`
`research center established at USC. I was studying the fundamental and
`
`technological limitations of immersive audio and the role of acoustics on the
`
`performance of loudspeakers and audio systems in homes and cars. In 2003,
`
`together with one of my graduate students, I received the award for Best
`
`Paper at the Institute of Electrical and Electronics Engineers (“IEEE”)
`
`Conference on Signals, Systems and Computers.
`
`III.
`
`SUMMARY OF MY OPINIONS
`11.
`
`It is my opinion that each of the claims of the ’786 patent
`
`challenged by Petitioner (claims 1, 5-8, 10, 14, 23, 24, 57, 60-62, and 64-65)
`
`are invalid. The invalidity of these claims is shown by at least the following
`
`Grounds of Unpatentability:
`
`
`
`
`
`5
`
`Petitioners
`Exhibit 1003, Page 11
`
`

`
`
`
`Ground
`Ground 1
`
`’786 patent Claim
`Claims 1, 10, 14, 23, and 24
`
`Ground 2
`
`Claim 5
`
`Ground 3
`
`Claim 6
`
`Ground 4
`
`Claim 7
`
`Ground 5
`
`Claim 8
`
`Ground 6
`
`Claims 57, 60, 64 and 65
`
`Ground 7
`
`Claim 61
`
`
`
`6
`
`Basis for Rejection
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`Beckert ’710 (Ex. 1006) and
`Beckert ’164 (Ex. 1007)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`Beckert ’710 (Ex. 1006),
`Beckert ’164 (Ex. 1007), the
`AutoPC Manual (Ex. 1009)
`and USB 2.0 (Ex. 1010)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light
`of Beckert ’710 (Ex. 1006),
`Beckert ’164 (Ex. 1007) and
`Beckert ’363 (Ex. 1008)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`Beckert ’710 (Ex. 1006),
`Beckert ’164 (Ex. 1007), and
`the AutoPC Manual (Ex.
`1009)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`Beckert ’710 (Ex. 1006),
`Beckert ’164 (Ex. 1007), and
`the Sony XR-C5120R Manual
`(Ex. 1012)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`Beckert ’710 (Ex. 1006),
`Beckert ’164 (Ex. 1007) and
`USB ADF (Ex. 1011)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`
`Petitioners
`Exhibit 1003, Page 12
`
`

`
`
`
`Ground 8
`
`Claim 62
`
`Beckert ’710 (Ex. 1006),
`Beckert ’164 (Ex. 1007), USB
`ADF (Ex. 1011) and the
`AutoPC Manual (Ex. 1009)
`
`Obvious Under 35 U.S.C.
`§ 103(a) (pre-AIA) in Light of
`Beckert ’710, Beckert ’164,
`USB ADF and the Sony XR-
`C5120 Manual
`
`12.
`
`In this Declaration, I provide the explanation and support for
`
`my opinion that each of the challenged claims are invalid based on these
`
`grounds.
`
`A. Legal Principles and Instructions
`13. My analysis and opinions are based on my expertise in this
`
`technical field, as well as the instructions I have been given by counsel for
`
`the legal standards relating to patentability.
`
`Priority Date of the ‘786 patent
`
`1.
`I have been informed by counsel that Blitzsafe has asserted the
`
`14.
`
`following as the priority date of the ’786 patent: December 11, 2002. See
`
`Ex. 1005 at 6.
`
`Claim Construction
`
`2.
`I have been informed by counsel that in performing my analysis
`
`15.
`
`and forming my conclusions, I should apply the claim constructions
`
`previously adopted by the Panel in the recent institution decision IPR2016-
`
`
`
`7
`
`Petitioners
`Exhibit 1003, Page 13
`
`

`
`
`
`00421, Paper No. 13 (Ex. 1014). For other claim terms, I have been asked to
`
`apply the proposed claim constructions offered by Blitzsafe in Blitzsafe
`
`Texas, LLC v. Honda Motor Co., Ltd. et al., 2:15-cv-01274 (E.D. Tex.)(lead
`
`case) (Ex. 1004). For terms where Blitzsafe has not explicitly offered a
`
`claim construction, I have applied my understanding of Blitzsafe’s
`
`constructions based on its infringement contentions submitted in Blitzsafe
`
`Texas, LLC v. Honda Motor Co., Ltd. et al., 2:15-cv-01274 (E.D. Tex.)(lead
`
`case). See generally, Ex. 1005 at appendices A, B.
`
`Anticipation
`
`3.
`I have been informed that a patent claim must be novel to be
`
`16.
`
`valid. A claim that lacks novelty is invalid.
`
`17. Counsel have informed me that a patent claim is “anticipated”
`
`and therefore invalid under 35 U.S.C. section 102, if, among other things, (a)
`
`the alleged invention was known or used by others in this country, or
`
`patented or described in a printed publication in the United States or a
`
`foreign country, before the alleged invention thereof by the patent's
`
`applicant(s), or (b) the alleged invention was patented or described in a
`
`printed publication in this or a foreign country or in public use or on sale in
`
`this country, more than one year prior to the date of the application for
`
`patent in the United States, or (e) the invention was described in a patent
`
`
`
`8
`
`Petitioners
`Exhibit 1003, Page 14
`
`

`
`
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`granted on an application for patent by another filed in the United States
`
`before the invention by the applicant for patent. I understand that the date
`
`one year prior to the filing of a patent application is referred to as the
`
`“critical date.”
`
`18. Counsel have informed me that references or products that fall
`
`into one or more of these categories are called “prior art,” and that to
`
`anticipate a patent claim pursuant to 35 U.S.C. section 102, a single
`
`reference must contain all of the elements and limitations described in the
`
`claim either expressly or inherently.
`
`19. Counsel have informed me that in deciding whether a single
`
`item of prior art anticipates a patent claim, one should consider what is
`
`expressly stated or present in the piece of prior art, and what is inherently
`
`present. I understand that something is inherent in an item of prior art if it is
`
`always present in the prior art or always results from the practice of the prior
`
`art. It is my understanding that one of ordinary skill in the art may not have
`
`recognized the inherent characteristics or functioning of the prior art at the
`
`time.
`
`20. As I mentioned above, counsel have informed me that a patent
`
`claim may be invalid under 35 U.S.C. section 102(b) if the invention was in
`
`public use before the critical date and was ready for patenting. I understand
`
`
`
`9
`
`Petitioners
`Exhibit 1003, Page 15
`
`

`
`
`
`that the proper test for the public use prong of 102(b) is whether the
`
`purported use: (1) was accessible to the public; or (2) was commercially
`
`exploited. I also understand that if the inventor or someone connected to the
`
`inventor puts the invention on display or sells it, there is a “public use”
`
`within the meaning of 102(b) even though the invention itself may be hidden
`
`from view as part of a larger machine or article, if the invention is otherwise
`
`used in its natural and intended way and the larger machine or article is
`
`accessible to the public.
`
`4. Obviousness
`21. Counsel have informed me that a patent claim is “obvious” and
`
`therefore invalid under 35 U.S.C. section 103 if the claimed subject matter
`
`would have been obvious to a person of ordinary skill in the art as of the
`
`priority date of the patent in view of one or more prior art references. I
`
`understand that an obviousness analysis must consider: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the prior
`
`art; (3) the level of ordinary skill in the pertinent art; and (4) secondary
`
`considerations, if any, of non-obviousness (such as unexpected results,
`
`commercial success, long-felt but unsolved needs, failure of others, copy by
`
`others, licensing, and skepticism of experts). Secondary considerations of
`
`non-obviousness may include a long felt but unmet need in the prior art that
`
`
`
`10
`
`Petitioners
`Exhibit 1003, Page 16
`
`

`
`
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`was satisfied by the claimed invention of the patent; commercial success of a
`
`product or process covered by the claims of the patent and commensurate in
`
`scope with those claims; unexpected results achieved by the invention;
`
`praise of the invention by others skilled in the art; taking of licenses under
`
`the patent by others; and deliberate copying of the invention. Even assuming
`
`such indicia exists, it is my understanding that there must be a nexus
`
`between any such secondary indicia and the claimed invention.
`
`22. Counsel have informed me that a conclusion of obviousness
`
`may be based upon a combination of prior art references, particularly if the
`
`combination of elements does no more than yield predictable results. I
`
`understand that a patent composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was, independently,
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`known in the prior art. Moreover, I understand that it can be important to
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`identify a reason that would have prompted a person of ordinary skill in the
`
`relevant field to combine the elements in the way the claimed new invention
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`does. I further understand that to determine obviousness, the courts look to
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`the interrelated teachings of multiple patents, the effects of demands known
`
`to the design community or present in the marketplace, and the background
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`knowledge possessed by a person having ordinary skill in the art.
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`
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`11
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`Exhibit 1003, Page 17
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`

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`
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`23. Counsel have informed me that in determining whether a
`
`combination of prior art references renders a claim obvious, it is helpful to
`
`consider whether there is some teaching, suggestion, or motivation to
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`combine the references and a reasonable expectation of success in doing so.
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`I understand, however, that the teaching, suggestion, or motivation to
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`combine inquiry is not required and may not be relied upon in lieu of the
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`four obviousness factors outlined above.
`
`5.
`Incorporation by Reference
`24. Counsel have informed me that in certain limited
`
`circumstances, two or more prior art references may be treated as a single
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`reference if one document, called the “host document,” incorporates the
`
`disclosure of one or more other documents by reference. To incorporate
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`another document by reference, the host document must identify with
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`detailed particularity what specific material it incorporates, and clearly
`
`indicate where that material is found in the other document or documents.
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`Counsel have further informed me that whether the host document describes
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`the material with enough particularity is measured from the perspective of a
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`person reasonably skilled in the art.
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`
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`12
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`Exhibit 1003, Page 18
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`
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`B.
`25.
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`Person of Ordinary Skill in the Art
`
`In my opinion, after having reviewed the ‘786 patent, a person
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`of ordinary skill in the art (“POSITA”) at the time of the alleged invention of
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`the ‘786 patent would have had at least at least a Bachelor’s Degree in
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`Electrical Engineering or equivalent science/engineering degree and at least
`
`two years’ experience in signal processing and/or electronic system design,
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`or at least four years’ experience in signal processing and/or electronic
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`system design.
`
`C.
`26.
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`Prior Art Patents and Publications
`
`I am informed that the claims of the ’786 patent (Ex. 1001)
`
`have an effective filing date no earlier than December 11, 2002, which is the
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`filing date of the application that issued as the ’786 patent.
`
`27.
`
`I have reviewed claims 1, 5-8, 10, 14, 23, 24, 57, 60-62, and 64-
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`65 of the ’786 patent, as well as its file history, and I understand these claims
`
`are directed to an “audio device integration system,” via an interface
`
`between a car audio/video system and a portable device.
`
`28. Petitioners rely upon the following patents and publications, all
`
`of which I understand are prior art to the claims of the ‘786 patent:
`
` U.S. Patent No. 7,085,710 to Beckert et al. (“Beckert ’710”, Ex.
`
`1006) was filed on Jan. 7, 1998 and issued on Aug. 1, 2006.
`
`
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`13
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`Exhibit 1003, Page 19
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`
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`
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`Beckert ’710 is prior art to the ’786 patent under at least 35
`
`U.S.C. §§ 102(a) and (e) (pre-AIA).
`
` U.S. Patent No. 5,794,164 to Beckert et al. (“Beckert ’164”, Ex.
`
`1007) was filed on Nov. 29, 1995 and issued on Aug. 11, 1998.
`
`Beckert ’164 is prior art to the ’786 patent under at least 35
`
`U.S.C. § 102(b) (pre-AIA).
`
` U.S. Patent No. 6,009,363 to Beckert et al. (“Beckert ’363”, Ex.
`
`1008) was filed as a continuation-in-part of Beckert ’164 on
`
`June 24, 1996 and issued on Dec. 28, 1999. Beckert ’363 is
`
`prior art to the ’786 patent under at least 35 U.S.C. § 102(b)
`
`(pre-AIA).
`
` The Clarion AutoPC 310C Owner’s Manual (“AutoPC
`
`Manual”, Ex. 1009) bears a copyright date of 1998. The
`
`AutoPC Manual is prior art to the ’786 patent under at least 35
`
`U.S.C. § 102(b) (pre-AIA).
`
` The Universal Serial Bus Specification - Rev. 2.0 (“USB 2.0”,
`
`Ex. 1010) was published on April 27, 2000. USB 2.0 is prior art
`
`to the ’786 patent under at least 35 U.S.C. § 102(b) (pre-AIA).
`
` The Universal Serial Bus Device Class Definition for Audio
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`Data Formats - Release 1.0 (“USB ADF”, Ex. 1011) was
`
`14
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`Exhibit 1003, Page 20
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`

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`
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`published on March 18, 1998. USB ADF is prior art to the ’786
`
`patent under at least 35 U.S.C. § 102(b) (pre-AIA).
`
` The Sony XR-C5120R FM/MW/LW Cassette Car Stereo
`
`Operating Instructions Manual (“Sony XR-C5120R Manual”,
`
`Ex. 1012) bears a copyright date of 1999. The Sony XR-
`
`C5120R Manual is prior art to the ’786 patent under at least 35
`
`U.S.C. § 102(b) (pre-AIA).
`
` Minagawa et al., Open Architectural Car Multimedia Platform,
`
`Clarion Co., Ltd., Convergence 98 Int’l Congress on
`
`Transportation Elec’s. (“Minagawa,” Ex. 1013) is dated
`
`October 19-21, 1998, and bears a copyright date of 1998.
`
`Minagawa is prior art to the ’786 patent under at least 35 U.S.C.
`
`§ 102(b) (pre-AIA).
`
`D. The Beckert References Can Be Treated as a Single
`Reference
`29. The three Beckert references I listed above share the first two
`
`named inventors – Richard D. Beckert and Mark M. Moeller – and were
`
`assigned to the same original assignee, Microsoft Corp. See Ex. 1006, Ex.
`
`1007, and Ex. 1008 at title page. All three Beckert references relate to a
`
`vehicle-based computer system that can be used as an automotive
`
`entertainment system. See id. In addition, two of the patents are related:
`
`
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`15
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`Exhibit 1003, Page 21
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`
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`Beckert ’363 issued from a continuation-in-part application of the
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`application that issued as Beckert ’164. Accordingly, their disclosures are
`
`very similar. See Ex. 1007 and Ex. 1008 at title page.
`
`30. Moreover, Beckert ’710 expressly incorporates specific
`
`disclosure from Beckert ’164 and Beckert ’363. Specifically, Beckert ’710
`
`incorporates details of its computer, support, and faceplate modules 84, 82,
`
`and 80 from Beckert ’164:
`
`A more detailed explanation of the three modules in the
`vehicle computer system is provided in co-pending US. patent
`application Ser. No. 08/564,586 entitled “Vehicle Computer
`System,” which was filed on Nov. 29, 1995 in the names of
`Richard D. Beckert, Mark M. Moeller, and William Wong.
`This application is assigned to Microsoft Corporation and is
`incorporated herein by reference.
`Ex. 1006 at 7:19-25 (emphasis added).
`
`31.
`
`In addition, Beckert ’710 incorporates details of its logic unit
`
`110 from Beckert ’363:
`
`A detailed description of one implementation of the logic unit
`110 is provided in co-pending US. patent application Ser. No.
`08/668,781, entitled “Vehicle Computer System With High
`Speed Data Buffer and Serial Interconnect”, which was filed
`on Jun. 24, 1996 in the names of Richard D. Beckert, Mark
`M. Moeller, Ron Randall, and William Wong. This
`application is assigned to the Microsoft® Corporation and is
`incorporated herein by reference. The logic circuitry
`described in this disclosure represents another implementation
`of the logic unit 110 that is more specifically tailored to
`implement the audio entertainment system.
`Ex. 1006 at 7:37-47 (emphasis added).
`
`
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`16
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`Exhibit 1003, Page 22
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`32. Based on my review of Beckert ’710, Beckert ’164, and Beckert
`
`’363, and my understanding of the rules governing incorporation by
`
`reference as they were explained to me by Counsel, it is my opinion that the
`
`host document, Beckert ’710 has described the material incorporated from
`
`Beckert ’164 and Beckert ’363 with suf