IPR2016-01477
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`PATENT NO. 7,489,786
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`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
`
`
`
`Patent No. 7,489,786
`Issue Date: Feb. 10, 2009
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`BLITZSAFE TEXAS, LLC’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,489,786
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`Case No. IPR2016-01477
`__________________________________________________________________
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`TABLE OF CONTENTS
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`Page No(s).
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`CLAIM CONSTRUCTION ............................................................................ 3
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`A.
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`B.
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`“car stereo” ............................................................................................ 4
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`“maintain…in an operational state” ...................................................... 5
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`III. THE BECKERT REFERENCES ARE NOT A SINGLE PRIOR ART
`REFERENCE .................................................................................................. 5
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`IV. PETITIONERS HAVE NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-4 AND
`THE PETITION SHOULD BE DENIED. ...................................................... 6
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`A.
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`B.
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`C.
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`D.
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`E.
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`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ........................................................................................................ 6
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`Claims 1, 10, 14, 23, and 24 are Not Obvious under Beckert
`’710 and Beckert ’164 (Ground 1) ........................................................ 8
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`1.
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`2.
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`3.
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`4.
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`5.
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`Car Stereo, Interface, and Connectors ........................................ 9
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`First Code Portion ..................................................................... 11
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`Second Code Portion ................................................................. 14
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`Third Code Portion.................................................................... 15
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`Obviousness .............................................................................. 16
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`Claim 5 Is Not Obvious over Beckert ’710, Beckert ’164 The
`AutoPC Manual and USB 2.0 (Ground 2) .......................................... 19
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`Claim 6 Is Not Obvious over Beckert ’710, Beckert ’164 and
`Beckert ’363 (Ground 3) ..................................................................... 20
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`Claim 7 is not Obvious Beckert ’710, Beckert ’164 The AutoPC
`Manual (Ground 4) .............................................................................. 21
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`Claim 8 is Not Obvious over Beckert ’710, Beckert ’164 and
`the Sony XR-C5120R Manual (Ground 5) ......................................... 21
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`F.
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`G.
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`H.
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`I.
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`Claims 57, 60, 64, and 65 are Not Obvious Over Beckert ’710,
`Beckert ’164, and USB ADF (Ground 6) ............................................ 22
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`1.
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`2.
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`3.
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`Interface, MP3 Player, and Connectors .................................... 22
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`First and pre-programmed code /device presence signal .......... 24
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`Second pre-programmed code portion ...................................... 24
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`Claim 61 is Not Obvious over Beckert ’710, Beckert ’164, USB
`ADF and the AutoPC Manual (Ground 7) .......................................... 26
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`Claim 62 is Not Obvious Under Beckert ’710, Beckert ’164,
`USB ADF, the AutoPC Manual, and Sony XR-C5120 Manual
`(Ground 8) ........................................................................................... 26
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`V.
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`CONCLUSION .............................................................................................. 27
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`TABLE OF AUTHORITIES
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`IPR2016-01477
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`PATENT NO. 7,489,786
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` Page(s)
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`Federal Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB, June 26, 2015) ........................................................ 6, 16
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`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) ..................................................19, 20, 21, 25, 26
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`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB, Aug. 29, 2014) ........................................................ 7, 18
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`GN Resound A/S v. Oticon A/S,
`IPR2015-00103 (PTAB, June 18, 2015) .................................................. 9, 16, 17
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .............................................................................................. 3, 6
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 7
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 7, 8, 17, 23
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`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939 (PTAB, Dec. 17, 2014) .............................................................. 8
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`Whole Space Indus. v. Zipshade Indus.,
`IPR2015-00488 (PTAB, July 24, 2015) ............................................................... 7
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`Federal Statutes
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`35 U.S.C. § 103 .......................................................................................................... 6
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`35 U.S.C. § 314(a) ..................................................................................................... 3
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`Other Authorities
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`37 C.F.R. § 1.75(c) ...........................................................................19, 20, 21, 25, 26
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`37 C.F.R. § 42.6(a)(3) ........................................................................................ 3, 7, 8
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`PATENT NO. 7,489,786
`37 C.F.R. § 42.104(b) ................................................................................................ 2
`37 C.F.R. § 42.104(b) .............................................................................................. ..2
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`IPR2016-01477
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`37 C.F.R. § .75(c) ..................................................................................................... 21
`37 C.F.R. § .75(c) ................................................................................................... ..21
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`37 CFR § 42.104(b)(4) ......................................................................................... 9, 16
`37 CFR § 42.104(b)(4) ....................................................................................... ..9, 16
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`EXHIBIT LIST
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`Exhibit #
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`Reference Name
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`2001
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`IPR2016-01422, Decision Denying Instution of
`US Patent 7,489,786, Dated July 6, 2016.
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`v
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`I.
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`INTRODUCTION
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`On July 21, 2016, Hyundai Motor Company Ltd., Hyundai Motor America,
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`Hyundai Motor Manufacturing Alabama, LLC, Kia Motors Corporation, Kia
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`Motors America, Inc., and Kia Motors Manufacturing Georgia, Inc., (collectively,
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`“Petitioners”) submitted a Petition (the “Petition”) to institute inter partes review
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`(“IPR”) of U.S. Patent No. 7,489,786 (Ex. 1001, “the ’786 Patent”), challenging
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`Claims 1, 5, 6, 7, 8, 10, 14, 23, 24, 57, 60, 61, 62, 64, 65 (“the Challenged
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`Claims”). Petitioner on the same day also filed an additional Petition alleging
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`unpatentability of the related U.S. Patent No. 8,155,342 (“the ’342 Patent”).
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`Most of the Challenged Claims have already survived multiple attacks by
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`Toyota, Petitioners’ co-defendant, in the related Texas litigation. See Pet. at 1.
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`The Board denied institution as to all claims in IPR2016-00422 and as to all claims
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`in IPR2016-00421, except for Claims 44 and 47 (which relate to “docking
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`stations” that are not currently asserted in the corresponding district court
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`litigations). Volkswagen and Honda followed up with their own volleys of
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`Petitions including IPR2016-01448 and IPR2016-01472 against some of the same
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`claims of the ’786 Patent. Hyundai and Kia repeat Toyota’s, Volkswagen’s, and
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`Honda’s mistakes, and this latest salvo of redundant art succumbs to at least the
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`same critical deficiencies as those of the preceding Petitions.
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`The Petition should be denied because there is not a reasonable likelihood
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`that Petitioners will succeed on any of their eight Grounds of unpatentability, all of
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`which rely on obviousness combinations based on the amalgam of references
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`Petitioners sets forth. None of these references teach or disclose the “interface” of
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`the Challenged Claims. All of the claims require a “pre-programmed code
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`portion” that performs command conversion. All of the claims also require
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`another pre-programmed code portion which is either a “pre-programmed code
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`portion” to generate a device presence signal, or a “pre-programmed code portion”
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`that performs data reformatting. None of the references teach these pre-
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`programmed code portions, and Petitioners do not even attempt to locate and point
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`to code portions in the amalgam of references. Instead, Petitioners resort to broad
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`generalizations and base conclusions that reek of hindsight.
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`In view of these and other fundamental deficiencies, Petitioners’ request for
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`inter partes review should be denied for at least the following reasons addressed
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`more fully below in this Preliminary Response:
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`(1) The Petition does not “specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon,” as required by 37
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`C.F.R. § 42.104(b)(4), because each Ground has at least one of the following
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`deficiencies: (i) failing to map each claim term to a specific teaching from an
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`asserted reference; (ii) providing citations to the asserted references that do not
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`teach the claim elements against which such citations are applied; and
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`(iii) mischaracterizing the citations to the asserted references.
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`(2) In the majority of Petitioners’ analysis, the Petition fails to identify the
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`difference(s) between the claims and the asserted references as required by
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (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 37
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`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 has not met its burden to
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`demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
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`II. CLAIM CONSTRUCTION
`For the purposes of this review, Patent Owner adopts the constructions set
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`forth in the Board’s Decisions in IPR2016-00421 and -00422. Additionally,
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`Petitioners attempts to construe other terms including “car stereo,” and “maintain .
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`PATENT NO. 7,489,786
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`. . in an operational state.” The constructions of “car stereo” and “maintain . . . in
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`an operational state” are addressed as follows.
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`“car stereo”
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`A.
`A person of ordinary skill in the art would have reasonable certainty about
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`the scope of the term “car stereo.” This term should, therefore, be construed
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`according to its plain and ordinary meaning. If the Board believes that
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`construction is necessary, Patent Owner proposes an alternative construction of
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`“car stereo” as “components that process audio signals and produce audible output
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`in a car,” which is consistent with the plain language and broadest reasonable
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`interpretation of the claims in light of the specification of the ’786 Patent.
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`Patent Owner’s construction lifts a portion of the specification that describes
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`examples of what was meant by the patentee as a “car stereo” or “car radio” and
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`elevates them to the status of a definition. The specification actually states, “Also,
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`as used herein, the terms ‘car stereo’ and ‘car radio’ are used interchangeably, and
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`are intended to include all presently existing car stereos . . . .”. ’786 Patent, 5:1–3
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`(emphasis added). This is not an instance where the inventor acted as his own
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`lexicographer. Rather, he simply stated that “car stereo” should be interpreted
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`broadly. To the extent a construction is necessary, Plaintiff’s construction in the
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`district court litigation captures this scope and should be adopted.
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`“maintain…in an operational state”
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`B.
`In view of the guidance in the claims and specification, it is unnecessary to
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`construe this phrase because it is readily understood by one of ordinary skill in the
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`art. If the Board chooses to construe this term, Patent Owner stipulates to the
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`construction “maintain in a state responsive to processed data and audio signals
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`from the external device.”
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`III. THE BECKERT REFERENCES ARE NOT A SINGLE PRIOR ART
`REFERENCE
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`Petitioners assert that three U.S. patents assigned to Beckert, et. al., should
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`be treated as a single reference and that the Beckert references render obvious
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`certain asserted claims of the ‘786 Patent alone, or when combined with other
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`references. “Beckert” should not be treated as a single reference. U.S. Patent No.
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`7,085,710 to Beckert, et. al., (“Beckert ’710”) was filed on January 7, 1998 and
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`issued on August 1, 2006.; U.S. Patent No. 5,794,164 to Beckert, et. al., (“Beckert
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`’164”) was filed on November 29, 1995 and issued on August 11, 1998. U.S.
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`Patent No. 6,009,363 to Beckert, et. al., (“Beckert ’363”) was filed on June 24,
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`1996 and issued on December 28, 1999. Each of these disclosures stands on its
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`own and the alleged incorporations, by reference, do not make these one reference,
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`nor do they provide an adequate motivation to combine the references.
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`In order to incorporate material by reference, a host document must contain
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`language clearly identifying the subject matter that is incorporated and where it is
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`to be found. A mere reference to another patent is insufficient. Even the portions
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`cited by Petitioners only include bare references, and none of the portions
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`identified by Petitioners rise to the level of disclosure necessary to support an
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`incorporation by reference for purposes of treating multiple references as a single
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`reference. Accordingly, Beckert cannot be treated as a single reference and
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`Petitioners must identify a motivation to combine the references, which they have
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`not done, as outlined below.
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`Accordingly, for at least this reason, the Petition should be denied as to all
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`Grounds.
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`IV. PETITIONERS HAVE NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-4 AND
`THE PETITION SHOULD BE DENIED.
`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103.
`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`skill in the art, and (4) where in evidence, so-called secondary considerations.
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`Graham, 383 U.S at 17-18. The Board has held that a failure to identify the
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`differences between the claimed subject matter and the prior art is fatal to an
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`obviousness challenge. See, Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
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`00355, Decision Denying Institution of Inter Partes Review, Paper 9 at 9-10
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`(PTAB, June 26, 2015) (denying institution for failure to identify the differences
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`between the claimed subject matter and the prior art).
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`Furthermore, in proposing that a person of ordinary skill in the art at the time
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`of the invention would have combined the references in a particular way to meet
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`the claimed invention, an obviousness analysis must support the proposed
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`combination with “some articulated reasoning with some rational underpinning.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006)). A proposed combination cannot be supported
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`based on “mere conclusory statements.” In re Kahn, 441 F.3d at 988. In a petition
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`seeking institution of an inter partes review, “articulated reasons with rational
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`underpinnings” must be found in the petition itself. Whole Space Indus. v.
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`Zipshade Indus., IPR2015-00488, Decision Denying Institution of Inter Partes
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`Review, Paper 14 at 15 (PTAB, July 24, 2015) (“[C]onclusory labels do not
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`substitute for a fact-based analysis in the Petition establishing what is being
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`modified, and why it would have been obvious to a person of ordinary skill to
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`make the modification”). Id. at 17. The arguments needed to support a conclusion
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`of obviousness may not be incorporated by reference to another document.
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`37 C.F.R. §42.6(a)(3) (“Arguments must not be incorporated by reference from
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`one document into another document.”); Cisco Sys., Inc., v. C-Cation Techs., LLC,
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`IPR2014-00454, Decision Denying Institution of Inter Partes Review, Paper 12 at
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`IPR2016-01477
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`PATENT NO. 7,489,786
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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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`Petitioners’ obviousness arguments are woefully inadequate. Petitioners fail
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`to identify any differences between the prior art and the claims and leave such
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`tasks to Patent Owner and to the Board. Moreover, the boilerplate used by
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`Petitioners do not pass muster under KSR. Even something as basic as the “level
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`of skill in the art” is left to the imagination––Petitioners do not include it. The
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`Petition should not be saved by the Kyriakakis Declaration, which is similarly
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`insufficient. Additionally, to the extent there were to be more robust arguments in
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`an expert declaration, merely citing to that declaration without discussing its
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`substance would be an impermissible incorporation by reference under 37 C.F.R.
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`§ 42.6(a)(3).
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`B. Claims 1, 10, 14, 23, and 24 are Not Obvious under Beckert ’710
`and Beckert ’164 (Ground 1)
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`As a preliminary matter, and as set forth above, the Board has previously
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`held that the “interface” requires structural and functional separation between three
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`components: (1) the car stereo, (2) the interface, and (3) the aftermarket/portable
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`device. Petitioners, however, have not pointed out any such separation between
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`the components in the cited references. Additionally, while Petitioners generally
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`point to Beckert as allegedly disclosing the “interface,” “stereo,” and “connectors,”
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`Petitioners do not specify where each element of the claim is found in the prior art
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`with sufficient particularity. Petitioners’ claim charts do not cure these
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`deficiencies because this Board has expressly held that claim charts alone are not
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`enough to show a reasonable likelihood of success, and that merely presenting
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`citations and quotes in claim charts alone is a violation of 37 CFR § 42.104(b)(4).
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`See, GN Resound A/S v. Oticon A/S, IPR2015-00103, Paper 13 at 6 (June 18, 2015)
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`(“It is a requirement of a Petition to align the evidence and arguments with the
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`various limitations of the challenged claims.”).
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`Car Stereo, Interface, and Connectors
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`1.
`As a preliminary matter, Petitioners erroneously point to the “computer
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`module” is the “car stereo.” In doing so, Petitioners attempt to shoehorn an
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`aftermarket computer system, along with an alleged interface into the “car stereo”
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`thus eviscerating the structure of the claims. Accordingly, the Petition should be
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`denied.
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`Additionally, the claims require that the “interface” must include a
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`microcontroller and be disposed between the first connector and the second
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`connector. Petitioners fail to point to such a configuration in any of the references.
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`Likewise, Petitioners again do not identify an “interface” disposed between two
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`connectors for integrating an after-market audio device with a car stereo. The
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`Beckert references disclose a computer for vehicles, but do not contemplate
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`integrating “after-market audio devices” into a “car stereo.” Petitioners point to
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`“86” as the “first electrical connector.” Pet. at. 24. However, Beckert ’710 states
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`that “86” is “a multi-bit bus.” Ex. 1006 at 5:38-39. Petitioners do not explain how
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`a “bus” is an “electrical connector” within the scope of the claims, either literally
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`or under an obviousness argument. A “bus” does not need to involve a physical
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`connector because a bus can be contained within a single SoC. As such, the
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`Petition fails to point out where the limitations exist in the reference and Ground 1
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`must fail.
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`In addition, it is apparent from the physical embodiment of Beckert ’710’s
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`computer 22 shown in Figure 1 (reproduced below) that the Beckert references do
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`not disclose integrating “after-market audio devices” into “a car stereo.”
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`Ex. 1006 at Fig. 1. Petitioners do not identify which of the elements in Figure 1
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`are “car stereo” elements, which of the elements are “interface” elements, and
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`which of the elements are “after-market audio device” elements.
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`With regard to the separation between the “car stereo” and the “interface,”
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`Petitioners’ errors again begin with the “first connector.” Petitioners state that
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`“Beckert ’710 discloses a computer module which corresponds to the broad
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`construction of ‘car stereo.’” (Pet. at 22). Petitioners then allege that the interface
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`is the “support module,” however, the support module is part of the same vehicle
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`computer and, thus, cannot be an “interface.” (Pet. at 29). This Board has ruled
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`that the term “interface” is a “physical unit that connects one device to another and
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`that has a functional and structural identity separate from that of both connected
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`devices” and Petitioners have advocated for that construction here. Ex. 2001 at 15;
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`Pet. at 17. Petitioners make no argument whatsoever relating to how the “support
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`module,” (Petitioners’ accused “interface”), which is part of the same vehicle
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`computer system, is a physical unit with a structural identity separate from the
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`“computer module” (Petitioners’ accused “car stereo”).
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`Accordingly, Ground 1 should be denied.
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`First Code Portion
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`2.
`The “first code portion” limitation requires:
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`a first pre-programmed code portion for remotely controlling the
`after-market audio device using the car stereo by receiving a control
`command from the car stereo through said first connector in a format
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`incompatible with the aftermarket audio device, processing the
`received control command into a formatted command compatible with
`the after-market audio device, and transmitting the formatted
`command to the after-market audio device through said second
`connector for execution by the after-market audio device
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`Ex. 1001 at Claim 1 (exemplary). This code portion performs three steps,
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`(1) receiving a control command from the car stereo through the first connector in
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`a format incompatible with the aftermarket audio device, (2) processing the
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`received control command into a formatted command compatible with the after-
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`market audio device, and (3) transmitting the formatted command to the after-
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`market audio device through said connector for execution by the after-market
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`audio device. Thus, a conversion is performed between the stereo’s control
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`commands and the after-market audio device’s control commands. Even assuming
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`that the references teach “control commands,” none of the references teach
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`conversion of control commands from a stereo format to an after-market audio
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`device format.
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`The Beckert references do not contemplate or describe “control commands”
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`being received by a processor in a format incompatible with an after-market audio
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`device. Petitioners’ analysis of the disclosure is misleading. Petitioners make no
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`reference of the accused “interface” receiving “control commands” that are
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`incompatible with the audio devices. Instead, Petitioners make general allegations
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`12
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`regarding an “API.” However, this “API” does not receive commands in an
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`incompatible format, or translate commands. Instead, Beckert discloses several
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`other components involved in the command structure including device “drivers” as
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`well as the hardware itself. For example, Beckert states that the API “transfers
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`calls made by the applications to the appropriate device drivers,” but Beckert does
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`not explicitly describe the format that commands are relayed from an API to a
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`device driver and then subsequently to the devices. Ex. 1006 at 2:64-3:6.
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`Moreover, Petitioners do not explain where the API software is located
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`within the “vehicle computer system.” Beckert states that a “computer system,”
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`which is the entire “vehicle computer system,” including the accused “interface,”
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`“car stereo,” and “after-market audio device,” contains an API. Petitioners do not
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`allege the location of the API with any further specificity. Additionally, an API is
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`a set of protocols and tools that may be used to program a software interface. This
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`is not the same as a “pre-programmed microcontroller” disclosed by Marlowe, in
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`which the interface comprises pre-programmed hardware.
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`Petitioners also cite to Beckert’s disclosure of a Hardware Abstraction
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`Layer. Pet. at 33. However, Petitioners do not map the hardware abstraction layer
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`to the conversion limitations, and Petitioners do not explain where the Hardware
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`Abstraction Layer is located or how it represents “pre-programmed” code.
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`Accordingly, because the Beckert references fail to disclose this limitation,
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`13
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`Ground 1 should be denied.
`3.
`Second Code Portion
`The “second code portion” limitation requires:
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`a second pre-programmed code portion for receiving data from the
`after-market audio device through said second connector in a format
`incompatible with the car stereo, processing the received data into
`formatted data compatible with the car stereo, and transmitting the
`formatted data to the car stereo through said first connector for display
`by the car stereo
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`Ex. 1001 at Claim 1 (exemplary). This code portion requires three steps,
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`(1) receiving data from the after-market audio device through said second
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`connector in a format incompatible with the car stereo, (2) processing the received
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`data into formatted data compatible with the car stereo, and (3) and transmitting
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`the formatted data to the car stereo through said first connector for display by the
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`car stereo.
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`
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`The Beckert references do not describe data format conversion, which
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`requires the “receiving data from the after-market audio device through said
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`second connector in a format incompatible with the car stereo” or “processing the
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`received data into formatted data compatible with the car stereo.” Petitioners again
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`point to Beckert’s disclosure of a Hardware Abstraction Layer to meet the “data”
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`limitation. Pet. at 36. Petitioners do not properly map the prior art to this
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`limitation, and do not explain where this Hardware Abstraction Layer is located or
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`14
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`how it is related in any way to data conversion. Instead, Petitioners make general
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`statements regarding the ability to display information without discussing the
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`claimed translation itself. Petitioners simply parrot the claim language without
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`any meaningful discussion. Pet. at 35-38. Even without taking into consideration
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`the “structural and functional separation” issue described above, the references,
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`when combined, do not teach or disclose the claimed data conversion. Petitioners
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`do not appear to acknowledge this deficiency, and Petitioners’ boilerplate
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`obviousness arguments do not remedy the issue.
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`Accordingly, Ground 1 should be denied.
`4.
`Third Code Portion
`The “third code portion” limitation requires:
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`a third pre-programmed code portion for switching to one or more
`auxiliary input sources connected to said third electrical connector
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`Ex. 1001 at Claim 1 (exemplary). Petitioners do not address a pre-programmed
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`code portion used to switch to one or more auxiliary input sources. Instead,
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`Petitioners cite to Beckert’s disclosure of an API, which is merely a guideline for
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`implementing a program and not a specific teaching regarding pre-programmed
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`code portions such as those of the claim. Patent Owner has addressed the
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`shortcomings of the mere disclosure of an API and HAL above.
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`Accordingly, Ground 1 should be denied.
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`15
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`5. Obviousness
`Petitioners’ arguments repeatedly do not address whether any of the missing
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`limitations can be reconstructed from the piecemeal disclosures set forth in
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`Petitioners’ charts and prose.
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`The Board has held that a failure to identify the differences between the
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`claimed subject matter and the prior art is fatal to an obviousness challenge. See,
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`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
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`Institution of Inter Partes Review, Paper 9 at 9–10 (PTAB, June 26, 2015)
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`(denying institution for failure to identify the differences between the claimed
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`subject matter and the prior art). Petitioners attempt to mask the inadequacies of
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`their references through their failure to identify these critical differences.
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`Petitioners provide various string-cites in their charts with no substantial analysis.
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`This Board has expressly held that claim charts are not enough to show a
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`reasonable likelihood of success and that merely presenting arguments in claim
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`charts alone is a violation of 37 CFR § 42.104(b)(4). See, GN Resound A/S v.
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`Oticon A/S, IPR2015-00103, Paper 13 at 6 (June 18, 2015) (“It is a requirement of
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`a Petition to align the evidence and arguments with the various limitations of the
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`challenged claims.”) The Board in GN Resound denied institution based on an
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`insufficiently detailed explanation of how the asserted references taught or
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`suggested the claims. In a subsequent request for rehearing, the Board
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`IPR2016-01477
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`PATENT NO. 7,489,786
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`acknowledged that the cited portions were present in the claim charts, but still
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`rejected the rehearing request because “bare citations and quotes” did not provide a
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`“sufficiently detailed explanation of how the asserted references teach or suggest
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`the claimed limitations.” See, GN Resound A/S, IPR2015-00103, Paper 13 at 6.
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`The claim charts themselves present citations and quotes to the prior art––
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`not arguments. The claim charts do not present a detailed explanation as to how
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`each claim element is taught by the prior art. As explained in GN Resound,
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`Petitioner should not expect the Board to search through cited portions of
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`references to map prior art disclosure with claim elements or to infer or create
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`arguments from the record. Id.
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`The claims of the ’786 Patent require a particular arrangement of thr