UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN HONDA MOTOR CO., INC.
`
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner Patent
`
`No. 8,155,342
`Issued: Apr. 10, 2012
`Filed: Jun. 27, 2006
`
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`
`
`
`Inter Partes Review No.: IPR2016-01533
`
`
`
`PETITION FOR INTER PARTES REVIEW
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`
`
`
`
`

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`TABLE OF CONTENTS
`
`
`Page
`
`V.
`
`
`INTRODUCTION ................................................................................................ 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ............................. 1
`A.
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1) .............. 1
`B.
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) .......................... 1
`C.
`LEAD AND BACK-UP COUNSEL AND SERVICE
`INFORMATION UNDER 37 C.F.R. § 42.8(b)(3) and (4)........................ 3
`III. PAYMENT OF FEES — 37 C.F.R. § 42.103 ...................................................... 3
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ............................... 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 4
`B.
`Prior Art Patents and Printed Publications ................................................. 4
`C.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested ......................................................................................... 5
`SUMMARY OF THE '342 PATENT................................................................... 6
`A.
`Brief Description ........................................................................................ 6
`B.
`Summary of the Prosecution History of the '342 patent ............................ 7
`VI. CLAIM CONSTRUCTION ................................................................................. 9
`VII. EFFECTIVE FILING DATE OF '342 PATENT ............................................... 16
`VIII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`CLAIMS 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106,
`109- 111, 113, 115, AND 120 OF THE '342 PATENT ARE
`UNPATENTABLE ............................................................................................. 23
`A. Grounds 1-3: Clayton ............................................................................... 23
`1.
`Ground 1: Claims 49-55, 57, 62-64, 71, 73-80, 95, 97,
`99-103, 109-111, and 120 are obvious under 35 U.S.C.
`§103(a) by Clayton in view of Berry ............................................. 23
`Ground 2: Claims 49-57, 62-64, 66, 70, 71, 73-80, 94,
`95, 97, 99-103, 106, 109-111, 113, and 120 are obvious
`under 35 U.S.C. §103(a) by Clayton in view of Berry and
`Marlowe ......................................................................................... 54
`
`2.
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`-i-
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`

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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`3.
`
`Ground 3: Claims 68 and 115 are obvious under 35
`U.S.C. §103(a) by Clayton in view of Berry, Marlowe,
`and Gioscia ..................................................................................... 61
`IX. CONCLUSION ................................................................................................... 62
`
`
`
`
`
`-ii-
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`

`
`EXHIBITS
`
`Exhibit
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`1019
`1020
`1021
`
`Description
`U.S. Patent No. 8,155,342 ("the '342 patent")
`U.S. Patent Application Publication No. 2006/0181963 ("Clayton")
`U.S. Provisional Application No.
`60/651,963
`("Clayton
`Provisional")
`U.S. Patent No. 6,559,773 ("Berry")
`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe")
`U.S. Patent No. 6,421,305 ("Gioscia")
`Claim Construction Ruling in Marlowe Patent Holdings LLC v.
`DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ) and Marlowe
`Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D.
`NJ)
`U.S. Patent Application No. 11/475,847 ("the '847 application")
`U.S. Patent Application No. 11/071,667 ("the '667 application")
`U.S. Patent Application No. 10/732,909 ("the '909 application")
`U.S. Patent Application No. 10/316,961 ("the '961 application")
`Highlighted '342 Patent (Showing the New Matter)
`Infringement
`Plaintiff's Disclosure of Asserted Claims and
`Contentions, served in Blitzsafe Texas, LLC v. Toyota Motor Corp.
`et al., 2-15-cv-01277 (E.D. Tex.)
`File History of the '342 Patent
`1999 ID3v2.3 Metadata Standard (1999)
`Declaration of Dr. Thomas Matheson
`Canadian Patent Application Publication No. CA 2347648
`("Kandler")
`International Publication No. WO 01/67266 A1 ("Lau")
`U.S. Patent Application Publication No. 2001/0028717 ("Ohmura")
`Bluetooth ESDP for UPnP (2001)
`Universal Plug and Play Device Architecture (2000)
`
`iii
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`

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`
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`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner American
`
`Honda Motor Co., Inc. ("Honda" or "Petitioner") respectfully requests Inter
`
`Partes Review of claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103,
`
`106, 109-111, 113, 115, and 120 of U.S. Patent No. 8,155,342 (Ex. 1001, "the
`
`'342 patent"), which was filed on June 27, 2006 and issued on April 10, 2012 to
`
`Ira Marlowe, and is currently assigned to Blitzsafe Texas, LLC. ("Blitzsafe" or
`
`"Patent Owner") according to the U.S. Patent and Trademark Office assignment
`
`records. There is a reasonable likelihood that Petitioner will prevail with respect
`
`to at least one of the claims challenged in this Petition.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`The real parties-in-interest for Petitioner are Honda Motor Co., Ltd.,
`
`American Honda Motor Co., Inc., Honda of America Mfg., Inc, Honda
`
`Manufacturing of Alabama, LLC, Honda Manufacturing of Indiana, LLC, and
`
`Honda Patents & Technologies North America, LLC.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`The ‘342 patent is asserted in a patent infringement litigation pending in
`
`the Eastern District of Texas, captioned Blitzsafe Texas, LLC v. Honda Motor
`
`Co., Ltd. et al., 2-15-cv-01274-JRG-RSP (LEAD CASE). Petitioner is a
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`1
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`

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`
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`defendant in the litigation, and the earliest that Petitioner or any party in privity
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`with Petitioner was served was July 22, 2015. The ‘342 patent is currently the
`
`subject of the following on-going litigations: Blitzsafe Texas, LLC v. Nissan
`
`Motor Co., Ltd. et al., 2-15-cv-01276, July 16, 2015 (E.D. Tex.); Blitzsafe
`
`Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277, July 16, 2015 (E.D.
`
`Tex.); Blitzsafe Texas, LLC v. Volkswagen Group of Am., Inc. et al., 2-15-cv-
`
`01278, July 16, 2015 (E.D. Tex.); and Blitzsafe Texas, LLC v. Hyundai Motor
`
`Co. et al., 2-15-cv- 01275, July 16, 2015 (E.D. Tex.).
`
`In October 2015, Unified Patents filed an inter partes review petition on
`
`the ‘342 patent in Case No. IPR2016-00118. The Board issued a Decision
`
`Denying Institution of Inter Partes Review on April 27, 2016.
`
`In December 2015, Toyota Motor Co. filed two inter partes review
`
`petitions on the ‘342 patent in Case Nos. IPR2016-00418 and IPR2016-00419.
`
`The Board issued a decision granting institution of Case No. IPR2016-00418 on
`
`July 8, 2016 and issued a decision denying institution of Case No. IPR2016-
`
`00419 on July 19, 2016. The present petition is substantively identical in all
`
`material respects to the petition filed in Case No. IPR2016-00418.
`
`In July 2016, American Honda Motor Co., Inc. filed an inter partes
`
`review petition on the ‘342 patent in Case No. IPR2016-01473. Volkswagen
`
`Group of America, Inc. filed two inter partes review petitions on the ‘342 patent
`
`2
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`

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`
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`in Case Nos. IPR2016-01445 and IPR2016-01449. 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. filed an inter partes review petition on the ‘342
`
`patent in Case No. IPR2016-01476. All of these petitions are currently pending.
`
`C. LEAD AND BACK-UP COUNSEL AND SERVICE
`INFORMATION UNDER 37 C.F.R. § 42.8(b)(3) and (4)
`Honda provides the following designation of counsel:
`
`Lead Counsel
`Joseph Melnik
`Reg. No. 48,741
`jmelnik@jonesday.com
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California 94303
`Telephone: (650) 739-3939
`Facsimile: (650) 739-3939
`
`
`Back-up Counsel
`Joseph M. Beauchamp
`Reg. No. 46,544
`jbeauchamp@jonesday.com
`H. Albert Liou
`Reg. No. 71,504
`aliou@jonesday.com
`JONES DAY
`717 Texas Avenue, Suite 3300
`Houston, Texas 77002
`Telephone: (832) 239-3939
`Facsimile: (832) 239-3600
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition. Honda consents to electronic service by email at the addresses above.
`
`III. PAYMENT OF FEES — 37 C.F.R. § 42.103
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
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`Account No. 503013, ref: 651377-600009 for the fees set in 37 C.F.R. § 42.15(a)
`
`for this Petition for Inter Partes Review, and further authorizes payment for any
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`3
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`

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`additional fees to be charged to this Deposit Account.
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`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the '342 patent (Ex. 1001) is available for Inter
`
`Partes Review and that Petitioner is not barred or estopped from requesting an
`
`Inter Partes Review challenging the patent claims on the grounds identified in
`
`this Petition.
`
`Prior Art Patents and Printed Publications
`B.
`U.S. Patent Application Publication No. 2006/0181963 ("Clayton") (Ex.
`
`1002) claims the benefit of U.S. Provisional Application Nos. 60/651,959,
`
`60/651,958, 60/651,960, 60/651,961, and 60/651,963, all filed on February 11,
`
`2005. Thus, it qualifies as prior art under at least 35 U.S.C. § 102(e). The
`
`provisional applications contain similar material, and U.S. Provisional
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`Application No. 60/651,963 is attached as Ex. 1003. Throughout this Petition,
`
`Clayton is cited with reference to Ex. 1002 as well as its provisional application
`
`(Ex. 1003) to establish that Clayton as applied herein is entitled to an earliest
`
`effective filing date of February 11, 2005, i.e., the filing date of the provisional
`
`applications.
`
`U.S. Patent No. 6,559,773 ("Berry") (Ex. 1004) published on May 6, 2003,
`
`and was filed on December 21, 1999. Thus, it qualifies as prior art under 35
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`4
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`

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`
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`U.S.C. § 102(b), or in the alternative, 35 U.S.C. § 102(a) or (e).
`
`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe") (Ex.
`
`1005) published on November 20, 2003. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`U.S. Patent No. 6,421,305 ("Gioscia") (Ex. 1006) was filed on November
`
`13, 1998 and published on July 16, 2002. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b), or in the alternative, 35 U.S.C. § 102(a) or (e).
`
`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested
`Petitioner requests Inter Partes Review of claims 49-57, 62-64, 66, 68, 70,
`
`71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 of the '342 Patent
`
`(Ex. 1001) on the grounds set forth in the tables below and requests that each of
`
`the claims be found unpatentable. An explanation of how claims 49-57, 62-64, 66,
`
`68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 are
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`unpatentable under the statutory grounds identified below, including the
`
`identification of where each element is found in the prior art references and the
`
`relevance of each of the prior art references, is provided in the form of detailed
`
`claim charts. Additional explanation and support for each ground of rejection is set
`
`forth in the Declaration of Dr. Thomas Matheson (Ex. 1016).
`
`Ground
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`'342 Patent Claim Basis for Rejection
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`5
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`

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`
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`Ground 1 Claims 49-55, 57,
`62-64, 71, 73-80,
`95, 97, 99-103, 109-
`111, and 120
`
`Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004)
`
`Obvious under 35 U.S.C. §103(a) by Clayton
`Ground 2 Claims 49-57, 62-
`(Ex. 1002) in view of Berry (Ex. 1004) and
`64, 66, 70, 71, 73-
`80, 94, 95, 97, 99- Marlowe (Ex. 1005)
`103, 106, 109-111,
`113, and 120
`Ground 3 Claims 68 and 115 Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004),
`Marlowe (Ex. 1005) and Gioscia (Ex. 1006)
`
`V.
`
`SUMMARY OF THE '342 PATENT
`A. Brief Description
`The '342 patent is directed to a multimedia device integration system that
`
`controls a portable device from a car audio/video system via an "integration
`
`subsystem." See Ex. 1001 at Abstract; Ex. 1016 at ¶46. The '342 patent claims
`
`are directed to certain embodiments where wireless integration is provided
`
`between a car audio/video system and a portable audio/video device via the
`
`integration subsystem. See Ex. 1014 ('342 Patent File History) at p. 732,
`
`Amendment 1.111 filed on Nov. 30, 2009; Ex. 1016 at ¶¶50-57.
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`6
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`The integration subsystem is positioned within the portable device or
`
`within the car audio/video system to integrate the two devices, as shown in
`
`FIGS. 18 and 19 reproduced below. See id.; see also Ex. 1001 at FIGS. 18 and
`
`19 and 33:43-35:32. Ex. 1016 at ¶¶46-49.
`
`Summary of the Prosecution History of the '342 patent
`B.
`The application that issued as the '342 patent was filed on June 27, 2006
`
`with 91 claims. Ex. 1014 at pp. 85-104.
`
`In response to the first Non-Final Office Action issued on May 28, 2009,
`
`the Applicant filed an Amendment on November 30, 2009 canceling original
`
`claims 1- 91 and adding new claims 92-212. Id. at pp. 702-737. In the remarks,
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`the Applicant noted that "new claims 92-212 are directed to a multimedia device
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`7
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`
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`integration system which allows for wireless integration of a portable device with
`
`a car audio/video system." See id. at p. 732, Amendment 1.111, filed on Nov.
`
`30, 2009.
`
`With this Amendment, the Applicant argued that the primary reference
`
`cited, Coon (U.S. Patent No. 6,539,358), disclosed a voice-interactive docking
`
`station for a portable computer device, and failed to disclose an integration
`
`subsystem that obtains information about an audio/visual file. See id. at p. 734.
`
`In a later Office Action issued on February 15, 2011, the Examiner
`
`rejected all the claims primarily in view of Tranchina (US 7,493,645). See id. at
`
`pp. 882- 909, Office Action, issued Feb. 15, 2011. In a 1.111 Amendment filed
`
`on Aug. 15, 2011, the Applicant argued that Tranchina lacks a system which
`
`instructs a portable device to play an audio file in response to a user selecting the
`
`audio file from controls of the car audio/visual system. See id. at p. 937,
`
`Amendment 1.111, filed on Aug. 15, 2011. Further, in a 1.116 Amendment filed
`
`on January 29, 2012 in response to a Final Office Action in which Tranchina
`
`was still applied, the Applicant distinguished over Tranchina by arguing that the
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`claimed integration subsystem is wirelessly connected to a car audio/video
`
`system. The Applicant submitted this argument despite the fact that most of the
`
`claims do not recite or require such a wireless communication between the
`
`integration subsystem and a car audio/video system. See id. at pp. 1039-1042,
`
`8
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`Amendment 1.116, filed on Jan. 29, 2012; Ex. 1016 at ¶¶61-62.
`
`On February 16, 2012, the Examiner issued a Notice of Allowance,
`
`without an indication of a reason for allowance. See id. at pp. 1079-1083,
`
`Notice of Allowance, issued Feb. 16, 2012.
`
`VI. CLAIM CONSTRUCTION
`A claim subject to Inter Partes Review is given its "broadest reasonable
`
`construction in light of the specification of the patent in which it appears." (37
`
`C.F.R. § 42.100(b).) This means that the words of the claim are given their plain
`
`meaning from the perspective of one of ordinary skill in the art unless that
`
`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321
`
`(Fed. Cir. 1989).
`
`"Means-plus-function" limitations are construed in accordance with 35§
`
`112, 6th paragraph. A claim element that does not recite the term "means" will
`
`invoke 35 U.S.C. § 112, 6th paragraph if the claim element "fails to 'recite
`
`sufficiently definite structure' or else recites 'function without reciting structure
`
`for performing that function.'" Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`
`1349 (Fed. Cir. 2015), citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
`
`2000).
`
`Petitioner submits that a person of ordinary skill in the art at the time of
`
`the alleged invention would have had at least a Bachelor's degree in electrical
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`9
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`engineering or equivalent science/engineering degree and at least two years of
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`experience in signal processing and/or electronic system design, or would have at
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`least four years of experience in signal processing and/or electronic system
`
`design. Ex. 1016 at ¶16.
`
`Petitioner further submits that, for purposes of this Inter Partes Review
`
`only, the claim terms are presumed to take on their broadest reasonable
`
`interpretation in light of the specification of the '342 patent. Petitioner submits
`
`that the following terms may need to be construed in connection with this Inter
`
`Partes Review:
`
`1. " integration subsystem" (all challenged claims)
`
`The term "integration subsystem" itself is not a term recognized by
`
`persons of ordinary skill in the art to have a definite meaning as the name of a
`
`structure. See Williamson, 792 F.3d at 1349; Ex. 1016 at ¶74. Nor do claims
`
`49, 73, 97, and 120 include any structural limitations for performing the
`
`functions of the integration subsystem recited. Ex. 1016 at ¶74. For example,
`
`the term "subsystem" is used interchangeably in the '342 patent with the term
`
`"module," and amounts to nothing more than a generic nonce word or verbal
`
`construct tantamount to using the term "means." See, e.g., Ex. 1001 at 5:19,
`
`5:23, 5:29-31, 5:40, 5:53, 5:60, and 34:12; see also Williamson, 792 F.3d at
`
`1350 (generic terms such as "mechanism," "element," "device," etc., in claim
`
`10
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`
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`are tantamount to using the word "means"). Therefore, the claimed
`
`"integration subsystem" is a means-plus-function claim element that must be
`
`construed under 35 U.S.C. § 112, 6th paragraph. Williamson, 792 F.3d at 1349.
`
`In construing a "means-plus-function" limitation, the function recited in
`
`the limitation must first be identified before a corresponding structure
`
`disclosed in the specification for performing the claimed function is
`
`determined. See JVW Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d
`
`1324, 1330 (Fed. Cir. 2005); see also Chiuminatta Concrete Concepts, Inc. v.
`
`Cardinal Indst., Inc., 145 F.3d 1303, 1308 (Fed. Cir. 1998). Claims 49 and 73
`
`essentially recite the same functions performed by the integration subsystem:
`
`(1a) obtaining, using a wireless communication link, information about an
`
`audio file stored (claim 49) or received (claim 73) on the portable device; (2a)
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`transmitting the information to the car audio/video system for subsequent
`
`display; (3a) instructing the portable device to play the audio file in response to
`
`a user selecting the audio file; and (4a) receiving audio generated by the
`
`portable device over the wireless communication link. Ex. 1016 at ¶75.
`
`Meanwhile, the functions of the integration subsystem in claim 97 are:
`
`(1b) channeling audio generated by the portable device to the car audio/video
`
`system using a wireless communication link; (2b) receiving a control command
`
`from a user in a format incompatible with the portable device; (3b) processing
`
`11
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`

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`
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`the control command into a format compatible with the portable device; and (4b)
`
`dispatching the formatted command to the portable device. Id. at ¶76.
`
`The functions of the integration subsystem recited in claim 120 are: (1c)
`
`channeling audio generated by the portable device to the car audio/video system
`
`using a wireless communication link; (2c) receiving data from the portable
`
`device in a format incompatible with the car audio/video system; (3c) processing
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`the data into a format compatible with the car audio/video system; and (4c)
`
`transmitting the processed data to the car audio/video system. Id. at ¶77.
`
`Next, in determining the corresponding structure disclosed in the
`
`specification for performing the identified function(s), the disclosed structure
`
`must be clearly linked with the function(s). See B. Braun Medical Inc., v. Abbott
`
`Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997). In the instant case, the term
`
`"integration subsystem" is first used in the '342 patent specification in relation to
`
`the embodiments illustrated in FIGS. 18-24. Ex. 1001 at 33:43-38:67 and FIG.
`
`Of note, the specification states, "The integration subsystem 932 contains
`
`circuitry similar to the circuitry disclosed in the various embodiments of the
`
`present invention discussed herein, and could include a PIC16F872 or
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`PIC16F873 microcontroller manufactured by Microchip, Inc. and programmed in
`
`accordance with the flowchart discussed below with respect to FIG. 24." Id. at
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`34:63-35:1; Ex. 1016 at ¶79.
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`
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`12
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`As can be seen in FIG. 24, many of the above-listed claim functions
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`respectively correspond to a single step in the flowchart. For example, the
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`"obtaining… information about an audio file" in claims 49 and 73 is
`
`encompassed only by step 1460. Similarly, the "channeling audio generated by
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`the portable device to the car audio/video system using a wireless
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`communication link" in claims 97 and 120 is, at most, encompassed only by step
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`1462. However, a one-step algorithm disclosed in the specification that simply
`
`mirrors the claimed function does not constitute sufficient corresponding
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`structure for a computer-implemented function recited in a claim. See
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`Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc., 355 Fed. Appx. 389, 394-
`
`95 (Fed. Cir. 2009). Accordingly, the claimed integration subsystem does not
`
`have sufficient corresponding structure disclosed in the specification, and is
`
`therefore indefinite under 35 U.S.C. § 112, 2nd paragraph. Id.; see also
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`Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1378–81 (Fed.
`
`Cir. 2013) (claim indefinite because the specification did not sufficiently disclose
`
`algorithm that explained how to achieve function). Ex. 1016 at ¶83.
`
`Notwithstanding, to the extent the Board somehow decides that the
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`claimed integration subsystem is not indefinite, it is noted that a programmed
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`processor is an equivalent to the microcontroller described in the '342 patent. Id.
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`at ¶80. Therefore, although indefinite, the corresponding structure for the
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`"integration subsystem" of claims 49, 73, 97, and 120 is disclosed as a
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`microcontroller or processor programmed to perform the method illustrated in
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`FIG. 24. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
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`1999) (for computer-implemented "means-plus-function" limitations, the
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`structure corresponding to the function of the claim limitation includes the
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`algorithm needed to transform a general purpose computer or processor to a
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`special purpose computer for performing the function); see also Aristocrat Techs.
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`Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) and
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`Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (the algorithm
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`may be understood as an outline of an algorithm, a flowchart, or a specific set of
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`instructions or rules disclosed in the specification); see also Ex. 1016 at ¶¶81-84.
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`Furthermore, the specification describes the "integration subsystem" as
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`being positioned within the portable device or within the car audio/video system.
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`See Ex. 1001 at FIGS. 18 and 19, 34:9-13, and 35:23-28. This is consistent with
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`the '342 patent claims, which further indicate that the "integration subsystem" is
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`located internally within one of the devices to be wirelessly integrated. See, e.g.,
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`id. at claims 2, 26, 50, 74, 98, and 99; Ex. 1016 at ¶85.
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`Thus, should the Board decide that "integration subsystem" is not
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`indefinite under 35 U.S.C. § 112, 2nd paragraph, an integration subsystem can
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`best be understood as a microcontroller or processor provided within the portable
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`device or the car audio/video system and programmed to perform the method of
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`FIG. 24; Ex. 1016 at ¶86.
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`2. "car audio/video system" (all challenged claims)
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`Claim 49, for example, recites "an integration subsystem in
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`communication with a car audio/video system." Throughout the '342 patent
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`disclosure, the car audio/video system is continually referred to as a car audio or
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`a car video system. For example, the '342 patent discloses that "[t]he present
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`invention relates to a multimedia device integration system. One or more after-
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`market devices, such as a CD player, CD changer, digital media player (e.g.,
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`MP3 player, MP4 player, WMV player, Apple iPod, portable media center, or
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`other device), satellite receiver, digital audio broadcast (DAB) receiver, video
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`device (e.g., DVD player), cellular telephone, or the like, can be integrated with
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`an existing car radio or car video device, such as an OEM or after-market car
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`stereo or video system." Id. at 8:38-46 (emphasis added).
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`Accordingly, Petitioner submits that the broadest reasonable interpretation
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`of a "car audio/video system" is "a car audio system, a car video system, or a car
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`audio and video system." Ex. 1016 at ¶¶87-88.
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`3. "device presence signal" (claims 56 and 106)
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`In the New Jersey litigations (see Section II. B), a common Markman
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`decision (Ex. 1007) was issued construing "device presence signal" as used in the
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`related '786 patent to be "transmission of a continuous signal indicating an audio
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`device is present." Ex. 1007 at 14-17. In reaching this interpretation, the district
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`court pointed to the description in the specification of the interface generating a
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`signal "indicating that a CD player/changer is present, and the signal is
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`continuously transmitted to the car stereo." Ex. 1007 at 14 (citing '786 Patent at
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`12:29-32, in addition to 13:15-18, 13:62-66, 14:49-51, 15:35-38, 16:12-15, and
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`16:57-60.) Petitioner accepts the court's interpretation of "device presence
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`signal" should be construed for purposes of this Inter Partes Review only.
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`Beyond these terms, there is no indication in the '342 patent that any
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`other term in the challenged claims should be afforded anything other than its
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`plain and ordinary meaning.
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`VII. EFFECTIVE FILING DATE OF '342 PATENT
`The '342 patent (Ex. 1001) was filed on June 27, 2006. The application that
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`issued as the '342 patent, U.S. App. No. 11/475,847 (Ex. 1008, "the '847
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`application"), was a continuation-in-part (CIP) of Ser. No. 11/071,667 (Ex. 1009,
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`"the '667 application"), filed March 3, 2005 (abandoned); which was a CIP of Ser.
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`No. 10/732,909 (Ex. 1010, "the '909 application") filed December 10, 2003
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`(abandoned); which was a CIP of Ser. No. 10/316,961 (Ex. 1011, "the '961
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`application") filed December 11, 2002, now U.S. Pat. No. 7,489,786. See Ex.
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`1001. Ex. 1012 is a copy of the '342 patent highlighted to show the new matter
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`added at each successive application in the priority chain of the '342 patent. In Ex.
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`1012, portions highlighted in pink were added in the '909 application, portions
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`highlighted in blue were added in the '667 application, and portions highlighted in
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`yellow were added in the '847 application. Ex. 1016 at ¶34.
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`All of the addressed '342 patent claims are entitled to an earliest effective
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`filing date of June 27, 2006. Blitzsafe did not dispute this position in Plaintiff's
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`Disclosure of Asserted Claims and Infringement Contentions (Ex. 1013), served
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`in Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277 (E.D. TX),
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`in which Blitzsafe stated, "Each of the asserted claims of the '342 patent is
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`entitled to the priority date of U.S. Patent Application No. 11/475,847, filed June
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`27, 2006, under P.R. 3-1(e)." Ex. 1013 at p. 7.
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`The '342 patent claims are not entitled to a filing date earlier than June 27,
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`2006 because all of the addressed claims require "an integration subsystem,"
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`which is a means-plus-function claim element that, although indefinite as
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`described in the Claim Construction section VI above, may at best have a
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`corresponding structure (FIG. 24) that was not disclosed until the '847
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`application. See Ex. 1012. In fact, the term "integration subsystem" was first
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`introduced in the '847 application, and its clearly-linked corresponding structure
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`is disclosed with respect to FIG. 24, also first introduced in the '847 application.
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`Id.; see also Ex. 1016 at ¶¶80-84. Thus, the '342 patent claims should all be
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`afforded an effective filing date no earlier than June 27, 2006.
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`To the extent that "integration subsystem" is not deemed a means-plus-
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`function claim element, the earliest effective filing date should still be no sooner
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`than June 27, 2006 for the reasons set forth herein below. In particular, the '342
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`patent claims recite first and second wireless interfaces and an integration
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`subsystem using a wireless link (i.e., wireless functionality), and this wireless
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`functionality via an integration subsystem is not supported until the '847
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`application, filed June 27, 2006. See Ex. 1012.
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`Support from the '961 Application
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`The earliest-filed application of which the '342 patent claims the benefit,
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`the '961 application, provides no support for a wireless link, let alone any
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`wireless functionality. See id. Thus, none of the '342 patent claims is entitled to
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`the 2002 filing date of the '961 application. Ex. 1016 at ¶36.
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`Support from the '909 Application
`The next application in the priority chain, the '909 application filed on
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`December 10, 2003, did not include support for wireless communication with
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`the portable device, or a separate integration subsystem as claimed. Id. at ¶¶37-
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`38.
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`No support for "integration subsystem" in '909 Application
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`The '909 application does not provide support for "an integration
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`subsystem." In fact, an integration subsystem is not disclosed and supported
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`until the '847 application (filed on June 27, 2006) from which the '342 patent
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`issued. See Ex. 1012.
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`Furthermore, as set forth in the Claim Construction section VI above, "an
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`integration subsystem" is disclosed as a microcontroller or processor provided
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`within the portable device or the car audio/video system and programmed to
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`perform the method of FIG. 24. Meanwhile, the '909 application only discloses
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`wireless communication with respect to an integration system that is external to
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`both the car audio/video system and the portable device. See id.at 27:30-45 and
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`FIGS. 8A and 8B. Thus, the '909 application plainly fails to support the claimed
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`integration subsystem, which is within either of these two devices. Ex. 1016 at
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`¶38.
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`No support for wireless communication with portable device in '909
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`Application
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`The '909 application included just a few sentences on wireless
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`communication, and those few sentences only dealt with wireless communication
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`between the integration system and the car stereo. The '909 application had no
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`support for a wireless link between the integration system and the portable
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`device. "Alternatively, the integration system could wirelessly communicate
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`with the car stereo. A transmitter could be used at the integration system to
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`communicate with a receiver at the car stereo. Where automobiles include
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`Bluetooth systems, such systems can be used to communicate with the
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`integration system." See Ex. 1012 at 27:39-45 (emphasis added). The only
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`disclosure of a communications link between the integration system and the
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`portable device in the '909 application is that of a wired link. See e.g., id. at
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`27:30-34.
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`This sparse disclosure does not provide support for a wireless link between
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`the integration system and the portable device as required by at least claims 49
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`and 73 ("…establishing a wireless communication link with a second wireless
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`interface in communication with a portable device") and their dependent claims.
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`If anything, the '909 application only provides support for: (1) a wireless
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`connection between the car stereo and a standalone integration system; and (2)
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`a wired link between a portable device and the standalone inte