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`IPR2018-00090
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`PATENT NO. 8,155,342
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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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`SUBARU OF AMERICA, INC.; MAZDA MOTOR OF AMERICA, INC.;
`VOLVO CARS OF NORTH AMERICA, LLC; MITSUBISHI ELECTRIC
`CORPORATION; MITSUBIHSI MOTORS CORPORATION; DAIMLER AG;
`BMW OF NORTH AMERICA, LLC
`Petitioners
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
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`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`DECLARATION OF DR. RICHARD STERN, PH.D.
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`Case No. IPR2018-00090
`________________________________________________________________
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`IPR2018-00090 – Ex. 2001
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` Blitzsafe Texas, LLC, Patent Owner
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`I, Richard Stern, declare as follows:
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`IPR2018-00090
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`PATENT NO. 8,155,342
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`I.
`1.
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`BACKGROUND AND QUALIFICATIONS
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`A copy of my curriculum vitae that summarizes my education, work history
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`and publications is attached to this report as Exhibit A.
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`2.
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`I have over 40 years of experience in the fields relevant to multimedia
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`device integration. In that time, I have studied and researched signal
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`processing and acoustics. Specifically, I have studied, researched, and
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`analyzed signal processing of audio sounds, which involves the creation of a
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`signal, the communication of data through the signal from one device to
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`another, and the interpretation of that signal by a human listener. While my
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`main areas of current professional activity are primarily in signal processing
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`for robust speech recognition and auditory perception, I have additionally
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`studied and performed research in a wide range of related fields of audition,
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`acoustics, signal processing, and instrumentation.
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`3.
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`I received an S.B. in Electrical Engineering from the Massachusetts Institute
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`of Technology (MIT) in 1970, an M.S. in Electrical Engineering and
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`Computer Sciences from the University of California, Berkeley in 1972, and
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`my Ph.D. in Electrical Engineering and Computer Science from the
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`Massachusetts Institute of Technology in 1977.
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`4. While I was a student, I worked as a Teaching and Research Assistant in the
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`Department of Electrical Engineering at MIT, from 1973 to 1976. My
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`teaching experience was in the area of signal processing under the direct
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`supervision of Professors Alan Oppenheim and Alan Willsky, and in the
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`area of acoustics under the direct supervision of Professor Amar Bose. My
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`research at MIT had been in the area of auditory perception.
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`5.
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`I am a Professor of Electrical and Computer Engineering at Carnegie Mellon
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`University (CMU), where I have taught and carried out research since 1977.
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`While my primary appointment is with the Department of Electrical and
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`Computer Engineering, I am also a Professor by Courtesy in the Language
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`Technologies Institute and Computer Science Department. I have also been
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`a Lecturer in CMU’s School of Music since 2008, and I was a Professor in
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`the CMU Biomedical Engineering Department from 1977 to 1995. From
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`1995 to 2003, I was Associate Director of the CMU Information Networking
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`Institute, where I was responsible for every aspect of its Master of Science in
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`Information Networking, including admissions, curricular development and
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`support, and student life. In addition to my appointments at Carnegie
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`Mellon, I was an invited Visiting Professor at Nippon Telegraph and
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`Telephone Laboratories in Tokyo in 1985 and at the Nara Institute of
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`Science and Technology in Japan in 2003. I was also an Adjunct Assistant
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`Professor of Otolaryngology at the University of Pittsburgh School of
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`Medicine from 1979 to 1981.
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`PATENT NO. 8,155,342
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`6.
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`As noted above, my main areas of professional activity are automatic speech
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`recognition, auditory perception, signal processing, and acoustics. My work
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`is well known and widely cited, as a search on the generic term “robust
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`speech recognition” will reveal. In those fields, I have been author or co-
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`author of more than 35 archival journal articles, 13 book chapters, and more
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`than 30 invited conference presentations, many of which were keynote
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`addresses at major meetings, and a large number of additional critically-
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`reviewed conference presentations. I have been invited to present my work
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`on speech recognition in China, Japan, Korea, the Czech Republic,
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`Denmark, France, Germany, Italy, Portugal, Spain, the United Kingdom,
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`Israel, India, Mexico, Argentina, Brazil, and Chile, as well as virtually every
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`major corporate and academic center of research in speech recognition and
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`related technologies in the United States. I have supervised 24 Ph.D. theses,
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`and more than 25 M.S. research projects. My former doctoral and masters
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`research students include the present or former heads of speech research at
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`Apple, Microsoft, Google, and major Government intelligence agencies, the
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`founders of startup companies valued at hundreds of millions of dollars, and
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`professors in major research universities.
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`7.
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`I am one of the few individuals who is an elected Fellow of the Institute of
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`Electrical and Electronics Engineers (IEEE), the Acoustical Society of
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`America (ASA), and the International Speech Communication Association
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`(ISCA). I was the 2008-2009 Distinguished Lecturer of ISCA, which
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`sponsored tours of South America and India for the purpose of disseminating
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`my research results. I was also a co-recipient of the Allen Newell Award for
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`Research Excellence in 1992, and I was the recipient of the CMU Electrical
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`Engineering Department’s annual teaching award in 1979.
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`8.
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`I have served on numerous technical and standards committees for the IEEE,
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`ISCA, and for the Human Language Technology Program of the U.S.
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`Defense Department Advanced Research Projects Agency (DARPA). I
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`served as General Chair of the 2006 Interspeech International Conference on
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`Spoken Language Processing in Pittsburgh in 2006. The Interspeech
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`meeting, which attracted in excess of 1100 attendees, is considered to be the
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`major world forum (along with the IEEE International Conference on
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`Acoustics, Speech, and Signal Processing) for the exchange and
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`dissemination of new findings in speech processing by humans and
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`machines. I also serve or have served as the Technical Program Committee
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`Chair of the Meeting of the Acoustical Society of America in Pittsburgh in
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`2002, Chair of the Nominating Committee for the IEEE James L. Flanagan
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`Technical Field, and as a member of the ISCA International Advisory Board
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`and Nomination Committee for Fellows of ISCA, the Secretary for the
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`DARPA Speech Coordinating Committee, and I have led or served as a
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`member of other professional, academic, and governmental committees too
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`extensive to be enumerated here.
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`9.
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`As a Professor, I have taught 15 courses, many of which are at the graduate
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`level, in the general areas of signal processing, communication theory, and
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`acoustics. The courses that I teach at CMU encompass all aspects of signal
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`processing including adaptive filtering, array processing, short-time Fourier
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`analysis, and multi-rate signal processing.
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`10.
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`I am being compensated at my customary rate of $450 per hour. My
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`compensation is not dependent upon the substance of the opinions I offer
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`below, the outcome of this petition or any issues involved in or related to
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`U.S. Patent 8,155,342 (the “’342 Patent”). I have no financial interest in, or
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`affiliation with, any of the real parties in interest or the patent owner.
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`II. MATERIALS CONSIDERED
`11. The materials I considered include the ’342 Patent and the original
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`prosecution history for the ’342 Patent including the applications to which
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`the ’342 Patent claims priority. I also considered the materials that I refer to
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`and that I cite in this declaration.
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`12.
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`I also considered the Petition for Inter Partes Review filed by Subaru of
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`America, Inc., Mazda Motor of America, Inc., Volvo Cars of North
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`America, LLC, Mitsubishi Electric Corporation, Mitsubishi Motors
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`Corporation, Daimler AG, and BMW of North America, LLC (IPR2018-
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`00090) (the “Petition”) including Exhibits 1001-1022 including the
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`declaration of Dr. Matheson.
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`13.
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`I also considered the full record associated with the Petition for Inter Partes
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`Review filed by Toyota Motor Corporation (IPR2016-00418) (the “Toyota
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`IPR”) including Exhibits 1001 – 1028, 2001- 2013, and 3001-3003.
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`14.
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`I have also considered the Board’s Decision on Institution of Inter Partes
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`Review (Paper 15) in the -00418 IPR.
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`15.
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`I have also considered the Board’s Decisions to Deny Institution of Inter
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`Partes Review in two other proceedings concerning the ’342 Patent:
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`IPR2016-00419 (Paper 12) and IPR2016-00118 (Paper 11).
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`16.
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`I have also considered the Petitioner’s request for rehearing in the -00419
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`proceeding (Paper 14) and the Board’s Decision denying rehearing (Paper
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`15).
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`17.
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`I have also considered U.S. Patent Appl. No. 2001/0028717 to Ohmura
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`(“Ohmura”), which was the primary reference at issue in the -00419 and -
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`00118 denials of institution.
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`18.
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`In addition, I have drawn on my experience and knowledge, as discussed
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`PATENT NO. 8,155,342
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`above and described more fully in my CV, in the areas of audio and
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`multimedia integration.
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`III. LEGAL PRINCIPLES
`I understand that a patent claim is unpatentable as “obvious” if the subject
`19.
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`matter of the claim as a whole would have been obvious to a person of
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`ordinary skill in the art as of the time of the invention at issue.
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`20.
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`I understand that the use of “the person of ordinary skill” rubric is to prevent
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`one from improperly, in the present day, using hindsight to decide whether a
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`claim is obvious.
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`21.
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`I understand that the following factors must be evaluated to determine
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`whether the claimed subject matter is obvious: (1) the scope and content of
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`the prior art; (2) the difference or differences, if any, between the scope of
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`the patent claim and the scope of the prior art; and (3) the level of ordinary
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`skill in the art at the time of the invention.
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`22.
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`I understand that, unlike anticipation, which allows consideration of only
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`one item of prior art, obviousness may be shown by considering more than
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`one item of prior art. I understand that, when considering a combination of
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`prior art references as part of an obviousness analysis, it can be important to
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`ascertain if the references are from the same field of endeavor and also to
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`ascertain whether there is any reason that would have prompted a person of
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`PATENT NO. 8,155,342
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`ordinary skill in the relevant art to combine the elements in the way the
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`claim does. In other words, a claim generally cannot be rendered obvious by
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`combining (i) art from across different fields, including outside the field of
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`the claimed invention, or (ii) art that itself teaches away from combination
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`with other art that would otherwise provide its missing limitations, or (iii) art
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`for which there is not at least an articulable, common sense reason to bridge
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`the gap between its disclosure and the claim at issue.
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`23. Moreover, I understand that so-called “objective indicia of non-
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`obviousness,” also known as “secondary considerations,” are also to be
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`considered when assessing obviousness. I understand that this objective
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`evidence includes at least: (1) the commercial success of the invention; (2)
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`the long felt but unresolved need to develop the invention; and (3) any praise
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`of the invention in the market. I also understand that evidence of objective
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`indicia of non-obviousness must be commensurate in scope with the claimed
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`subject matter; i.e., that there must be a nexus or connection between the
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`criteria and the claim itself.
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`IV. LEVEL OF ORDINARY SKILL
`I understand that I should perform my analysis from the viewpoint of a
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`person of ordinary skill in the art. I understand that this hypothetical person
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`of ordinary skill in the art is considered to have the normal skills of a person
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`in a certain technical field. I understand that factors that may be considered
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`in determining the level of ordinary skill in the art include: (1) the education
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`level of the inventor; (2) the types of problems encountered in the art; (3) the
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`prior art solutions to those problems; (4) rapidity with which innovations are
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`made; (5) the sophistication of the technology; and (6) the education level of
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`active workers in the field.
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`25.
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`I do not disagree with Dr. Matheson’s proposed level of ordinary skill in the
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`art, which he lists as a Bachelor’s degree in electrical engineering or
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`equivalent science/engineering degree and at least two years of experience in
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`signal processing and/or electronic system design, or at least four years of
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`experience in signal processing and/or electronic system design.
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`V.
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`26.
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` ANALYSIS
`A.
`I understand that this proceeding concerns the wireless connection of a
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` Technical Background
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`portable electronic device (such as a mobile phone or MP3 player) with a
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`second device (in this case, the automobile) for the purposes of information
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`and entertainment. I also understand that one of the issues in contention in
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`this litigation concerns the method(s) by which audio (which is encoded or
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`compressed into a format such as MP3) is transmitted from the portable
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`electronic device to the automobile and converted into a format that is
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`suitable for presentation to a human listener.
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`PATENT NO. 8,155,342
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`27. Audio and video coding are technologies that enable widespread access to
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`media that we have come to enjoy in the 21st century, including video
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`downloaded from services such as Netflix and YouTube, and audio from
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`devices such as the iPod, iPad, iPhone, and Android phones. Typically, the
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`motivation for video and audio coding is the reduction of file size. For
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`example, a one-minute segment of music in stereo sampled at 44,100 Hz
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`with 16 bits per sample (as in an audio CD) represents about 84.7 million
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`bits of information. A representation of that segment of music using
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`reasonably high-quality MP3 encoding with typical coding parameters
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`would require only 11.5 million bits of storage. Clearly, this is a reduction
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`of storage requirements by a factor of about 7.4 to 1, which concomitantly
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`permits the storage of 7.4 times as much audio on a given device than would
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`have been possible if the data had been stored in the original un-encoded
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`form. (In practice the actual bit-rate reduction depends on the type of signal
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`that is being coded as well as a number of user-selectable preferences.)
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`28. MP3 coding is one of a class of protocols collectively referred to as
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`perceptual audio coding, which exploits the observation that the auditory
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`system masks certain components of sound in time and frequency. Bit-rate
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`reduction is obtained by storing only a crude representation of those sound
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`components that are masked by others. Other perceptual audio coding
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`methods include Advanced Audio Coding (AAC) and Unified Speech and
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`Audio Coding (USAC). In this report, I use the term “MP3” to refer to any
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`type of perceptual audio coding used by the portable electronic device,
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`regardless of whether the actual coding method used is MP3, AAC, USAC,
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`or some other method.
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`29.
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`I note that conversion from the MP3 representation on a portable electronic
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`device, such as those implicated in this case, takes place in two separable
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`stages: (1) decoding the MP3 parameters, which converts them into a digital
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`representation of the original audible waveform, and (2) digital-to-analog
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`conversion (D/A conversion), which converts the digital representation of
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`the audible waveform into a continuous-time or “analog” representation
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`which can be directly converted into sound by a traditional output device
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`such as a loudspeaker or headphones.
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`30.
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`It is critically important to maintain a distinction between audio as
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`represented by the audible waveform (or a digital representation of it) versus
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`a representation of the audio by the coded MP3 parameters.
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`31.
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`In other words, “audio generated by the portable device” for the purpose of
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`this proceeding specifically refers to the decoding of the MP3 on the
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`portable device itself. Merely transmitting the MP3 file, either in whole or
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`in part, would not satisfy that limitation.
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`PATENT NO. 8,155,342
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`32.
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`In order to communicate with portable devices over a communications
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`channel, it was possible to use Universal Serial Bus (USB) protocol or
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`Bluetooth protocol. The actual communicated signal streams transmitted
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`over these protocols, regardless of whether they represent an audible
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`waveform or a sequence of MP3 parameters, are segmented into a set of
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`subsequences or “packets” often referred to as a “stream.” Both the USB
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`and Bluetooth protocols specify means by which communication is
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`established between the devices.
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`33.
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`It was known that these standards permitted transfer of files, such as MP3
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`audio files as packets of audio, referred to more commonly as a “stream” or
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`“streaming.”
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`34.
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`I understand that this proceeding concerns the wireless connection of a
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`portable electronic device (such as a mobile phone or MP3 player) with a
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`second device (in this case, the automobile) for the purposes of information
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`and entertainment. I also understand that one of the issues in contention in
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`this litigation concerns the method(s) by which audio (which is encoded or
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`compressed into a format such as MP3) is transmitted from the portable
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`device to and received by the integration subsystem of the second device.
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`Figure 1: Comparison of Alternative Modes of Communication Between
`Portable Electronic Device and Automobile
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`35. Figure 1 illustrates three different contrasting ways of converting the coded
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`MP3 parameters which enable compact storage of the user’s music
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`collection into an audible waveform that if presented to a human listener
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`after digital-to-analog (D/A) conversion would be intelligible and
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`informative and/or entertaining.
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`36. The first approach, labeled Case 1, describes a process by which both the
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`MP3 decoding and D/A conversion takes place on the portable electronic
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`device. In this case, the “communication” between the portable electronic
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`device and the automobile is through an analog channel, which in fact is
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`simply the conventional audio cable that connects the audio output of the
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`portable electronic device to (typically) the auxiliary input of the
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`entertainment system on the automobile.
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`37. The second approach, labeled Case 2, describes a process by which the MP3
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`decoding takes place on the portable electronic device and a digitally-
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`encoded version of the audible waveform is transmitted over a digital
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`communications channel using either wired or wireless protocols. This
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`decoding is performed in response to a “play” command received by the
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`portable device. The automobile receives the digitally-encoded waveform
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`and converts it to an analog waveform suitable for direct connection to the
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`speaker or headphones.
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`38. The third approach, labeled Case 3, describes a process by which the coded
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`MP3 parameters are transmitted directly over the digital communications
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`channel using either wired or wireless protocols to the automobile. This file
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`transfer is performed in response to a “play” command received by the
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`portable device. In this case, both MP3 decoding and D/A conversion take
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`place on the automobile itself.
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`In each of the cases, play commands may be received by the portable device.
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`39.
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`The play command is agnostic as to the approach for transmission and as to
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`where the audio is generated. In Cases 2 and 3 above, there will be some
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`encoding and decoding of the transmission for protocol purposes, e.g.,
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`Bluetooth. The audio generated by the portable device in Case 2 may
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`undergo additional encoding or decoding for transmission protocol purposes
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`(e.g., Bluetooth) without affecting my analysis.
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`40. As described in further detail below, the Clayton reference, much like the
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`Ohmura reference, only teaches decoding of audio in the “interface”
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`associated with the car stereo system, and not in the portable device, in
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`response to “play” requests.
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`The ’342 Patent
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`B.
`41. The ’342 Patent was issued from a continuation-in-part application, claiming
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`priority to several earlier applications including U.S. Patent Application No.
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`11/071,667 (“the ’667 Application”). Ex. 1001. The ’342 Patent relates to a
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`multimedia device integration system that allows a plurality of portable
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`electronic devices to be wirelessly integrated into an existing car stereo
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`system, via an “integration subsystem,” while allowing information to be
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`displayed on, and control to be provided from the car stereo. Ex. 1001at
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`2:44–54, 33:43–46; Abstract. The claims at issue in this proceeding are
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`directed to an integration subsystem in communication with the car
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`audio/video system, allowing data and control signals to be exchanged
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`between the portable device and the car audio/video system. The integration
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`subsystem processes and formats data so that instructions and information
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`are processed by the portable device and vice versa, and permits audio and
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`video generated, i.e. decoded, by the portable device to be played on the car
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`audio/video system. Id. at 33:43–35:62, Figs. 18, 19.
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`C. Claim Construction
`I have been instructed that the Board has applied the following constructions
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`42.
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`in the Toyota IPR, and that I should apply these constructions for the
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`purposes of rendering my opinions:
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`Integration Subsystem: The Board construed the term as “A subsystem to
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`perform at least: (1) connecting one or more portable devices or inputs to the
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`car audio/video system via an interface, (2) processing and handling signals,
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`audio, and/or video information, (3) allowing a user to control the one or
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`more portable devices via the car audio/video system, and (4) displaying
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`data from the one or more portable devices on the car audio/video system.”
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`Car Audio/Video System: The Board construed the term as “a car audio
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`system, a car video system, or a car audio and video system.”
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`Device Presence Signal: The Board construed the term as “a signal
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`IPR2018-00090
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`PATENT NO. 8,155,342
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`indicating that a portable device is connected to the car audio/video system
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`through the integration subsystem”
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`I have also been instructed that Petitioners have submitted constructions for
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`the terms:
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`Multimedia device integration system: No construction (but noting that “the
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`integration subsystem must perform the ‘integration’ function defined in the
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`Specification of the ’342 patent.”)
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`Generated . . . for playing on the car audio/video system: Plain and ordinary
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`meaning).
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`I do not believe that construction of these terms is necessary, nor do the
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`constructions propounded by Petitioners change my analysis.
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`D. The Clayton Reference
`43. Clayton discloses “embodiments that wirelessly provide content from a
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`content source to a content player.” Ex. 1002 at Abstract, ¶ [0004]. Clayton
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`teaches using a wireless interface to receive content from a content source,
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`and to transmit the content using a wired connection to a content player (i.e.,
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`a car audio/video system) for playback. Id.
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`44. Clayton seeks to solve problems that arise from the fact that people use
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`multiple content sources, such as MP3 players, cellular telephones, personal
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`computers and car audio systems, to store and, in many cases, play content.
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`PATENT NO. 8,155,342
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`One of these problems is that “there is no currently fast and convenient way
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`to transfer content between a user’s multiple devices.” Id. at ¶ [0003].
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`45. Clayton broadly discloses a system that includes a content service 120 that
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`provides content to target devices 140 via a network 130 as shown in Figure
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`1.
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`Clayton, Figure 1
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`46. Content is defined as including “media such as audio, video, text;
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`multimedia that includes two or more of audio, video, and text; or other
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`types of data.” Id. at ¶ [0014] (emphasis added). While “content” is defined
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`as including media such as audio, the disclosure of “audio content” or
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`“content that is audio” would have been interpreted by one of ordinary skill
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`in the art to mean audio files, and not the decoded audio itself.
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`PATENT NO. 8,155,342
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`47. Target devices 140 may include personal computers, cellular telephones, car
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`radios, home stereos, MP3 players, and other end-user devices. Id. at ¶
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`[0018]. Target devices are capable of downloading content from the content
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`service and transmitting data to, and receiving data from, other target
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`devices. Id. This disclosure is consistent with the understanding that the
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`“content” disclosed by Clayton was data, such as audio files.
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`48. Clayton describes embodiments in which a cellular telephone 143 can
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`connect to a car radio and transfer its content, i.e., its files, to the car radio
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`for playback on the car radio.
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`Clayton, Figure 2
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`49. Clayton discloses that “[a] portable content device such as the cellular
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`telephone 142 may send content to a content player such as the car audio
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`system 143 via the wireless interface 150 of the cellular telephone 142. In
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`addition, a wireless adaptor 173 may be used to enable communications
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`between the cellular telephone 142 and the car audio system 143 for
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`receiving content and for controlling playback of the content.” Id. at ¶
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`[0052].
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`50. The wireless adaptor 173 that is in communication with the car audio system
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`“allows a suitably enabled portable device to wirelessly integrate with a
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`component in a content player,” id. at ¶ [0053], which, in the case of Figure
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`3, is the car radio component of a car audio system 143. See id.
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`Clayton, Figure 3
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`PATENT NO. 8,155,342
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`51. The wireless adaptor 173 “provides an interface that allows the cellular
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`telephone 142 to transmit stored content to the car audio system 143 to the
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`car audio system 143 for content playback by the car radio component.” Id.
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`at ¶ [0055].
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`52. The description in Figure 3 of Clayton above does not teach where the audio
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`itself is generated, and one of ordinary skill in the art would have needed
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`more detail with regard to the underlying software and hardware in the black
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`box of 173.
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`53. Clayton does provide additional detail regarding the box 173 as shown in
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`Figure 4. Box 173 has a decoder 440 that includes “a content decoder 446
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`that decodes content received from the cellular telephone 142.” Id. at ¶
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`[0056] (emphasis added). An optional metadata decoder 442 decodes
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`metadata, such as song tiles and artists names, for display on the car audio
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`system 143. Id.
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`IPR2018-00090
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`PATENT NO. 8,155,342
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`Clayton, Figure 4 (annotated)
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`54. The wireless adaptor has an application profiles stack 420 that includes
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`“Bluetooth profiles to regulate the transmission of content from the cellular
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`telephone 142 to the car audio system 143 . . . as streaming audio for stereo
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`audio playback through the later [sic].” Id. at ¶ [0062-0063]. “The network
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`manager 430 further controls the content decoder 446 to decode the
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`streaming audio into a format understood by the car audio system 143 for
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`output to the I/O interface 450, to which the car audio system 143 is
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`connected through its own I/O interface.” Id.
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`55. Thus, because Clayton only describes a system that sends an audio file, and
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`PATENT NO. 8,155,342
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`not a system that decodes the audio file on the portable device, and thus
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`generates audio on the portable device, Clayton only describes Case 3,
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`whereas the claims of the ’342 patent require Case 2.
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`Figure 2, annotated version of Figure 1, depicting cases 1-3.
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`56. Clayton describes an embodiment in which a cellular telephone acting as a
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`content source transmits audio data to a car stereo, where the stereo acts as
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`the playback device generating the audio. The wireless interface in
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`communication with the car stereo receives the streamed audio data, which
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`PATENT NO. 8,155,342
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`one of ordinary skill in the art would have understood was a stream of audio
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`data packets, then the interface decodes the data into a format understood by
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`the car stereo, and outputs the decoded data as an audio stream to the car
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`stereo system for playing on the car stereo.
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`E.
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`The Decisions Denying Institution of IPR2016-00419 and
`Rehearing of that Decision
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`57. On July 19, 2016, the Board denied institution of the -00419 proceeding on
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`grounds based on U.S. Patent Pub. No. 2001/0028717 A1 (“Ohmura”). The
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`Board found that Ohmura did not meet the “audio generated by the portable
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`device” limitation recited in claim 49 of the ’342 Patent because in Ohmura,
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`music data is transferred from the portable device to the car audio/video
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`system, and audio is generated by playing the transferred music file at the
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`car audio/video system, and not on the portable device. Toyota Motor Corp.
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`v. Blitzsafe Texas, IPR2016-00419, Paper 13 at 27-28 (July 19, 2016)
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`(emphasis added).
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`58.
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`I agree with the Board’s determination that Ohmura does not teach the
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`“audio generated by the portable device” limitation because Ohmura is
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`another type of system that falls in “Case 3” that I describe above.
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`59.
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`I understand that Toyota requested rehearing of the decision denying
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`institution in IPR2016-00419. I understand that Toyota argued that the
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`Board overlooked that Toyota’s petition relied on an embodiment in Ohmura
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`IPR2018-00090
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`PATENT NO. 8,155,342
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`that discloses “streaming” music data from the portable device to the car
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`audio/video system, and not storing a music file on the car audio/video
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`system for later decoding. Paper 14 at 4, 6-7. According to Toyota, this
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`embodiment disclosed immediately decoding the data in the car audio/video
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`system without storing the music data first. Id.
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`60.
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`I understand that the Board denied the petition for rehearing. Toyota Motor
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`Corp. v. Blitzsafe Texas, IPR2016-00419, Paper 15 (August 31, 2016). The
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`Board stated that all claims of the ’342 Patent require “the portable device to
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`play (i.e., decode) an audio file.” Id. at 5. Ohmura does not meet the “audio
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`generated on the portable device” limitation because “Ohmura’s CPU 101
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`receives music data from portable device 200a or 200b that it must decode
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`into audio for output, via speakers 20, of car audio system 100.” Id. at 6
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`(emphasis added). I agree with the Board’s determination that (1)
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`“decoding” by the portable device is required by the claims, and (2) that
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`Ohmura, as another example of my aforementioned Case 3, does not decode
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`audio on the portable device.
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`VI. THE CLAYTON REFERENCE DOES NOT TEACH OR DISCLOSE
`THE “AUDIO GENERATED BY
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