IPR2018-00090
`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`SUBARU OF AMERICA, INC., MAZDA MOTOR OF AMERICA, INC.,
`VOLVO CARS OF NORTH AMERICA, LLC; MITSUBISHI ELECTRIC
`CORPORATION; MITSUBISHI MOTORS CORPORATION; DAIMLER AG;
`BMW OF NORTH AMERICA, LLC
`
`Petitioners
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`
`
`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-00090
`__________________________________________________________________
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`PATENT NO. 8,155,342
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`SUBARU OF AMERICA, INC., MAZDA MOTOR OF AMERICA, INC.,
`VOLVO CARS OF NORTH AMERICA, LLC; MITSUBISHI ELECTRIC
`CORPORATION; MITSUBISHI MOTORS CORPORATION; DAIMLER AG;
`BMW OF NORTH AMERICA, LLC
`
`Petitioners
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`
`
`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-00090
`__________________________________________________________________
`
`
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`TABLE OF CONTENTS
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`IPR2018-00090
`PATENT NO. 8,155,342
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`Page No(s).
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`I.
`
`II.
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`INTRODUCTION
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`THE BOARD SHOULD INVOKE ITS DISCRETION TO DENY
`INSTITUTION UNDER 35 U.S.C. § 314(A) AND 37 C.F.R.
`§ 42.108(A)
`
`III. THE CURRENT PETITION FAILS TO COMPLY WITH 37 C.F.R.
`§ 42.104(B)(3) AND (B)(4) BECAUSE ITS INCONSISTENT
`CLAIM CONSTRUCTION POSITIONS FAIL TO PUT THE
`BOARD ON NOTICE OF HOW THE CHALLENGED CLAIMS
`ARE TO BE CONSTRUED AND FAILS TO APPLY THE
`PROFFERED CLAIM CONSTRUCTIONS
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`IV. SUMMARY OF THE ALLEGED PRIOR ART AND THE PRIOR
`DECISIONS REGARDING THE '342 PATENT
`
`1
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`6
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`12
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`17
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`A.
`
`The Clayton Reference ........................................................................17
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`B.
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`The Decisions Denying Institution of IPR2016-00419 and
`Rehearing of that Decision ..................................................................22
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`V.
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`CLAIM CONSTRUCTION
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`VI. THE CLAYTON REFERENCE DOES NOT TEACH OR
`DISCLOSE THE “AUDIO GENERATED BY THE PORTABLE
`DEVICE” LIMITATION
`
`23
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`24
`
`A.
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`The Clayton Provisional Application Does Not Support the
`Teaching or Disclosure of the “Audio Generated by the
`Portable Device” Limitation ................................................................32
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`VII. CONCLUSION
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`35
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`i
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`TABLE OF AUTHORITIES
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`IPR2018-00090
`PATENT NO. 8,155,342
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` Page(s)
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`Federal Cases
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`Apple, Inc. v. Immersion Corp.,
`IPR2017-01310 (P.T.A.B. Nov. 2, 2017) ........................................................... 10
`
`Carefusion Corp. v. Baxter Int’l, Inc.,
`IPR2016-01456 (P.T.A.B. Feb. 6, 2017) ............................................................ 13
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357 (P.T.A.B. Sept. 6, 2017) ............................................................. 7
`
`Intelligent Bio-Syst., Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324 (P.T.A.B. Nov. 21, 2013) ........................................................... 7
`
`Netapp, Inc. v. Realtime Data LLC,
`IPR2017-01195 (P.T.A.B. Oct. 12, 2017) .................................................. 7, 9, 18
`
`Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC,
`IPR2017-01305 (P.T.A.B. Oct. 17, 2017) ............................................................ 9
`
`Toyota Motor Company v. Blitzsafe Texas, LLC,
`IPR2016-00419 (P.T.A.B. Aug. 31, 2016) ............................................. 22, 23, 25
`
`Toyota Motor Corp. v. Blitzsafe Texas LLC,
` IPR2016-00422 (P.T.A.B. July 6, 2016) ........................................................... 13
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`Federal Statutes
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`35 U.S.C. § 314(a) ................................................................................................. 4, 7
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`35 U.S.C. § 316(a)(11) ............................................................................................... 8
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`Other Authorities
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`37 C.F.R. § 42.104(b)(3) ...................................................................................passim
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`37 C.F.R. § 42.104(b)(4) ...................................................................................... 4, 16
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`37 C.F.R. § 42.108(a) ............................................................................................. 4, 6
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`ii
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`IPR2018-00090
`IPR2018-00090
`PATENT NO. 8,155,342
`PATENT NO. 8,155,342
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`IPR2018-00090
`PATENT NO. 8,155,342
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`EXHIBIT LIST
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`Exhibit #
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`Exhibit Name
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`2001
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`Declaration of Richard Stern, Ph.D.
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`2002
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`E-mail from M. Satchwell to Board dated October 20, 2017.
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`iv
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`IPR2018-00090
`PATENT NO. 8,155,342
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`I.
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`INTRODUCTION
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`This is the eleventh petition for inter partes review of U.S. Patent No.
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`8,155,342 (Ex. 1001, the “’342 Patent”). The previous ten petitions resulted in
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`zero claims cancelled or amended. A brief summary of the previous activity at the
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`Patent Trial and Appeal Board with respect to this patent is below:
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` IPR2016-00118 was filed on October 30, 2015 by Unified Patents Inc.
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`Institution was denied on April 27, 2016.
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` IPR2016-00418 (the “Toyota IPR”) was filed on December 30, 2015
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`by Toyota Motor Corp. The petition was terminated due to
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`settlement after oral hearing on March 10, 2017.
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` IPR2016-01533 was filed on August 5, 2016 by American Honda
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`Motor Co., Inc. The petition was a duplicate of the Toyota IPR and
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`joined with the Toyota IPR. The petition was terminated due to
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`settlement after oral hearing on March 10, 2017.
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` IPR2016-01557 was filed on August 8, 2016 by Hyundai Motor
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`Company Ltd., et al. The petition was a duplicate of the Toyota IPR
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`and joined with the Toyota IPR. The petition was terminated due to
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`settlement after oral hearing on March 10, 2017.
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`1
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`IPR2018-00090
`PATENT NO. 8,155,342
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` IPR2016-01560 was filed on August 8, 2016 by Nissan North
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`America, Inc., et al. The petition was a duplicate of the Toyota IPR
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`and joined with the Toyota IPR. The petition was terminated due to
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`settlement on March 10, 2017.
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` IPR2016-00419 was filed on December 30, 2015 by Toyota Motor
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`Corp. Institution was denied on July 19, 2016. Petitioner’s
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`rehearing request was denied on August 31, 2016.
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` IPR2016-01445 was filed on July 20, 2016 by Volkswagen Group of
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`America, Inc. The petition was terminated due to settlement before
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`institution on January 31, 2017.
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` IPR2016-01449 was filed on July 20, 2016 by Volkswagen Group of
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`America, Inc. The petition was terminated due to settlement before
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`institution on January 31, 2017.
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` IPR2016-01473 was filed on July 21, 2016 by American Honda
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`Motor Co., Ltd. Institution was denied on January 24, 2017.
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` IPR2016-01476 was filed on July 21, 2016 by Hyundai Motor
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`Company Ltd., et al. Institution was denied on January 24, 2017.
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`On October 20, 2017, Petitioners Subaru of America, Inc., Mazda Motor of
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`America, Inc., Volvo Cars of North America, LLC, Mitsubishi Electric
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`2
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`IPR2018-00090
`PATENT NO. 8,155,342
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`Corporation, Mitsubishi Motors Corporation, Daimler AG, and BMW of North
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`America, LLC (“Petitioners”) filed a petition for inter partes review of U.S. Patent
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`No. 8,155,342 (the “Petition”). Petitioners contend that the references and grounds
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`in the Petition are “substantively identical to those included in the Toyota IPR Pet.,
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`at 1. Petitioners admit, however, that they “adopt the claim constructions applied
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`by the Board in the Toyota IPR and related IPRs.” Id. Therefore, this Petition
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`presents different claim constructions than those submitted in the Toyota IPR
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`petition without modifying the grounds for invalidity from the Toyota IPR.
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`Petitioners sought unsuccessfully to expedite this Petition to a final written
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`determination “based on the complete, closed record from the Toyota IPR.”
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`Ex. 2002. During a conference call on December 1, 2017, the Board denied
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`Petitioners’ request, stating that it has “great skepticism as to whether this will be a
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`proper way to conduct the cases in a just, speedy, and efficient manner.” Ex. 1022,
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`at 23-24, 30. In its December 4, 2017 Order, the Board explained that Petitioner’s
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`request was premature and would have run afoul of Patent Owner’s statutory and
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`due process rights. Paper 12, at 2-3. The Board further stated that “the panel is not
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`convinced of Petitioners’ assumption that institution of trial will ensue on all
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`grounds and on all claims included in the Toyota IPR . . . .” Id. at 3.
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`3
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`IPR2018-00090
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`The Board should invoke its discretion to deny institution under 35 U.S.C.
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`§ 314(a) and 37 C.F.R. § 42.108(a) because, as a follow-on Petition that Petitioners
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`claim is “substantively identical” to a previous terminated Petition, the continued
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`challenge of the validity of the ’342 Patent against the Clayton reference is
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`wasteful and duplicative.
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`The Petition also fails to meet the statutory requirement to show how the
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`challenged claims are to be construed, and thus should be denied on for failing to
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`comply with 37 C.F.R. 42.104(b)(3). The Petition fails to “take ownership” of the
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`constructions that it propounds, and also takes internally inconsistent claim
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`construction positions with no substantive analysis. Similarly, the Petition is
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`deficient for failing to comply with 37 C.F.R. § 42.104(b)(4) because the Petition’s
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`arguments as to where the elements of the claims are found in the prior art apply
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`claim constructions (i.e., the proposed constructions in the Toyota IPR) which are
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`different from those proffered in the Petition.
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`Finally, the Petition should not be instituted because the arguments
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`presented and the additional evidence submitted, including the testimony from
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`Patent Owner’s expert, Dr. Richard Stern, Ph.D. (see, e.g., Ex. 2001, Declaration
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`of Dr. Richard Stern, Ph.D.), demonstrate that none of the challenged claims are
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`obvious over combinations based on the Clayton reference.
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`4
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`Clayton does not teach or disclose an integration subsystem that receives
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`“audio generated by the portable device.” This “audio generated by the portable
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`device” limitation is required by each claim, and Petitioner points only to Clayton
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`to allegedly teach or disclose this limitation.
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`The Board previously found that the claims require “decoding” of audio by
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`the portable device, and the Board found that this “decoding” was taught by the
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`disclosure in Clayton of “playing” audio on the portable device, at least in part
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`because of the declaration evidence submitted by Toyota at the institution stage in
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`the Toyota IPR. However, Dr. Stern explains in his Declaration that the word
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`“play” does not mean “decode,” and that Clayton does not teach or disclose
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`decoding audio on a portable device for subsequent wireless transfer to a car audio
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`video system as required by the claims. Instead, Clayton only teaches the mere
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`transfer of files. The Board has already held several times that the transfer of
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`audio files does not satisfy the claims of the ’342 Patent. In view of this
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`Declaration evidence, the Board should again confirm the patentability of the
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`claims of the ’342 Patent.
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`Although Petitioners submit U.S. Provisional Application Serial No.
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`60/651,963 as Ex. 1003 (the “Clayton Provisional”), to which Clayton claims
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`priority, the Petition does not cite to the Clayton Provisional’s contents as teaching
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`5
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`IPR2018-00090
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`the “audio generated by the portable device” claim limitation in any claim chart
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`and provides only the most cursory string cites to pages of the Clayton Provisional.
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`See, e.g., Pet, at 29 (citing only to Clayton at 0063); Pet. at 20 (citing Clayton
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`Provisional at pp. 3, 10, 13, 154, 169, 339, 488, 561, 609, and 656 with zero
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`accompanying analysis). Regardless, the Clayton Provisional does not teach the
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`“audio generated by the portable device” claim limitation.
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`Patent Owner, therefore, respectfully requests denial of the Petition in its
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`entirety.
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`II. THE BOARD SHOULD INVOKE ITS DISCRETION TO DENY
`INSTITUTION UNDER 35 U.S.C. § 314(A) AND 37 C.F.R. § 42.108(A)
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`After ten previous petitions that have resulted in zero claims cancelled or
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`amended, this follow-on Petition should be denied. Institution of this latest
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`petition––after years have been spent challenging the patentability of this patent
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`against the same prior art––would significantly prejudice Patent Owner and force
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`the Board to expend resources addressing recycled issues.
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`The “Director may not authorize an inter partes review to be instituted
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`unless . . . the information presented in the petition . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” 35 U.S.C. § 314(a). Because the Director
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`(and by extension the Board) may not institute review unless certain conditions are
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`6
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`IPR2018-00090
`PATENT NO. 8,155,342
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`met, institution is discretionary. Intelligent Bio-Syst., Inc. v. Illumina Cambridge
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`Ltd., Case IPR2013-00324, slip op. 4 (P.T.A.B. Nov. 21, 2013) (Paper 19);
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`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357
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`(P.T.A.B. Sept. 6, 2017), Paper 19 (precedential) (setting forth a non-exclusive list
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`of seven factors that bear on the issue of whether the Board should invoke its
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`discretion to deny institution). The Board has previously declined to institute
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`follow-on petitions, even when the follow-on petition is filed by a party different
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`than the party involved in the previous petitions. Netapp, Inc. v. Realtime Data
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`LLC, Case IPR2017-01195 (P.T.A.B. Oct. 12, 2017), Paper 9 (“we find that the
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`General Plastic factors provide a useful framework for analyzing the facts and
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`circumstances present in this case, in which a different petitioner filed a petition
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`challenging a patent that had been challenged already by previous petitions.”).
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`The seven factors present in General Plastics are as follows:
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`1. Whether the same petitioner previously filed a petition directed to the
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`same claims of the same patent;
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`2. Whether at the time of filing the first petition the petitioner knew of the
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`prior art asserted in the second petition or should have known of it;
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`3. Whether at the time of filing of the second petition the petitioner already
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`received the patent owner’s preliminary response to the first petition or
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`7
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`IPR2018-00090
`PATENT NO. 8,155,342
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`received the Board’s decision on whether to institute review in the first
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`petition;
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`4. The length of time that elapsed between the time the petitioner learned of
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`the prior art asserted in the second petition and the filing of the second
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`petition;
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`5. Whether the petitioner provides adequate explanation for the time
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`elapsed between the filings of multiple petitions directed to the same
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`claims of the same patent;
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`6. The finite resources of the Board; and
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`7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final
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`determination not later than 1 year after the date on which the Director
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`notices institution of review.
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`As set forth below, the circumstances of this eleventh iteration against the ’342
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`Patent favor denial of institution.
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`Regarding Factor 1, none of the current Petitioners have previously filed a
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`petition against the challenged patent. ’Nevertheless, the Board has found that this
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`factor’s weight is diminished when there is a “high degree of similarity” between
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`the follow-on petition and the original petition. Samsung Electronics Co., Ltd. v.
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`Elm 3DS Innovations, LLC, No. IPR2017-01305, Paper 11, at *18-19 (P.T.A.B.
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`8
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`PATENT NO. 8,155,342
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`Oct. 17, 2017) (“the high degree of similarity of Samsung’s instant Petition with
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`the prior petitions . . . reduces the weight we accord this factor.”). By Petitioners’
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`own admission, “[t]his Petition, and the references and grounds included in it, are
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`substantively identical to those included in the Toyota Petition.” Pet. at 1. Thus,
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`Patent Owner respectfully submits that Factor 1 should be accorded little-to-no
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`weight and rendered effectively neutral.
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`Factor 2 is neutral because it is directed to situations in which the same
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`petitioner files two separate petitions at different times. Netapp, Slip Op. at 10.
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`Factor 3 weighs in favor of invoking the Board’s discretion to deny
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`institution. Infringement actions against Petitioners were filed in May 2017, but
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`the follow-on petition was not filed until October 20, 2017. Petitioners were aware
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`of the full records of ten previous proceedings and yet delayed five months and
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`still filed a follow-on petition purporting to make substantively identical arguments
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`based on identical prior art to the Toyota IPR.1
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`Factor 4 weighs in favor of invoking the Board’s discretion to deny
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`institution because Petitioners knew or should have known of the prior art and
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`1
` Several other previous petitions also relied on the Clayton reference in combination with
`different prior art. See, e.g., IPR2016-01445, Paper 1, at 10 (challenged claims are obvious in
`view of Marlowe and Clayton); IPR2016-01533, Paper 1, at 23, 54, and 61 (challenged claims
`are obvious by Clayton in view of Berry, Clayton in view of Berry and Marlowe, and Clayton in
`view of Berry, Marlowe, and Gioscia); IPR2016-01557 (same grounds); IPR2016-01560 (same
`grounds).
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`9
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`IPR2018-00090
`PATENT NO. 8,155,342
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`grounds of rejection in the follow-on Petition well before its October 20, 2017
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`filing date because the prior art is exactly the same. Petitioners have delayed for
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`over five months after the commencement of infringement actions regarding the
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`challenged patent only to attempt to recycle issues that already resulted in
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`negotiated settlements (on the eve of trial) in all previous actions. Further, the
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`Toyota IPR was publicly available and had been concluded prior to the
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`commencement of those actions. Thus, Petitioners here have had the relevant
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`materials and “ample time to take advantage of those materials in crafting its
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`arguments” in the follow-on Petition. Apple, Inc. v. Immersion Corp., No.
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`IPR2017-01310, Paper 8, at *11-12 (P.T.A.B. Nov. 2, 2017).
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`Factor 5 weighs in favor of invoking the Board’s discretion to deny
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`institution because all of the challenged claims and prior art are identical to the
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`previous IPRs, and Petitioners do not provide any explanation regarding why they
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`waited until October 20, 2017 to file the follow-on Petition. Petitioners make no
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`representations regarding their delay. The follow-on Petition that took five months
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`to prepare purports to be “substantively identical” to the Toyota IPR and resulted
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`in the same exact grounds for challenge, prior art, expert declaration, and claim
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`charts as the Toyota IPR. A five month delay to alter claim construction positions
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`and re-purpose a previous petition is not excusable.
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`10
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`Factor 6, regarding the finite resources of the Board, also weighs in favor of
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`invoking the Board’s discretion to deny institution. The Board had an opportunity
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`to deny the Motions to Terminate the previous proceedings and issue a Final
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`Written Determination, but did not. The Board previously expended a near-
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`maximum amount of effort and resources in the previous proceeding, electing to
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`terminate after the Oral Hearing. Therefore, the Board has already exercised its
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`discretion and concluded that its resources are better spent elsewhere. To begin
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`review of the challenged patent in view of Clayton—again—would squander the
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`Board’s resources.
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`Factor 7 is directed to the situation where there is a pending, instituted
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`proceeding against the challenged patent. As there are currently no instituted
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`proceedings against the ’342 Patent, this factor is not applicable and therefore
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`neutral.
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`In sum, four factors weigh in favor of denial, two factors are neutral, and one
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`factor weighs (minimally, if at all) in favor of institution. Institution of this
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`proceeding will be a significant waste of the Board’s resources and would result in
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`significant prejudice to Patent Owner, who has already expended significant time
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`and effort defending the patentability of the challenged patent against this prior art.
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`11
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`PATENT NO. 8,155,342
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`Accordingly, the Board should exercise its discretion to deny this Petition in its
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`entirety.
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`III. THE CURRENT PETITION FAILS TO COMPLY WITH 37 C.F.R.
`§ 42.104(B)(3) AND (B)(4) BECAUSE ITS INCONSISTENT CLAIM
`CONSTRUCTION POSITIONS FAIL TO PUT THE BOARD ON
`NOTICE OF HOW THE CHALLENGED CLAIMS ARE TO BE
`CONSTRUED AND FAILS TO APPLY THE PROFFERED CLAIM
`CONSTRUCTIONS
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`Petitions are required to show:
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`[h]ow the challenged claim is to be construed. Where the
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`claim to be construed contains a means-plus-function or
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`step-plus-function limitation as permitted under 35
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`U.S.C. 112(f), the construction of the claim must identify
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`the specific portions of the specification that describe the
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`structure, material, or acts corresponding to each claimed
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`function;
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`37 C.F.R. § 42.104(b)(3). The Board has said that “[t]he ‘construction’ referred to
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`by 37 C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that
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`Petitioner believes is the correct construction under applicable law and should
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`apply in the involved proceeding.” Toyota Motor Corp. v. Blitzsafe Texas LLC,
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`Case IPR2016-00422 (P.T.A.B. July 6, 2016), Paper 12 at 26-27 (emphasis added)
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`(noting that the Petitioner provided the claim constructions of the district court, but
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`12
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`did not “take ownership” of the constructions and, in two instances, asserted that
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`the constructions were incorrect). The Board has also held that:
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`IPR2018-00090
`PATENT NO. 8,155,342
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`Petitioner’s statement that it agrees with Patent Owner’s
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`alleged claim construction solely for the purposes of its
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`Petition is insufficient in this case to show that Petitioner
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`agrees with, proposes, or adopts that construction as
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`required by 37 C.F.R. § 42.104(b)(3). That is, having
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`stated that it does not agree that Patent Owner’s claim
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`constructions are correct . . . , Petitioner’s qualified
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`agreement with this particular construction is insufficient
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`to take ownership of that construction.
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`Carefusion Corp. v. Baxter Int’l, Inc., Case IPR2016-01456 (P.T.A.B. Feb. 6,
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`2017) Paper 9 at 11.
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`
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`Petitioners here fail to “take ownership” of their proposed constructions.
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`Petitioners state that the Petition is “substantively identical” to the Toyota IPR
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`(Petition, at 1), but also note that “Petitioners here adopt the claim constructions
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`applied by the Board in the Toyota IPR and related IPRs.” Id. Petitioners appear
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`to have chosen five claim terms to construe from previous proceedings and placed
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`them in the “claim construction” section of the Petition. Petition, at 11-12. Yet,
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`Petitioners do not apply the updated constructions to any claims in the Petition, nor
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`13
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`IPR2018-00090
`PATENT NO. 8,155,342
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`does the Petition reference the updated constructions in any arguments. This
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`results in a deficient petition for two reasons.
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`First, the Petition merely presents claim constructions from previous
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`proceedings without any argument that they are correct or proper. Pet., at 11-12.
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`There is no argument or evidentiary presentation that the constructions were
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`proper, and no explanation as to why certain claim constructions were presented.
`
`Petitioners present a construction for the term “device presence signal,” but
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`expressly note that the Board “declined to construe this term on the basis that
`
`institution would be denied regardless of construction.” Pet. at 12 n.1. Thus, in
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`addition to presenting claim constructions previously adopted by the Board in
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`multiple previous proceedings, Petitioners also present a claim construction for a
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`term that was expressly not construed, without any argument whatsoever as to why
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`that construction is correct. Presenting bare constructions without “taking
`
`ownership” of why those constructions are correct fails to meet the statutory
`
`requirements of 37 C.F.R. § 42.104(b)(3).
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`Second, the Petition also fails because it presents inconsistent claim
`
`construction positions and thus does not adequately inform the Board as to “[h]ow
`
`the challenged claims are to be construed.” 37 C.F.R. § 42.104(b)(3). For
`
`example, Petitioners’ proposed construction of “integration subsystem” is “A
`
`
`
`14
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`
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`IPR2018-00090
`PATENT NO. 8,155,342
`
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`subsystem to perform at least: (1) connecting one or more portable devices or
`
`inputs to the car audio/video system via an interface, (2) processing and handling
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`signals, 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 data from
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`the one or more portable devices on the car audio/video system.” Confusingly, the
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`Petition later states that “all of the addressed claims require ‘an integration
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`subsystem,’ which is a means-plus-function claim element that, although indefinite
`
`as 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.” Petition, at 13 (emphasis added). But Petitioners did not previously
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`state that the claimed “integration subsystem” was a means-plus-function
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`limitation or that it was indefinite. See Petition at 11. When a claim is to be
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`construed as a means-plus-function limitation, “the construction of the claim must
`
`identify the specific portions of the specification that describe the structure,
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`material, or acts corresponding to each claimed function.” 37 C.F.R.
`
`§ 42.104(b)(3). Later in the Petition, it states that “[a]s set forth in the Claim
`
`Construction section VI above, the “integration subsystem” of the ’342 Patent is
`
`disclosed as a microcontroller or processor provided within the portable device or
`
`the car audio/video system and programmed to perform the method of FIG.
`
`
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`15
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`IPR2018-00090
`PATENT NO. 8,155,342
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`24 . . .”. Pet., at 22. Again, this statement is inconsistent with the actual proposed
`
`construction in the claim construction section, which does not mention a
`
`microcontroller or FIG. 24.
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`Petitioner’s failure to apply the proffered claim constructions in its invalidity
`
`arguments also runs afoul of 37 C.F.R. § 42.104(b)(4), which requires that a
`
`petition identify:
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`How the construed claim is unpatentable under the statutory
`
`grounds identified in paragraph (b)(2) of this section. The
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`petition must specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon
`
`37 C.F.R. § 42.104(b)(4) (emphasis added). The Grounds adopted from the Toyota
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`IPR apply the constructions offered by Toyota, and not the constructions advanced
`
`by Petitioners. Thus, the Grounds in this Petition must be deficient because they
`
`do not show how the claims, as construed by Petitioner, are found in the prior art.
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`Accordingly, the Petition does not meet the requirements of 37 C.F.R.
`
`§§ 42.104(b)(3) and (b)(4) and institution must be denied.
`
`
`
`16
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`
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`IPR2018-00090
`PATENT NO. 8,155,342
`
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`IV. SUMMARY OF THE ALLEGED PRIOR ART AND THE PRIOR
`DECISIONS REGARDING THE ’342 PATENT
`
`A. The Clayton Reference
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`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 teaches
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`using a wireless interface to receive content from a content source, and transmit the
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`content using a wired connection to a content player for playback. Id.
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`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. One of
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`these problems is that “there is currently no fast and convenient way to transfer
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`content between a user’s multiple devices.” Id. at ¶ 0003.
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`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 1.
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`
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`17
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`IPR2018-00090
`PATENT NO. 8,155,342
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`Content is defined as including “media such as audio, video, text;
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`
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`multimedia that includes two or more of audio, video, and text; or other types of
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`data.” Id. at ¶ 0014 (emphasis added). Target devices 140 may include personal
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`computers, cellular telephones, car radios, home stereos, MP3 players, and other
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`end-user devices. Id. at ¶ 0018. Target devices are capable of downloading
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`content from the content service and transmitting data to, and receiving data from,
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`other target devices. Id.
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`Clayton describes embodiments in which a cellular telephone 143 can
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`connect to a car radio and transfer its content to the car radio for playback on the
`
`car radio.
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`
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`18
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`IPR2018-00090
`PATENT NO. 8,155,342
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`
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`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 system
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`143 via the wireless interface 150 of the cellular telephone 142. In addition, a
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`wireless adaptor 173 may be used to enable communications between the cellular
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`telephone 142 and the car audio system 143 for receiving content and for
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`controlling playback of the content.” Id. at ¶ 0052.
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`The wireless adaptor 173 that is in communication with the car audio system
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`“allows a suitably-enabled portable content device to wirelessly integrate with a
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`component in a content player,” id. at ¶ 0053, which, in the case of Figure 3, is the
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`car radio component of a car audio system 143. See id.
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`
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`19
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`IPR2018-00090
`PATENT NO. 8,155,342
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`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 for content
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`playback by the car radio component.” Id. at ¶ 0055. As shown in Figure 4, the
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`wireless adaptor 173 has a decoder 440 that includes “a content decoder 446 that
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`decodes the content received from the cellular telephone 142.” Id. at ¶ 0056. An
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`optional metadata decoder 442 decodes metadata, such as song tiles and artists
`
`names, for display on the car audio system 143. Id.
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`
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`20
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`IPR2018-00090
`PATENT NO. 8,155,342
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`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 audio
`
`playback through the later [sic].” Id. at ¶¶ 0062-0063. “The network manager 430
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`further controls the content decoder 446 to decode the streaming audio into a
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`format understood by the car audio system 143 for output to the I/O interface 450,
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`to which the car audio system 143 is connected through its own I/O interface.” Id.
`
`Thus, Clayton describes an embodiment in which a cellular telephone acting
`
`as a content source transmits audio data to a car stereo acting as a playback device.
`
`
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`21
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`IPR2018-00090
`PATENT NO. 8,155,342
`
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`The wireless interface in communication with the car stereo receives the streamed
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`audio data, decodes the data into a format understood by the car stereo, and outputs
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`the decoded data to the car stereo system for playing on the car stereo.
`
`B.
`
`The Decisions Denying Institution of IPR2016-00419 and
`Rehearing of that Decision
`
`On July 19, 2016, the Board denied institution of inter partes review of the
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`’342 Patent on grounds based on U.S. Patent Pub. No. 2001/0028717 A1
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`(“Ohmura”). The Board found that Ohmura did not meet the “audio generated by
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`the portable device” limitation recited in Claim 49 of the ’342 Patent because in
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`Ohmura, 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 car
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`audio/video system, and not on the portable device. Toyota Motor Corp. v.
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`Blitzsafe Texas,
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