`571-272-7822
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`Paper 15
`Entered: April 20, 2018
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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, and BMW OF NORTH AMERICA, LLC,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00090
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`
`INTRODUCTION
`I.
`Petitioner, as captioned above, filed a Petition requesting an inter
`partes review of claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–
`103, 106, 109–111, 113, 115, and 120 (“the challenged claims”) of
`U.S. Patent No. 8,155,342 B2 (Ex. 1001, “the ’342 patent”). Paper 1
`(“Pet.”). Patent Owner filed a Preliminary Response. Paper 14 (“Prelim.
`Resp.”).
`Under 35 U.S.C. § 314, inter partes review may not be instituted
`unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Having considered the Petition and the Preliminary Response, and
`for the reasons stated below, we do not institute inter partes review of any
`challenged claims of the ’342 patent.
`
`Related Matters
`A.
`Petitioner asserts that the’342 patent is the subject matter of district
`court ligitation pending in the Eastern District of Texas: Blitzsafe Texas,
`LLC v. Bayerische Motoren Werke AG et al., 2:17-cv-00418, E.D. Tex., May
`11, 2017; Blitzsafe Texas, LLC v. Tata Motors Ltd. et al., 2:17-cv-00424,
`E.D. Tex., May 12, 2017; Blitzsafe Texas LLC v. Mitsubishi Electric
`Corporation et al., 2:17-cv- 00430, E.D. Tex., May 15, 2017; Blitzsafe
`Texas, LLC v. Mazda Motor Corporation et al., 2:17-cv-00423, E.D. Tex.,
`May 12, 2017; Blitzsafe Texas, LLC v. Daimler AG et al., 2:17-cv-00422,
`E.D. Tex., May 12, 2017; Blitzsafe Texas, LLC v. Subaru Corporation et al.,
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`2:17-cv-00421, E.D. Tex., May 12, 2017; Blitzsafe Texas, LLC v. Zhejiang
`Geely Holding Group Co., Ltd. et al., 2:17-cv-00420 , E.D. Tex., May 12,
`2017; Blitzsafe Texas, LLC v. Robert Bosch LLC et al., 2:17-cv-00105, E.D.
`Tex., February 3, 2017. Pet. 2−3.
`According to Petitioner, the ’342 patent has been involved in multiple
`AIA proceedings: IPR2016-00118 (not instituted); IPR2016-00418 joined
`with IPR2016-01533, IPR2016-01557, IPR2016-01560 (settled and
`terminated after oral hearing and before final written decision). IPR2016-
`00419 (not instituted), IPR2016-01445 (settled and terminated prior to
`institution decision), IPR2016-01449 (settled and terminated prior to
`institution decision), IPR2016-01473 (not instituted), IPR2016-01476 (not
`instituted). Pet. 4.
`
`The ’342 Patent (Ex. 1001)
`B.
`The ’342 patent is entitled “Multimedia Device Integration System.”
`Ex. 1001, [54]. The ’342 patent describes that a “particular problem with
`integrating after-market audio and video systems with existing car stereo and
`video systems is that signals generated by both systems are in proprietary
`formats, and are not capable of being processed by the after-market system.”
`Id. at 1:54−58. “Thus, in order to integrate after-market systems with
`existing car stereo and video systems, it is necessary to convert signals
`between such systems.” Id. at 1:60−63.
`Certain embodiments of the ’342 patent provide a multimedia device
`integration system that allows “for the wireless integration of a portable
`audio and/or video device with a car audio and/or video system.” Id. at
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`5:7−10. “The portable device could comprise a CD changer, CD player,
`satellite receiver (e.g., XM or Sirius), digital media device (e.g., MP3, MP4,
`WMV, or Apple iPod device), video device (e.g., DVD player), or a cellular
`telephone.” Id. at 5:9−13. In particular, an integration module, which could
`be positioned within the car system, receives data from the portable device
`(including track information, song information, artist information, time
`information, and other related information) and processes the data into a
`format compatible with the car system. Id. at 5:23−30. One embodiment
`illustrated in Figure 19, reproduced below, for example, shows an
`integration subsystem. Id. at 8:3−8.
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`As shown in Figure 19, integration subsystem 1032 positioned within
`car audio/video system 1010 allows information (data and control signals) to
`be exchanged between portable device 1024 and car audio/video
`system 1010, and processes and formats data accordingly so that instructions
`and data from car audio/video system 1010 are processed by portable device
`1024, and vice versa. See id. at 33:43–35:62, Fig. 19. Wireless interface
`1016 in the car system and wireless interface 1026 in the portable device
`form wireless link 1022. Id. at 34:15–18; see id. at 35:21–23.
`
`Illustrative Claim
`C.
`Of the challenged claims, claims 49, 73, 97, and 120 are independent.
`Claim 49, reproduced below, is illustrative, where italicized text denotes
`limitations discussed further below.
`49. A multimedia device integration system, comprising:
`an integration subsystem in communication with a car
`audio/video system; and
`a first wireless interface in communication with said
`integration subsystem, said first wireless interface establishing a
`wireless communication link with a second wireless interface in
`communication with a portable device external to the car
`audio/video system,
`wherein said integration subsystem obtains, using said
`wireless communication link, information about an audio file
`stored on the portable device, transmits the information to the car
`audio/video system for subsequent display of the information on
`a display of the car audio/video system, instructs the portable
`device to play the audio file in response to a user selecting the
`audio file using controls of the car audio/video system, and
`receives audio generated by the portable device over said
`wireless communication link for playing on the car audio/video
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`system.
`Ex. 1001, 42:29–47 (emphasis added).
`
`Asserted Prior Art and Grounds of Unpatentability
`D.
`The Petition identifies the following references in connection with
`Petitioner’s challenge of unpatentability (Pet. 6−7):
`1) Clayton: U.S. Patent App. Pub. No. 2006/0181963 A1, filed on
`December 8, 2005, published on August 17, 2006, and introduced in
`the record as Exhibit 1002;
`2) Clayton Provisional: U.S. Provisional Application No. 60/651,963,
`filed on February 11, 2005 and introduced in the record as Exhibit
`1003;
`3) Berry: U.S. Patent No. 6,559,773 B1, published on May 6, 2003, and
`introduced in the record as Exhibit 1004;
`4) Marlowe: U.S. Patent App. Pub. No. 2003/0215102 A1, filed on
`December 11, 2002, published on November 20, 2003, and introduced
`in the record as Exhibit 1005; and
`5) Gioscia: U.S. Patent No. 6,421,305 B1, filed on November 13, 1998,
`and introduced in the record as Exhibit 1006.
`Petitioner asserts three grounds of unpatentability (Pet. 8):
`
`Challenged Claim(s)
`49−55, 57, 62−64, 71, 73-80, 95,
`97, 99−103, 109−111, and 120
`49−57, 62−64, 66, 70, 71, 73−80,
`94, 95, 97, 99−103, 106, 109−111,
`113, and 120
`
`Basis
`
`References
`
`§ 103(a) Clayton and Berry
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`§ 103(a) Clayton, Berry, and
`Marlowe
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`Challenged Claim(s)
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`68 and 115
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`References
`Basis
`§ 103(a) Clayton, Berry,
`Marlowe, and Gioscia
`
`With regard to introduced testimony, Petitioner relies on the
`Declaration of Dr. Thomas Matheson. Ex. 1016 (“Matheson Declaration”).
`And Patent Owner relies on the Declaration of Richard Stern, Ph.D. Exhibit
`2001.
`
`II. ANALYSIS
`A. Petitioner’s Burden
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). We presume a claim
`term carries its plain meaning, which is the meaning customarily used by
`those of skill in the relevant art at the time of the invention. Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). We note that only
`those claim terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner states that the Board has construed previously several claim
`terms: (1) “integration subsystem,” (2) “multimedia device integration
`system,” (3) “car audio/video system,” (4) “device presence signal,”
`(5) “generated . . . for playing on the car audio/video system.” Pet. 11–12.
`Except for indicating the previous inter partes review from which the
`constructions are derived, Petitioner does not proffer any further discussion
`as to the proper scope of these terms. Id.
`Patent Owner argues that the Petition proffers inconsistent claim
`construction positions. Prelim. Resp. 14−16. Further, Patent Owner argues
`that the proposed constructions are not supported by explanation or
`reasoning supported by the record. Id. at 14. Most notably, Patent Owner
`argues that in another inter partes review, the Board “has found that the
`claims require at least some decoding to be done on the portable device.” Id.
`at 25 (citing Toyota Motor Corp. v. Blitzsafe Texas, LLC, Case IPR2016-
`00419, Decision Denying Request for Rehearing, slip op. at 5 (PTAB Aug.
`31, 2016) (Paper 15)). Because it is relevant to our determination, we
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`analyze the term “audio generated by the portable device . . . for [playing or
`subsequently playing of the audio] on the car audio/video system,” as recited
`in claims 49, 73, 97, and 120.
`Independent claims 49 and 73 of the ’342 patent recite that the
`“integration subsystem” “instructs the portable device to play the audio file”
`and “receives audio generated by the portable device over said wireless
`communication link for playing on the car audio/video system.” Ex. 1001,
`42:37–47, 44:21−23 (emphasis added). Claim 97 recites that the
`“integration subsystem channels audio generated by the portable device to
`the car audio/video system using the wireless communication link for
`subsequent playing of the audio on the car audio/video system, the audio
`corresponding to an audio file played by the portable device.” Id. at
`45:52−56 (emphases added). Similarly, independent claim 120 recites that
`the “integration subsystem instructs the portable device to play an audio file”
`and “channels audio generated by the portable device to the car audio/video
`system using the wireless communication link for subsequent playing of the
`audio on the car audio/video system, the audio corresponding to the audio
`file played by the portable device.” Id. at 47:3–12 (emphases added). Thus,
`each claim requires that “audio generated by the portable device” be
`transmitted over a wireless communication link for playing on the car
`audio/video system. Each claim expressly distinguishes the recited “audio
`file” played by the portable device from the recited “audio” that is generated
`by the portable device and transmitted over the wireless communication link
`for playing on the car audio/video system. Stated more generally, the recited
`“audio” is distinct from the recited “audio file.”
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`The Specification of the ’342 patent describes this claim feature,
`stating that “the audio channels of the MP3 player are connected (channeled)
`to the car stereo system, allowing audio from the MP3 player to be played
`through the car stereo.” Ex. 1001, 17:55−57; Fig. 4B (step 142, “connect
`Audio Channels of MP3 Player to Radio”). With respect to how the
`’342 patent describes “channeling,” we find relevant the description of the
`circuit configuration for integrating an after-market device to the car stereo,
`illustrated in Figure 3a, where “audio signals provided” at particular ports of
`the after-market device, such as a CD changer, are “selectively channeled to
`the car radio” at another particular port. See id. at 13:20−24 (discussing
`Figure 3a); see also 14:21−26 (discussing Figure 3b). This description is
`consistent throughout the Specification, where channeling of the audio,
`regardless of whether the source is an MP3 player, CD changer, or satellite
`receiver, involves at most multiplexing analog channels, and at a minimum,
`directly passing through the audio to the appropriate port of the car stereo.
`See Figs. 3a−3d; 4A−4C; see also 15:16−29 (describing analog multiplexers
`coupled to the provided ports of Figure 3c), 16:1−5 (describing channeling
`audio signals from satellite receiver to the car radio).
`Thus, in addition to the claimed difference between an “audio file”
`and “audio,” the Specification supports the interpretation of the claimed
`“integration subsystem” as receiving audio that is already in a form that the
`car stereo can play. That is, regardless of the form or content, the “audio”
`generated by the portable device and received by the integration subsystem
`must be the “audio” that is played by the car stereo.
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`Patent Owner points out that the claim is not met when “decoding”
`occurs at the integration subsystem. Prelim. Resp. 24 (arguing that Clayton
`does not meet the claims because the audio file is decoded by the wireless
`interface of the car audio/video system into a format understood by the car
`audio/video system for output through the car speakers). We must be careful
`here of evaluating the scope of the claims vis-à-vis “decoding” generally,
`outside the context of the claim language, because the claims neither
`encompass nor exclude signal processing of any particular type, either at the
`portable device or at the integration subsystem. For instance, the claims do
`not address how the “audio” is generated from the “audio file” at the
`portable device. Nor do the claims specify a particular manner of processing
`and handling the audio by the integration subsystem.1 Finally, whether the
`portable device requires “decoding” of the “audio file” in order to “play” the
`“audio file,” is a fact issue that depends on the technology involved in the
`portable device, not on any express claim requirement. Nevertheless, it
`suffices, for purposes of this Decision, to resolve the scope of the claim in
`the sense that if the integration subsystem either receives an “audio file” or
`must decode what it receives in order to render “audio” for playing at the car
`audio/video system, then there is no “audio generated by the portable
`device” and “for [subsequent] playing [of the audio] at the car audio/video
`system,” under the plain meaning of the claims.
`
`
`1 We note that the Specification defines “integration” as including
`“processing and handling signals, audio, and/or video information.” Ex.
`1001, 8:67−9:1.
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`C. Legal Standard for 35 U.S.C. § 103(a)
`Obviousness is determined on the basis of underlying factual
`inquiries, including: (1) the scope and content of the prior art; (2) differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, secondary considerations of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
`patent claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that “the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`However, a conclusion of obviousness “cannot be sustained with mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Further, in
`determining obviousness, the references must be considered as a whole.
`Thus, picking and choosing from a reference only the favorable parts and
`ignoring the rest is prohibited. In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir.
`1986). The court in Hedges elaborates:
`It is impermissible within the framework of section 103 to pick
`and choose from any one reference only so much of it as will
`support a given position, to the exclusion of other parts necessary
`to the full appreciation of what such reference fairly suggests to
`one of ordinary skill in the art.
`Id. (internal quotes and citation omitted).
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`For this Decision, we determine that no express finding on the level of
`ordinary skill in the art is necessary, and that the level of ordinary skill in the
`art is reflected by the prior art of record. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. Alleged Obviousness of Claims 49–55, 57, 62–64, 71, 73–80, 95, 97,
`99–103, 109–111, and 120 based on Clayton and Berry
`Petitioner contends that claims 49–55, 57, 62–64, 71, 73–80, 95, 97,
`99–103, 109–111, and 120 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the combination of Clayton and Berry. Pet. 24–50.
`At the outset, we note the ’342 patent (Ex. 1001) was filed on June 27,
`2006.2 Petitioner alleges that the challenged claims of the ‘342 patent are
`not entitled to a priority date earlier than its filing date of June 27, 2006.
`Pet. 13. Thus, Petitioner asserts Clayton (Ex. 1002), which was filed on
`December 8, 2005 (published on August 17, 2006), as prior art under pre-
`AIA 35 U.S.C. § 102(e). Pet. 6−7. Petitioner, however, relies also on the
`Clayton Provisional “to establish that Clayton as applied herein is entitled to
`an earliest effective filing date of February 11, 2005” because Clayton
`claims priority to the Clayton Provisional. Id. at 7. Petitioner’s assertion of
`
`
`2 The ’342 patent issued from application 11/475,847, which is a
`continuation-in-part (CIP) of application 11/071,667 (Ex. 1009), filed March
`3, 2005 (abandoned); which was a CIP of application 10/732,909 (Ex. 1010)
`filed December 10, 2003 (abandoned); which was a CIP of application
`10/316,961 (Ex. 1011) filed December 11, 2002, now U.S. Patent 7,489,786.
`See Ex. 1001.
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`Clayton’s priority with the Clayton Provisional is insufficient. Petitioner has
`the burden of establishing that the asserted reference is prior art as of any
`particular priority date. See Dynamic Drinkware LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (finding insufficient for Petitioner
`to map the challenged claims to the the disclosure of the provisional
`application because “[a] reference patent is only entitled to claim the benefit
`of the filing date of its provisional application if the disclosure of the
`provisional application provides support for the claims in the reference
`patent in compliance with § 112, ¶ 1”) (citing In re Wertheim, 646 F.2d 527,
`537 (CCPA 1981) (emphasis added). The Petition does not include the
`required mapping of a claim in Clayton with supporting disclosure in the
`Clayton Provisional. Accordingly, we do not rely on Petitioner’s assertion
`of priority for Clayton. Clayton is prior art based on its actual filing date of
`Decfember 8, 2005.
`
`(1) Clayton (Exhibit 1002)
`Clayton is entitled “Wireless Adaptor for Content Transfer.”
`Ex. 1002, [54]. It describes “embodiments that wirelessly provide content
`from a content source to a content player.” Id. Abstract. Clayton discloses
`“a wireless adaptor that includes a wireless interface operable to receive the
`content from the content source and a wired interface for a wired connection
`with the content player to route the content, as received by the wireless
`interface, for playback by the content player.” Id.
`Clayton’s Figure 3 is reproduced below.
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`As shown in Figure 3 of Clayton, portable device 142, such as a
`cellular telephone, sends content to a content player such as the car audio
`system 143. Id. ¶ 52. Wireless adaptor 173 may be used to enable
`communications between the cellular telephone 142 and car audio system
`143 for receiving content and for controlling playback of the content. Id.
`Clayton’s Figure 4, which shows the detail of wireless adapter 173, is
`reproduced below.
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`As shown in Figure 4 of Clayton, wireless adapter 173 includes,
`among other components, decoder 440 having content decoder 446 to
`decode content 181 received from portable device 142 and metadata decoder
`442 to decode any metadata for content (e.g., song titles, artist names,
`playlists) and for displaying on car audio/video system 143. Id. ¶¶ 56–63,
`Fig. 4. Application profiles stack 420 includes Bluetooth profiles to regulate
`the transmission of content from cellular telephone 142 to the car audio
`system 143 and the transmission of command/control signals between those
`two devices. Id. ¶ 62. One of those Bluetooth profiles includes the
`Advanced Audio Distribution Profile or A2DP. Id.
`According to Clayton,
`When the wireless adaptor 173 is in operation, the A2DP therein
`enables the wireless adaptor 173 to transfer the content stored in
`the cellular telephone 142 to the car audio system 143 as
`streaming audio for stereo audio playback through the later. As
`described earlier, the stored content is located in respective
`channels in the cellular telephone 142. The network manager
`430 further controls the content decoder 446 to decode the
`streaming audio into a format understood by the car audio
`system 143 for output to the I/O interface 450, to which the car
`audio system 143 is conntected through its own I/O interface.
`Ex. 1002 ¶ 63 (emphases added).
`Clayton describes further the decoding function of content decoder
`446 in the context of other embodiments: As with the transfer of content
`from the cellular telephone 142, the content and content metadata from the
`USB storage key are decoded by the decoder 440 for playback and
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`displayed, respectively, by the car audio system 143. Id. ¶ 70 (emphasis
`added).
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`(2) Analysis of Obviousness
`Independent claims 49 and 73 each recites an “integration subsystem”
`
`that:
`
`instructs the portable device to play the audio file in response to
`a user selecting the audio file using controls of the car
`audio/video system, and receives audio generated by the
`portable device over said wireless communication link to the car
`audio/video system for playing on the car audio/video system.
`Ex. 1001, 42:29–47, 44:4–23 (emphases added). Similarly, independent
`claims 97 and 120 recite the “integration subsystem” “channel[ing] audio
`generated by the portable device to the car audio/video system using the
`wireless communication link for subsequent playing on the car audio/video
`system.” Ex. 1001, 45:52–56, 47:7–12 (emphases added).
`For these “audio” limitations, the Petition proffers one paragraph as
`follows:
`
`The first wireless interface (RF radio) communicates
`wirelessly with a second wireless interface 148/150 in the
`portable device to receive display metadata (information)
`about an audio file stored in and/or received by the portable
`device, transmit control commands to the portable device to
`instruct playback of an audio file, and receive audio
`generated by the portable device. See Ex. 1002 at ¶¶ [0033],
`[0042], [0048], [0056], and [0063] and FIG. 3; see, e.g., Ex.
`1003 at pp. 3, 10, 13, 154, 169, 339, 488, 561, 609, and 656;
`see also Ex. 1016 at ¶94.
`
`Pet. 20 (emphasis added). The Petition includes a claim chart, a portion of
`which is reproduced below, that clarifies Petitioner’s reliance on paragraph
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`63 of Clayton as disclosing the “audio generated by the portable device”
`(Pet. 29):
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`The claim chart reproduced above maps limitation (g)—“receives audio
`generated by the portable device”—to underlined portion of paragraph 63 of
`Clayton.
`Thus, as demonstrated by the foregoing, Petitioner takes the position that the
`“streaming audio” that the wireless adaptor receives equates to the “audio
`generated by the portable device” limitation recited in the independent
`claims.
`We find this contention unpersuasive in light of Patent Owner’s
`arguments and evidence. The information presented by Petitioner does not
`show sufficiently that “streaming audio” is audio generated by the portable
`device that is also for playing at the the car audio/video system, consistent
`with the claim language and our claim construction analysis (supra Section
`II.B). To the contrary, the Petition does not offer any explanation of
`Clayton’s disclosure in this regard, and instead merely repeats the claim
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`language and provides string citations to Clayton. Pet. 20. The claim chart
`reproduced supra identifies the portion in Clayton that refers to “streaming
`audio for stereo playback through the [car audio system 143].” This, on its
`face, appears to track the claim, but on closer consideration, does not
`demonstrate adequately that Clayton’s “streaming audio” is the claimed
`“audio generated by the portable device.”
`For instance, the same paragraph that Petitioner relies upon as
`disclosing the “streaming audio” states that the content decoder decodes the
`streaming audio into a format understood by the car audio system for output
`to the I/O interface. See Pet. 29 (citing Ex. 1002 ¶ 63). Patent Owner
`focuses on the description of “streaming audio” as being further decoded
`into a format understood by the car audio system. In particular, Patent
`Owner reasons that the wireless adaptor, not the portable device, generates
`the audio with the content decoder. Prelim. Resp. 26, 28 (explaining
`paragraph 63 of Clayton as confirming that the portable device sends an
`audio file that is later decoded into generated audio by the wireless adapter).
`Patent Owner also relies on testimony from Dr. Stern, who describes
`Clayton’s use of the word “streaming” as referring to the manner in which
`data is communicated between devices using a Bluetooth protocol. Ex. 2001
`¶¶ 32−33. In other words, Dr. Stern explains that “streaming” refers to
`transferring of an audio file into a series (a set of subsequences) of packets.
`Id. Based on this understanding, Dr. Stern opines that Clayton describes
`encoding and decoding of the transmission using the Bluetooth protocol, but
`that in Clayton, in contrast to the claim requirement, the transmitted data
`undergoes additional MP3 decoding and D/A conversion at the automobile
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`(not the portable device). Id. ¶¶ 38−39, 56, 65 (opining that Clayton’s
`“streaming audio” refers to data packets in a data stream).
`Dr. Stern’s testimony is factually supported by Clayton, as Clayton
`describes that the A2DP protocol enables transfer of the content as
`streaming audio, which content is further decoded at the content decoder to
`obtain a format understood by the car audio system. Ex. 1002 ¶ 63.
`Similarly, other embodiments in Clayton describe content decoding in the
`same vein: the content streamed to the wireless adaptor is further decoded
`for playback. Id. ¶ 70 (“the content and content metadata from the USB
`storage key are decoded by the decoder 440 for playback and displayed,
`respectively, by the car audio system 143”); ¶ 57 (“Once the content and any
`associated metadata are decoded, they are forwarded to the car audio system
`143 via an input/output (I/O) interface 450”). Clayton does not describe the
`content decoder as optional, as it does for the metadata decoder. Id. ¶ 56.
`Thus, in light of Clayton’s disclosures as a whole and Patent Owner’s
`argument and evidence, we are persuaded that Clayton teaches that the
`wireless adaptor receives content using the streaming format of a Bluetooth
`protocol, and further decodes the received content so that the audio may be
`in a format that the car audio system can play.
`The Petition fails to explain and persuasively support Petitioner’s
`contention that Clayton’s “streaming audio” is the recited “audio” for
`playing by the car audio system. In contrast, Patent Owner (supported by
`expert testimony) has argued persuasively that each of the paragraphs cited
`in the Petition is in accord with its explanation of Clayton, and, that, in fact,
`together these paragraphs confirm that Clayton’s “streaming audio” is not
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`audio generated by the portable device for playing on the car audio/video
`system as claimed. Prelim. Resp. 28−30 (addressing Figure 4 and
`paragraphs 33, 42, 48, and 56, as well as uncited paragraphs 49, 52, and 55).
`In sum, because Clayton decodes the received stream at the wireless adaptor
`(recited “integration subsystem”), Clayton does not receive “audio” that is
`for playing at the car audio system, consistent with our claim construction
`analysis, supra in Section II.B.
`Patent Owner further argues that paragraph 55 of Clayton does not
`support the contention that decoded content is received at the wireless
`adaptor. The inclusion of the clause “encoded or unencoded” does not mean
`that the received content would be the required “audio.” Id. at 30−31. A
`relevant portion of paragraph 55 states that the cellular telephone is
`“suitably-enabled to wirelessly transmit content and command/control
`signals, encoded or unencoded, via the aforementioned wireless proximity
`network to the wireless adaptor 173.” Ex. 1002 ¶ 55. Another relevant
`portion of this paragraph confirms that “any needed signal conversion or
`decoding” of the content is provided at the wireless adaptor. Id.
`Paragraph 55, at best, is inconclusive as to whether Clayton’s
`“streaming audio” is audio generated by the portable device as claimed. For
`instance, we note that this paragraph may refer to encoded or unencoded
`command/control signals, as Patent Owner argues (Prelim. Resp. 30) or may
`refer to additional encoding that occurs within the Bluetooth protocol. See,
`e.g, Ex. 1002, 3353 (describing standard Sub-band perceptual codec (SBC)
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`3 Page citations refer to the pagination added in the footer of the Exhibit by
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`as part of the A2DP protocol). Nevertheless, the content of paragraph 55 is
`unavailing to Petitioner as the Petition does not rely on paragraph 55 for the
`“audio generated” limitation, and our role in our revie