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
`Issued: Apr. 10, 2012
`Filed: Jun. 27, 2006
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`Inter Partes Review No.: IPR2018-00090
`
`PETITION FOR INTER PARTES REVIEW
`
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`TABLE OF CONTENTS
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1
`A.
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1) ......... 1
`B.
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ..................... 2
`C.
`LEAD AND BACK-UP COUNSEL .................................................... 4
`D.
`SERVICE INFORMATION ................................................................. 6
`III. PAYMENT OF FEES — 37 C.F.R. § 42.103 ................................................. 6
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 .......................... 6
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 6
`B.
`Prior Art Patents and Printed Publications ............................................ 6
`C.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .............................................................................................. 7
`SUMMARY OF THE '342 PATENT.............................................................. 8
`A.
`Brief Description ................................................................................... 8
`B.
`Summary of the Prosecution History of the '342 patent ....................... 9
`VI. CLAIM CONSTRUCTION .......................................................................... 11
`VII. EFFECTIVE FILING DATE OF '342 PATENT .......................................... 12
`VIII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`CLAIMS 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106,
`109-111, 113, 115, AND 120 OF THE '342 PATENT ARE
`UNPATENTABLE ........................................................................................ 19
`A. Grounds 1-3: Clayton ......................................................................... 19
`1.
`Ground 1: Claims 49-55, 57, 62-64, 71, 73-80, 95, 97,
`99-103, 109-111, and 120 are obvious under 35 U.S.C.
`§103(a) by Clayton in view of Berry ........................................ 19
`Ground 2: Claims 49-57, 62-64, 66, 70, 71, 73-80, 94,
`95, 97, 99-103, 106, 109-111, 113, and 120 are obvious
`under 35 U.S.C. §103(a) by Clayton in view of Berry and
`Marlowe .................................................................................... 45
`
`2.
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`3.
`
`Ground 3: Claims 68 and 115 are obvious under 35
`U.S.C. §103(a) by Clayton in view of Berry, Marlowe,
`and Gioscia ................................................................................ 52
`IX. CONCLUSION .............................................................................................. 53
`
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`EXHIBITS
`
`Description
`U.S. Patent No. 8,155,342 ("the '342 patent")
`U.S. Patent Application Publication No. 2006/0181963 ("Clayton")
`U.S. Provisional Application No. 60/651,963 ("Clayton Provisional")
`U.S. Patent No. 6,559,773 ("Berry")
`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe")
`U.S. Patent No. 6,421,305 ("Gioscia")
`Claim Construction Ruling in Marlowe Patent Holdings LLC v.
`DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ) and Marlowe
`Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D.
`NJ)
`U.S. Patent Application No. 11/475,847 ("the '847 application")
`U.S. Patent Application No. 11/071,667 ("the '667 application")
`U.S. Patent Application No. 10/732,909 ("the '909 application")
`U.S. Patent Application No. 10/316,961 ("the '961 application")
`Highlighted '342 Patent (Showing the New Matter)
`Plaintiff's Disclosure of Asserted Claims and Infringement
`Contentions, served in Blitzsafe Texas, LLC v. Toyota Motor Corp.
`et al., 2-15-cv-01277 (E.D. TX)
`File History of the '342 Patent
`1999 ID3v2.3 Metadata Standard (1999)
`Declaration of Dr. Thomas Matheson
`Canadian Patent Application Publication No. CA 2347648
`("Kandler")
`International Publication No. WO 01/67266 A1 ("Lau")
`U.S. Patent Application Publication No. 2001/0028717 ("Ohmura")
`Bluetooth ESDP for UPnP (2001)
`Universal Plug and Play Device Architecture (2000)
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`1019
`1020
`1021
`
`
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`I.
`
`INTRODUCTION
`
`This Petition, and the references and grounds included in it, are
`
`substantively identical to those included in the Toyota Petition (IPR2016-
`
`00418) (the “Toyota IPR”). The sole exception is that Petitioners here adopt
`
`the claim constructions applied by the Board in the Toyota IPR and related
`
`IPRs. The Toyota IPR proceeded through final hearing and was ready for
`
`determination and preparation of the final written decision.
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioners
`
`respectfully request Inter Partes Review of claims 49-57, 62-64, 66, 68, 70, 71, 73-
`
`80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 of U.S. Patent No.
`
`8,155,342 (Ex. 1001, "the '342 patent"), which was filed on June 27, 2006 and
`
`issued on April 10, 2012 to Ira Marlowe, and is currently assigned to Blitzsafe
`
`Texas, LLC. ("Blitzsafe" or "Patent Owner") according to the U.S. Patent and
`
`Trademark Office assignment records. There is a reasonable likelihood that
`
`Petitioner will prevail with respect to at least one of the claims challenged in this
`
`Petition.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`
`The following is a list of Petitioners (and listed out of an abundance of
`
`caution, entities as real parties-in-interest for each party in parentheses): Subaru of
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`America, Inc. (Subaru Corporation, Subaru of Indiana Automotive, Inc., Fuji
`
`Heavy Industries U.S.A., Inc., Subaru Research & Development, Inc., Subaru
`
`Intelligent Service Ltd., Subaru Auto Accessories Co., Ltd.); Mazda Motor of
`
`America, Inc. d/b/a Mazda North American Operations (Mazda Motor
`
`Corporation); Volvo Cars of North America, LLC (Zhejiang Geely Holding Group
`
`Co., Ltd., Shanghai Geely Zhaoyuan International Investment Co., Ltd., Geely
`
`Sweden Holdings AB, Volvo Car AB, Volvo Car Corporation, Volvo Car USA,
`
`LLC); Mitsubishi Electric Corporation (Mitsubishi Electric Automotive America,
`
`Inc., Mitsubishi Electric U.S. Holdings, Inc., Mitsubishi Electric U.S., Inc.);
`
`Mitsubishi Motors Corporation (Mitsubishi Motors North America, Inc.,
`
`Mitsubishi Motors R&D of America, Inc.); Daimler AG (Mercedes-Benz USA
`
`LLC, Mercedes-Benz U.S. International, Inc., Mercedes-Benz Research &
`
`Development North America, Inc.); BMW of North America, LLC (Bayerische
`
`Motoren Werke AG, BMW Manufacturing Co., LLC).
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the '342 patent (and
`
`U.S. Patent No. 7,489,786 ("the '786 patent"), a parent patent to the '342 patent),
`
`are currently the subject of the following on-going litigations: 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,
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`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., 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.
`
`The '342 patent and the '786 patent were previously the subject of the
`
`following litigations (each of which settled): Blitzsafe Texas, LLC v. Nissan Motor
`
`Co., Ltd. et al., 2-15-cv-01276, E.D. Tex., July 16, 2015; Blitzsafe Texas, LLC v.
`
`Toyota Motor Corp. et al., 2:15-cv-01277, E.D. Tex., July 16, 2015; Blitzsafe
`
`Texas, LLC v. Volkswagen Group of Am., Inc. et al., 2-15-cv-01278, E.D. Tex.,
`
`July 16, 2015; Blitzsafe Texas, LLC v. Hyundai Motor Co. et al., 2-15-cv-01275,
`
`E.D. Tex., July 16, 2015; Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et al., 2-
`
`15-cv-01274, E.D. Tex., July 16, 2015. The ‘786 patent was also previously the
`
`subject of the following litigations (each of which settled): Marlowe Patent
`
`Holdings LLC v. DICE Electronics, LLC et al., 3:10-cv-01199 (D.N.J.); and
`
`Marlowe Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D.N.J.).
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`The '342 patent was previously the subject of the following IPRs: 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). The ‘786 patent was previously the subject of the following IPRs:
`
`IPR2016-00421 (settled and terminated after the date for oral argument and before
`
`a final written decision); IPR2016-00422 (not instituted); IPR2016-01448 (not
`
`instituted); IPR2016-01472 (not instituted); IPR2016-01477 (not instituted).
`
`C. LEAD AND BACK-UP COUNSEL
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioners provide the
`
`following designation of Lead and Back-Up counsel for Petitioners.
`
`Lead Counsel
`Matthew D. Satchwell (Reg. No. 58,870)
`matthew.satchwell@dlapiper.com
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`T: 312-368-2111, F: 312-630-6352
`Back-up Counsel
`Evan Finkel (Reg. No. 49,059)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`725 S. Figueroa Street, Suite 2800
`Los Angeles, California 90017
`Telephone: 213.488.7307
`
`Back-up Counsel
`Paul R. Steadman (Reg. No. 43932)
`paul.steadman@dlapiper.com
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`T: 312-368-2135
`Back-up Counsel
`Timothy J. Rawson (Reg. No. 70,316)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`725 S. Figueroa Street, Suite 2800
`Los Angeles, California 90017
`Telephone: 213.488.7100
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`Facsimile: 213.226.4058
`Email: evan.finkel@pillsburylaw.com
`Back-up Counsel
`Charles Gorenstein (Reg. No. 29,271)
`BIRCH STEWART KOLASCH &
`BIRCH, LLP
`8110 Gatehouse Road, Suite 100E
`Falls Church, VA 22040-0747
`Telephone: 703-205-8000
`Facsimile: 703-205-8050
`Email: cg@bskb.com
`Back-up Counsel
`James M. Glass
`Reg. No. 46729
`jimglass@quinnemanuel.com
`Postal and Hand Delivery Address:
`Quinn Emanuel Urquhart & Sullivan
`LLP
`51 Madison Ave, 22nd Fl.
`New York, NY 10010
`T: (212) 849-7000
`F: (212) 849-7100
`Back-up Counsel
`Lionel M. Lavenue
`Reg. No. 46,859
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER,
`LLP
`11955 Freedom Drive
`Reston, VA 20190
`P: 571-207-2750 / F: 202-408-4400
`lionel.lavenue@finnegan.com
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
`
`Facsimile: 213.629.1033
`Email: tim.rawson@pillsburylaw.com
`Back-up Counsel
`Lynde F. Herzbach (Reg. No. 74,886)
`BIRCH STEWART KOLASCH &
`BIRCH, LLP
`8110 Gatehouse Road, Suite 100E
`Falls Church, VA 22040-0747
`Telephone: 703-205-8000
`Facsimile: 703-205-8050
`Email: Lynde.Herzbach@bskb.com
`Back-up Counsel
`Brett Watkins
`Reg. No. 60,458
`brettwatkins@quinnemanuel.com
`Postal and Hand Delivery Address:
`Quinn Emanuel Urquhart & Sullivan,
`LLP
`711 Louisiana Street, Suite 500
`Houston, TX 77002
`T: (713) 221-7030
`F: (713) 221-7100
`Back-up Counsel
`Kai Rajan
`Reg. No. 70,110
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`P: 202-408-4307 / F: 202-408-4400
`kai.rajan@finnegan.com
`
`Petition.
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`D.
`
`SERVICE INFORMATION
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel, above. Service of any documents via
`
`hand-delivery may be made at the postal mailing addresses listed above.
`
`Petitioners also consent to electronic service by e-mail at Blitzsafe-
`
`IPR@dlapiper.com.
`
`III. PAYMENT OF FEES — 37 C.F.R. § 42.103
`
`Petitioners authorize the Patent and Trademark Office to charge Deposit
`
`Account No. 07-1896 for the fees set in 37 C.F.R. § 42.15(a) for this Petition for
`
`Inter Partes Review, and further authorizes payment for any additional fees to be
`
`charged to this Deposit Account.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioners certify that the '342 patent (Ex. 1001) is available for Inter Partes
`
`Review and that no Petitioner is barred or estopped from requesting an Inter Partes
`
`Review challenging the patent claims on the grounds identified in this Petition.
`
`B.
`
`Prior Art Patents and Printed Publications
`
`U.S. Patent Application Publication No. 2006/0181963 ("Clayton") (Ex.
`
`1002) claims the benefit of U.S. Provisional Application Nos. 60/651,959,
`
`60/651,958, 60/651,960, 60/651,961, and 60/651,963, all filed on February 11,
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`2005. Thus, it qualifies as prior art under at least 35 U.S.C. § 102(e). The
`
`provisional applications contain similar material, and U.S. Provisional Application
`
`No. 60/651,963 is attached as Ex. 1003. Throughout this Petition, Clayton is cited
`
`with reference to Ex. 1002 as well as its provisional application (Ex. 1003) to
`
`establish that Clayton as applied herein is entitled to an earliest effective filing date
`
`of February 11, 2005, i.e., the filing date of the provisional applications.
`
`U.S. Patent No. 6,559,773 ("Berry") (Ex. 1004) published on May 6, 2003,
`
`and was filed on December 21, 1999. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b), or in the alternative, 35 U.S.C. § 102(a) or (e).
`
`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe") (Ex.
`
`1005) published on November 20, 2003. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`U.S. Patent No. 6,421,305 ("Gioscia") (Ex. 1006) was filed on November
`
`13, 1998 and published on July 16, 2002. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b) , or in the alternative, 35 U.S.C. § 102(a) or (e).
`
`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests Inter Partes Review of claims 49-57, 62-64, 66, 68, 70,
`
`71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 of the '342 Patent
`
`(Ex. 1001) on the grounds set forth in the tables below and requests that each of the
`
`claims be found unpatentable. An explanation of how claims 49-57, 62-64, 66, 68,
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`70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 are
`
`unpatentable under the statutory grounds identified below, including the
`
`identification of where each element is found in the prior art references and the
`
`relevance of each of the prior art references, is provided in the form of detailed
`
`claim charts. Additional explanation and support for each ground of rejection is
`
`set forth in the Declaration of Dr. Thomas Matheson (Ex. 1016).
`
`Basis for Rejection
`Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004)
`
`Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004) and
`Marlowe (Ex. 1005)
`
`'342 Patent Claim
`Ground
`Ground 1 Claims 49-55, 57,
`62-64, 71, 73-80,
`95, 97, 99-103, 109-
`111, and 120
`Ground 2 Claims 49-57, 62-
`64, 66, 70, 71, 73-
`80, 94, 95, 97, 99-
`103, 106, 109-111,
`113, and 120
`Ground 3 Claims 68 and 115 Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004),
`Marlowe (Ex. 1005) and Gioscia (Ex. 1006)
`
`
`V. SUMMARY OF THE '342 PATENT
`
`A. Brief Description
`
`The '342 patent is directed to a multimedia device integration system that
`
`controls a portable device from a car audio/video system via an "integration
`
`subsystem." See Ex. 1001 at Abstract; Ex. 1016 at ¶46. The '342 patent claims are
`
`directed to certain embodiments where wireless integration is provided between a
`
`car audio/video system and a portable audio/video device via the integration
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`subsystem. See Ex. 1014 ('342 Patent File History) at p. 732, Amendment 1.111
`
`filed on Nov. 30, 2009; Ex. 1016 at ¶¶50-57.
`
`
`The integration subsystem is positioned within the portable device or within
`
`the car audio/video system to integrate the two devices, as shown in FIGS. 18 and
`
`19 reproduced below. See id.; see also Ex. 1001 at FIGS. 18 and 19 and 33:43-
`
`35:32. Ex. 1016 at ¶¶46-49.
`
`B.
`
`Summary of the Prosecution History of the '342 patent
`
`The application that issued as the '342 patent was filed on June 27, 2006
`
`with 91 claims. Ex. 1014 at pp. 85-104.
`
`In response to the first Non-Final Office Action issued on May 28, 2009, the
`
`Applicant filed an Amendment on November 30, 2009 canceling original claims 1-
`
`91 and adding new claims 92-212. Id. at pp. 702-737. In the remarks, the
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`Applicant noted that "new claims 92-212 are directed to a multimedia device
`
`integration system which allows for wireless integration of a portable device with a
`
`car audio/video system." See id. at p. 732, Amendment 1.111, filed on Nov. 30,
`
`2009.
`
`With this Amendment, the Applicant argued that the primary reference cited,
`
`Coon (U.S. Patent No. 6,539,358), disclosed a voice-interactive docking station for
`
`a portable computer device, and failed to disclose an integration subsystem that
`
`obtains information about an audio/visual file. See id. at p. 734.
`
`In a later Office Action issued on February 15, 2011, the Examiner rejected
`
`all the claims primarily in view of Tranchina (US 7,493,645). See id. at pp. 882-
`
`909, Office Action, issued Feb. 15, 2011. In a 1.111 Amendment filed on Aug. 15,
`
`2011, the Applicant argued that Tranchina lacks a system which instructs a
`
`portable device to play an audio file in response to a user selecting the audio file
`
`from controls of the car audio/visual system. See id. at p. 937, Amendment 1.111,
`
`filed on Aug. 15, 2011. Further, in a 1.116 Amendment filed on January 29, 2012
`
`in response to a Final Office Action in which Tranchina was still applied, the
`
`Applicant distinguished over Tranchina by arguing that the claimed integration
`
`subsystem is wirelessly connected to a car audio/video system. The Applicant
`
`submitted this argument despite the fact that most of the claims do not recite or
`
`require such a wireless communication between the integration subsystem and a
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`car audio/video system. See id. at pp. 1039-1042, Amendment 1.116, filed on Jan.
`
`29, 2012; Ex. 1016 at ¶¶61-62.
`
`On February 16, 2012, the Examiner issued a Notice of Allowance, without
`
`an indication of a reason for allowance. See id. at pp. 1079-1083, Notice of
`
`Allowance, issued Feb. 16, 2012.
`
`VI. CLAIM CONSTRUCTION
`
`Petitioners’ grounds for invalidity are substantively identical to those
`
`included in the Toyota Petition (IPR2016-00418), with the sole exception that
`
`Petitioners adopt the following constructions of the Board—as well as the
`
`reasoning behind such constructions—in the following IPRs:
`
`Construction
`Term
`Integration subsystem A 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 signals, audio, and/or
`video information, (3) allowing a
`user to control the one or more
`portable devices via the car
`audio/video system, and (4)
`displaying data from the one or
`more portable devices on the car
`audio/video system.
`No construction (but noting that
`"the integration system must
`perform the 'integration' function
`defined in the Specification of the
`’342 patent.")
`a car audio system, a car
`
`Multimedia device
`integration system
`
`Car audio/video
`
`IPR No.
`2016-00118 (Unified
`Patents Petition,
`Paper 19 at 10-11);
`2016-00418 (Toyota
`Petition, Paper 13 at
`15); 2016-00419
`(Toyota Petition,
`Paper 13 at 15-16);
`2016-01473 (Honda
`Petition, Paper 9 at
`12); 2016-01476
`(Hyundai/Kia, Paper
`12 at 10)
`2016-00118 (Unified
`Patents Inc., Paper
`19 at 12)
`
`2016-00418 (Toyota,
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`11
`
`

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`Term
`
`system
`
`Construction
`video system, or a car audio and
`video system.
`
`a signal indicating that a portable
`device is connected to the car
`audio/video system through the
`integration subsystem.
`Plain and ordinary meaning
`
`Device presence
`signal1
`
`Generated . . . for
`playing on the car
`audio/video system
`
`
`IPR No.
`Paper 13 at 16);
`2016-00419 (Toyota
`Petition, Paper 13 at
`16);
`2016-00418 (Toyota,
`Paper 13 at 17)
`
`2016-01476
`(Hyundai/Kia, Paper
`12 at 11-12)
`
`VII. EFFECTIVE FILING DATE OF '342 PATENT
`
`The '342 patent (Ex. 1001) was filed on June 27, 2006. The application that
`
`issued as the '342 patent, U.S. App. No. 11/475,847 (Ex. 1008, "the '847
`
`application"), was a continuation-in-part (CIP) of Ser. No. 11/071,667 (Ex. 1009,
`
`"the '667 application"), filed March 3, 2005 (abandoned); which was a CIP of Ser.
`
`No. 10/732,909 (Ex. 1010, "the '909 application") filed December 10, 2003
`
`(abandoned); which was a CIP of Ser. No. 10/316,961 (Ex. 1011, "the '961
`
`application") filed December 11, 2002, now U.S. Pat. No. 7,489,786. See Ex.
`
`1001. Ex. 1012 is a copy of the '342 patent highlighted to show the new matter
`
`added at each successive application in the priority chain of the '342 patent. In Ex.
`
`1012, portions highlighted in pink were added in the '909 application, portions
`
`1 The Board, in 2016-00419 (Toyota, Paper 13 at 17), declined to construe this
`term on the basis that institution would be denied regardless of construction.
`Thus, that decision does not affect Petitioners' conclusion that "device presence
`signal" should be construed as indicated.
`EAST\146511821
`12
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`highlighted in blue were added in the '667 application, and portions highlighted in
`
`yellow were added in the '847 application. Ex. 1016 at ¶34.
`
`All of the addressed '342 patent claims are entitled to an earliest effective
`
`filing date of June 27, 2006. Blitzsafe did not dispute this position2 in Plaintiff's
`
`Disclosure of Asserted Claims and Infringement Contentions (Ex. 1013), served in
`
`Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277 (E.D. TX), in
`
`which Blitzsafe stated, "Each of the asserted claims of the '342 patent is entitled to
`
`the priority date of U.S. Patent Application No. 11/475,847, filed June 27, 2006,
`
`under P.R. 3-1(e)." Ex. 1013 at p. 7.
`
`The '342 patent claims are not entitled to a filing date earlier than June 27,
`
`2006 because all of the addressed claims require "an integration 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 corresponding structure
`
`(FIG. 24) that was not disclosed until the '847 application. See Ex. 1012. In fact,
`
`the term "integration subsystem" was first introduced in the '847 application, and
`
`its clearly-linked corresponding structure is disclosed with respect to FIG. 24, also
`
`first introduced in the '847 application. Id.; see also Ex. 1016 at ¶¶80-84. Thus,
`
`the '342 patent claims should all be afforded an effective filing date no earlier than
`
`June 27, 2006.
`
`2 Blitzsafe did not dispute the priority date as of the filing date of the petition in
`IPR2016-00418.
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`13
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`To the extent that "integration subsystem" is not deemed a means-plus-
`
`function claim element, the earliest effective filing date should still be no sooner
`
`than June 27, 2006 for the reasons set forth herein below. In particular, the '342
`
`patent claims recite first and second wireless interfaces and an integration
`
`subsystem using a wireless link (i.e., wireless functionality), and this wireless
`
`functionality via an integration subsystem is not supported until the '847
`
`application, filed June 27, 2006. See Ex. 1012.
`
`Support from the '961 Application
`
`The earliest-filed application of which the '342 patent claims the benefit, the
`
`'961 application, provides no support for a wireless link, let alone any wireless
`
`functionality. See id. Thus, none of the '342 patent claims is entitled to the 2002
`
`filing date of the '961 application. Ex. 1016 at ¶36.
`
`Support from the '909 Application
`
`The next application in the priority chain, the '909 application filed on
`
`December 10, 2003, did not include support for wireless communication with the
`
`portable device, or a separate integration subsystem as claimed. Id. at ¶¶37-38.
`
`No support for "integration subsystem" in '909 Application
`
`The '909 application does not provide support for "an integration
`
`subsystem." In fact, an integration subsystem is not disclosed and supported until
`
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`
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`14
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`

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`the '847 application (filed on June 27, 2006) from which the '342 patent issued.
`
`See Ex. 1012.
`
`Furthermore, as set forth in the Claim Construction section VI above, "an
`
`integration subsystem" 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. 24. Meanwhile, the '909 application only discloses
`
`wireless communication with respect to an integration system that is external to
`
`both the car audio/video system and the portable device. See id.at 27:30-45 and
`
`FIGS. 8A and 8B. Thus, the '909 application plainly fails to support the claimed
`
`integration subsystem, which is within either of these two devices. Ex. 1016 at ¶38.
`
`No support for wireless communication with portable device in '909
`
`Application
`
`The '909 application included just a few sentences on wireless
`
`communication, and those few sentences only dealt with wireless communication
`
`between the integration system and the car stereo. The '909 application had no
`
`support for a wireless link between the integration system and the portable device."
`
`"Alternatively, the integration system could wirelessly communicate with the car
`
`stereo. A transmitter could be used at the integration system to communicate with
`
`a receiver at the car stereo. Where automobiles include Bluetooth systems, such
`
`systems can be used to communicate with the integration system." See Ex. 1012 at
`
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`
`
`15
`
`

`

`27:39-45 (emphasis added). The only disclosure of a communications link
`
`between the integration system and the portable device in the '909 application is
`
`that of a wired link. See e.g., id. at 27:30-34.
`
`This sparse disclosure does not provide support for a wireless link between
`
`the integration system and the portable device as required by at least claims 49 and
`
`73 ("...establishing a wireless communication link with a second wireless interface
`
`in communication with a portable device") and their dependent claims. If
`
`anything, the '909 application only provides support for: (1) a wireless connection
`
`between the car stereo and a standalone integration system; and (2) a wired link
`
`between a portable device and the standalone integration system. Thus, an
`
`integration subsystem that obtains information about an audio file from a portable
`
`device using a wireless link and that receives audio from a portable device using a
`
`wireless link, as recited in claims 49 and 73, is plainly unsupported by the '909
`
`application that discloses only wired connections between an interface and a
`
`portable device. See id.at 27:39-45 and FIGS. 8A and 8B; Ex. 1016 at ¶37.
`
`As set forth above, the '909 application fails to disclose: (1) an integration
`
`subsystem (claims 49, 73, 97, and 120); (2) an integration subsystem that obtains
`
`audio and information wirelessly from a portable device (claims 49 and 73); and
`
`(3) an integration subsystem that can be positioned within the portable device
`
`(claims 97 and 120) or within the car audio/video stereo system (claims 49, 73,
`
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`97, and 120). Therefore, the '342 patent is not entitled to a priority date of
`
`December 10, 2003.
`
`Support from the '667 Application
`
`The next application in the priority chain, the '667 application filed March 3,
`
`2005, adds generally, "Further, in all embodiments of the present invention,
`
`communication between the after-market device and a car stereo or video system
`
`can be accomplished using known wireless technologies, such as Bluetooth." See
`
`Ex. 1012 at 28:3-6. However, this still does not provide support for the addressed
`
`'342 patent claims because the addressed claims require an integration subsystem
`
`using said wireless communication link. There is no mention of an "integration
`
`subsystem" in the '667 application, and the term "integration subsystem" is only
`
`first disclosed in the '847 application (filed on June 27, 2006) from which the '342
`
`patent issued. See id. at 5:13-15; Ex. 1016 at ¶39.
`
`Unlike an "integration system," which encompasses the entirety of the multi-
`
`media device described in the earlier applications, an "integration subsystem" is a
`
`component within one of the two devices to be integrated with each other. For
`
`example, the specification describes the "integration subsystem" being positioned
`
`within the portable device or within the car system. See id. at 34:9-13 and 35:23-
`
`28. The distinction between the "integration system" and "integration subsystem"
`
`is further evidenced by the claim language, which explicitly recites a "multimedia
`
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`
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`17
`
`

`

`device integration system, comprising... an integration subsystem." Ex. 1001 at
`
`claims 1, 25, 49, 73, 97, and 120 (emphasis added).
`
`Support from the '847 Application
`
`Thus, the term "integration subsystem," and similarly, disclosure of an
`
`"integration subsystem" within the car stereo system or portable device to
`
`wirelessly integrate the car stereo system and portable device, is at best only
`
`provided in the '847 application (filed on June 27, 2006) from which the '342
`
`patent issued. See Ex. 1008; see also Ex. 1012; Ex. 1016 at ¶40.
`
`Accordingly, claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103,
`
`106, 109-111, 113, 115, and 120 of the '342 patent are not entitled to a priority date
`
`earlier than June 27, 2006.
`
`There are additional reasons why many of the claims are not entitled to the
`
`earliest filing date in the priority chain of the '342 patent. For example, support for
`
`an audio file being received by a portable device is not provided until the '667
`
`application, filed March 3, 2005. See Ex. 1009; see also Ex. 1012 at 28:57-61; see
`
`also Ex. 1016 at ¶41. Accordingly, claims 73-80, 94, 95, and 101 that include this
`
`feature are certainly not entitled to a filing date earlier than March 3, 2005.
`
`Similarly, support for a portable device as a cellular telephone is also not
`
`provided until the '667 application. See Ex. 1009; see also Ex. 1012 at 28:43-67;
`
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`18
`
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`see also Ex. 1016 at ¶41. Thus, claims 64 and 111 directed to a cellular telephone
`
`are certainly not entitled to a filing date earlier than March 3, 2005.
`
`Support for an integration subsystem with voice recognition functionality
`
`and support for a video file comprising a picture (to the extent that it is deemed
`
`that a video does not correspond to a picture) is not provided until the '847
`
`application, filed June 27, 2006. See Ex. 1008; see also Ex. 1012 at 36:19-27 and
`
`38:49-56; see also Ex. 1016 at ¶42. Accordi