Declaration of James T. Geier
`United States Patent No. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`BMW OF NORTH AMERICA, LLC,
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`Petitioner
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`v.
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`BLITZSAFE TEXAS, LLC
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`Patent Owner
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`U.S. Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
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`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
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`____________
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`Case No. IPR2018-00926
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`____________
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`DECLARATION OF JAMES T. GEIER IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
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`Page 1 of 96
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`BMW EXHIBIT 1015
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`United States Patent No. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`BMW OF NORTH AMERICA, LLC,
`
`Petitioner
`
`v.
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`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`U.S. Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
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`____________
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`Case No. IPR2018-00926
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`____________
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`DECLARATION OF JAMES T. GEIER IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
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`Page 1 of 96
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`BMW EXHIBIT 1015
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`Declaration of James T. Geier
`United States Patent No. 8,155,342
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`I, James T. Geier, hereby declare and state as follows:
`
`I.
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`INTRODUCTION
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`A. Qualifications
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`1.
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`I have been asked to prepare a declaration on behalf of BMW of North
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`America, LLC (“BMWNA” or “Petitioner”) in connection with a petition for inter
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`partes review of U.S. Patent 8,155,342 (EX1001). Specifically, I have been retained
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`as an independent expert consultant by Unified to provide my opinions on the
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`technology claimed in, and the patentability or unpatentability of, claims 49-64, 66,
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`68-88, 94-97, 99-111, 113, 115, 116, 119 and 120 of U.S. Patent 8,155,342 (“the
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`challenged claims”).
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`2.
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`Although I am being compensated for the time I spend on this matter, no part
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`of my compensation depends on the outcome of this proceeding, and I have no other
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`interest in this proceeding.
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`3.
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`I have 30 years of experience in the communications industry designing,
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`analyzing and implementing communications systems, wireless networks, and
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`mobile devices.
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`4.
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`I received a Bachelor’s Degree in Electrical Engineering from California State
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`University in 1985. I received a Master’s Degree in Electrical Engineering from the
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`Air Force Institute of Technology in 1990. I also received an M.B.A. from the
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`University of Phoenix in 2001.
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`Declaration of James T. Geier
`United States Patent No. 8,155,342
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`From 1986 to 1989, while in the Air Force and assigned to the 1815th
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`
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`5.
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`Operational Test and Evaluation Squadron, I tested and evaluated wired and wireless
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`communications systems supporting the transport of military data, voice and video
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`information worldwide. For example, this included running tests to validate
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`performance and compatibility of different communications devices, such as secure
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`telephones. During this time, I was also an instructor at the 1815th System
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`Evaluation School, where I developed and taught courses on communications
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`technologies and test methods.
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`6.
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`From 1990 to 1992, while in the Air Force and assigned to the Information
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`Systems Center, I designed and implemented computer networks for Wright-
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`Patterson Air Force Base. This involved testing some of the first-available routers,
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`switches and controllers in a laboratory environment and then later designing and
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`overseeing the installation of corresponding networks throughout Wright-Patterson
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`Air Force Base for supporting thousands of users.
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`7.
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`From 1992 to 1994, while employed at Adroit Systems, Inc., I analyzed and
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`evaluated communications technologies for use in Airborne communications
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`platforms, such as aircraft and satellites, to support secure transport of data, voice
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`and video information.
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`8.
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`From 1994 to 1996, while employed at TASC, Inc., I designed and
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`implemented communication networks for civilian and military applications. For
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`example, I analyzed and designed for the U.S. Department of Defense an audio /
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`Declaration of James T. Geier
`United States Patent No. 8,155,342
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`video conferencing system for use by soldiers in battlefields. I also designed a highly
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`secure communications network supporting data, voice and video applications for a
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`U.S. Navy attack submarine.
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`9.
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`From 1996 to 2000, while employed at Monarch Marking Systems, I designed
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`and developed wireless printers and corresponding networks for customers. This
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`included designing wireless bar code scanners having voice command recognition
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`capabilities. In addition, I designed and implemented wireless middleware that
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`provided an interoperable interface between incompatibility bar code scanners and
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`servers.
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`10. Since 2000, I have been an independent consultant working under the business
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`name Wireless-Nets, Ltd., where I have been analyzing and designing wireless
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`devices, communications systems and applications. As examples, I have designed
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`and tested voice-over-Wi-Fi user devices and networks, designed and implemented
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`drivers for Bluetooth transceivers, and implemented microcontroller- based audio
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`encoding for operation over ZigBee wireless networks.
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`11. A copy of my curriculum vitae is attached.
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`B. Materials Reviewed
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`12.
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`In forming my opinions expressed in this declaration, I have considered,
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`among other things:
`
`Exhibit
`1001
`1002
`
`Description
`U.S. Patent No. 8,155,342 (“the ’342 patent”)
`U.S. Patent No. 7,870,142 (“Michmerhuizen”)
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`United States Patent No. 8,155,342
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`1003
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`1004
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`1005
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`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
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`1014
`1015
`1016
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`1017
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`1018
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`U.S. Provisional Application No. 60/789,176 (“Michmerhuizen
`Provisional”)
`ID3v2 Made Easy (available at www.id3.org/easy.html, print date
`May 12, 2003) and 1999 ID3v2 – Informal Standard (available at
`www.id3.org/id3v2.3.0.html, print date May 12, 2003) (collectively
`“ID3v2”)
`U.S. Patent Application Publication No. 2003/0215102
`(“Marlowe”)
`U.S. Patent No. 7,188,186 (“Meyer”)
`Excerpt from file history of U.S. Patent No. 7,188,186
`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”)
`Copy of ’342 Patent (With New Matter Highlighted)
`Portions of Plaintiff's Infringement Contentions Exhibit B, served
`September 2017 in Blitzsafe Texas, LLC v. Bayerische Motoren
`Werke AG et al., 2:17-cv-00418 (E.D. Tex.)
`File History of the ’342 Patent
`Declaration of James T. Geier
`The audio/mpeg Media Type, Network Working Group, available
`at https://tools.ietf.org/html/rfc3003, November 2000 (“IETF”).
`Advanced Audio Distribution Profile Specification, Adopted
`version 1.0., Bluetooth Audio Video Working Group, available at
`https://5series.net/forums/attachments/bluetooth-cell-phone-forum-
`26/16361d1141774343-samsung-phone-sends-music-5-series-out-
`a2dp_spec_v10.pdf, May 22, 2005.
`Hillyard, Jason, Creating audio applications with Bluetooth, EE
`Times, available at
`https://www.eetimes.com/document.asp?doc_id=1277103, April
`18, 2003.
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`
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`
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`In forming my opinions, I have also relied on my education and experience.
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`C. Relevant Legal Standards
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`13.
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`I have been asked to consider the ’342 patent and what I have been advised is
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`prior art to the ’342 patent, and to offer my opinions on the effect of that art on the
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`Declaration of James T. Geier
`United States Patent No. 8,155,342
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`claims of the ’342 patent. In particular, I have been asked to consider whether claims
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`9-64, 66, 68-88, 94-97, 99-111, 113, 115, 116, 119 and 120 lack novelty or would
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`have been obvious to a person of ordinary skill in the art as of the effective filing
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`date of the ’342 patent (June 27, 2006). In my opinion, these claims are anticipated
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`and/or would have been obvious as of that date. In particular, the claims are either
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`anticipated by Michmerhuizen, or would have been obvious based on the
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`combinations of Michmerhuizen, Marlowe, and ID3v2 set forth below, which I have
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`been advised constitute prior art as of June 27, 2006.
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`14. Petitioner’s Counsel advises me that the following legal principles apply to
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`analysis of patentability based on 35 U.S.C. §§ 102 and 103:
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`a)
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`In an inter partes review proceeding, a patent claim may be deemed
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`unpatentable if it is shown by a preponderance of the evidence that the
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`claim was anticipated by a prior art patent or publication under § 102
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`and/or rendered obvious by one or more prior art patents or
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`publications under § 103.
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`b)
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`For a claim to be anticipated under 35 U.S.C. § 102, every limitation
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`of the claimed invention must be found in a single prior art reference,
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`as arranged in the claim.
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`c)
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`Under 35 U.S.C. § 103(a), “[a] patent may not be obtained though the
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`invention is not identically disclosed or described as set forth in
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`section 102, if the differences between the subject matter sought to be
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`United States Patent No. 8,155,342
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`patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter
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`pertains.”
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`d) When considering the issues of obviousness, I am to do the following:
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`i.
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`determine the scope and content of the prior art;
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`ii.
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`ascertain the differences between the prior art and the claims at
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`issue;
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`iii.
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`resolve the level of ordinary skill in the pertinent art; and
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`iv.
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`consider evidence of secondary indicia of nonobviousness (if
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`available).
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`e)
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`The relevant time for considering whether a claim would have been
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`obvious to a person of ordinary skill in the art is the time of alleged
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`invention.
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`f)
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`I am to assume a priority date for the challenged claims of no earlier
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`than June 27, 2006.
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`g)
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`A reference may be modified or combined with other references or
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`with the person of ordinary skill’s own knowledge if the person would
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`have found the modification or combination obvious.
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`h)
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`A person of ordinary skill in the art is presumed to know all the
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`relevant prior art, and the obviousness analysis may take into account
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`United States Patent No. 8,155,342
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`the inferences and creative steps that a person of ordinary skill in the
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`art would employ.
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`i)
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`In determining whether a prior-art reference could have been
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`combined with another prior-art reference or other information known
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`to a person having ordinary skill in the art, the following principles
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`may be considered:
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`i. A combination of familiar elements according to known methods is
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`likely to be obvious if it yields predictable results;
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`ii. The substitution of one known element for another is likely to be
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`obvious if it yields predictable results;
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`iii. The use of a known technique to improve similar items or methods
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`in the same way is likely to be obvious if it yields predictable
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`results;
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`iv. The application of a known technique to a prior art reference that is
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`ready for improvement is likely obvious if it yields predictable
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`results;
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`v. Any need or problem known in the field and addressed by the
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`reference can provide a reason for combining the elements in the
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`manner claimed;
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`vi. A person of ordinary skill often will be able to fit the teachings of
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`multiple references together like a puzzle; and
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`United States Patent No. 8,155,342
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`vii. The proper analysis of obviousness requires a determination of
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`whether a person of ordinary skill in the art would have a
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`“reasonable expectation of success,” not “absolute predictability” of
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`success, in achieving the claimed invention by combining prior art
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`references.
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`j) Whether a prior art reference renders a patent claim unpatentable as
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`obvious is determined from the perspective of a person of ordinary
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`skill in the art.
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`k) While there is no requirement that the prior art contain an express
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`suggestion to combine known elements to achieve the claimed
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`invention, a suggestion to combine known elements to achieve the
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`claimed invention may come from the prior art as a whole or
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`individually, as filtered through the knowledge of one skilled in the
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`art.
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`l)
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`The inferences and creative steps a person of ordinary skill in the art
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`would employ are also relevant to the determination of obviousness.
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`m) When a work is available in one field, design alternatives and other
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`market forces can prompt variations of it, either in the same field or in
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`another.
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`United States Patent No. 8,155,342
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`n)
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`If a person of ordinary skill in the art can implement a predictable
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`variation and would see the benefit of doing so, that variation is likely
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`to be obvious.
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`o)
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`In many fields, there may be little discussion of obvious
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`combinations, and in these fields market demand, not scientific
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`literature, may drive design trends.
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`p) When there is a design need or market pressure and there are a finite
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`number of predictable solutions, a person of ordinary skill in the art
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`has good reason to pursue those known options.
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`q)
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`There is no rigid rule that a reference or combination of references
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`must contain a “teaching, suggestion, or motivation” to combine
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`references, But the “teaching, suggestion, or motivation” test can be a
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`useful guide in establishing a rationale for combining elements of the
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`prior art. This test poses the question as to whether there is an express
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`or implied teaching, suggestion, or motivation to combine prior art
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`elements in a way that realizes the claimed invention, and that it seeks
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`to counter impermissible hindsight analysis.
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`15. A reference is a printed publication if it is “publicly accessible,” which
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`requires a showing that the document has been disseminated or otherwise made
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`available to the extent that interested persons having ordinary skill in the relevant
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`subject matter or art can locate the document by exercising reasonable diligence.
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`United States Patent No. 8,155,342
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`II. U.S. PATENT 8,155,342
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`A. Overview
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`16. The ’342 patent discloses a multimedia device integration system that controls
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`a portable device from a car audio/video system via an “integration subsystem” (see
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`EX1001, Abstract), and wireless integration between the car audio/video system and
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`a portable audio/video device via the integration subsystem. See EX1014 (’342
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`Patent File History), p. 600-601). That integration is achieved by positioning the
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`integration subsystem either within the portable device or within the car audio/video
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`system to integrate the two devices, as shown in FIGS. 18 and 19. See id.; see also
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`Ex. 1001, FIGS. 18 and 19 and 33:43-35:32.
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`17. The ’342 patent contains six independent claims (1, 25, 49, 73, 97, and 120),
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`four of which are challenged herein (49, 73, 97, and 120). Non-challenged
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`independent claims 1 and 25 recite an “integration subsystem” connected to the
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`portable device, and in wireless communication with a car audio/video system.
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`Challenged independent claims 49, 73, 97, and 120 recite the “integration
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`subsystem” being connected to the car audio/video system, and in wireless
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`communication with the portable device. Figs. 18 and 19 of the ’342 patent file
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`history, annotated below, illustrate the different configurations:
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`Declaration of James T. Geier
`United States Patent No. 8,155,342
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`EX1014, 824 (FIG. 18, Annotated)
`Corresponding to unchallenged
`Claims 1 and 25
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`18.
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`EX1014, 825 (FIG. 19, Annotated)
`Corresponding to unchallenged
`Claims 49, 73, 97, 120
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`
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`In the embodiment corresponding to the challenged independent claims, the
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`integration subsystem (1032) in the a car audio/video system (1010) is in
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`communication with a first wireless interfaces (1016), which establishes a wireless
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`link (1022) with a second wireless interface (1026) in the portable device (1024) for
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`exchanging communications (e.g., commands, audio, etc.). EX1001, 34:19-35:32.
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`The language of each of the challenged independent claims is recited below:
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`49. A multimedia device integration system, comprising:
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`an integration subsystem in communication with a car audio/video
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`system; and
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`United States Patent No. 8,155,342
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`a first wireless interface in communication with said integration
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`subsystem, said first wireless interface establishing a wireless
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`communication link with a second wireless interface in
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`communication with a portable device external to the car
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`audio/video system,
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`wherein said integration subsystem obtains, using said wireless
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`communication link, information about an audio file stored on
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`the portable device, transmits the information to the car
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`audio/video system for subsequent display of the information
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`on a display of the car audio/video system, instructs the
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`portable device to play the audio file in response to a user
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`selecting the audio file using controls of the car audio/video
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`system, and receives audio generated by the portable device
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`over said wireless communication link for playing on the car
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`audio/video system.
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`
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`73. A multimedia device integration system, comprising:
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`an integration subsystem in communication with a car audio/video
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`system; and
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`a first wireless interface in communication with said integration
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`subsystem, said first wireless interface establishing a wireless
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`communication link with a second wireless interface in
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`communication with a portable device external to the car
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`audio/video system,
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`wherein said integration subsystem obtains, using said wireless
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`communication link, information about an audio file received by
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`the portable device, transmits the information to the car
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`audio/video system for subsequent display of the information on a
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`13
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`United States Patent No. 8,155,342
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`display of the car audio/video system, instructs the portable device
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`to play the audio file in response to a user selecting the audio file
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`using controls of the car audio/video system, and receives audio
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`generated by the portable device over said wireless
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`communication link for playing on the car audio/video system.
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`97. A multimedia device integration system, comprising:
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`first and second wireless interfaces establishing a wireless
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`communication link between a car audio/video system and a
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`portable device external to the car audio/video system; and
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`an integration subsystem in communication with said wireless
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`communication link,
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`wherein said integration subsystem channels audio generated by the
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`portable device to the car audio/video system using the wireless
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`communication link for subsequent playing of the audio on the car
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`audio/video system, the audio corresponding to an audio file
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`played by the portable device, and
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`wherein said integration subsystem receives a control command
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`issued by a user through one or more controls of the car
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`audio/video system in a format incompatible with the portable
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`device, processes the control command into a formatted command
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`compatible with the portable device, and dispatches the formatted
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`command to the portable device for execution thereby.
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`120. A multimedia device integration system, comprising:
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`first and second wireless interfaces establishing a wireless
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`communication link between a car audio/video system and a
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`portable device external to the car audio/video system; and
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`United States Patent No. 8,155,342
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`an integration subsystem in communication with said wireless
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`communication link,
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`wherein said integration subsystem instructs the portable device to
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`play an audio file in response to a user selecting the audio file
`
`using controls of the car audio/video system,
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`wherein said integration subsystem channels audio generated by the
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`portable device to the car audio/video system using the wireless
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`communication link for subsequent playing of the audio on the car
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`audio/video system, the audio corresponding to the audio file
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`played by the portable device, and
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`wherein said integration subsystem receives data generated by the
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`portable device in a format incompatible with the car audio/video
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`system, processes the data into formatted data compatible with the
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`car audio/video system, and transmits the processed data to the car
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`audio/video system for subsequent display of the processed data
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`on a display of the car audio/video system.
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`15
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`United States Patent No. 8,155,342
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`B.
`
`The ’342 Patent Claims Are Not Supported by The Parent
`
`Applications
`
`19.
`
`I have been asked to consider whether the claims of the ’342 patent are fully
`
`supported by the parent applications, and
`
`based on my review, they are not.
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`Petitioner’s counsel has advised me that
`
`because the ’342 patent claims are not
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`fully
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`supported
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`by
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`the
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`parent
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`applications, the ’342 patent has an
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`“effective filing date” of June 27, 2006. I
`
`understand
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`that
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`the
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`’342 patent
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`(EX1001), was filed on June 27, 2006; as
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`a
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`continuation-in-part
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`(CIP)
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`of
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`Application Ser. No.
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`11/071,667
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`(EX1009, “the ’667 application”), filed March 3, 2005; which was a CIP of Ser. No.
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`10/732,909 (EX1010, “the ’909 application”) filed December 10, 2003; which was
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`a CIP of Application Ser. No. 10/316,961 (EX1011, “the ’961 application”) filed
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`December 11, 2002. See Ex. 1001. EX1012 highlights the new matter added at each
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`successive application in the priority chain of the ’342 patent. I understand that table
`
`below identifies the highlighted portions in EX1012:
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`Color Application Adding
`Highlighted Portions
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`Pink
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`’909 application
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`Blue
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`’667 application
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`Yellow
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`’847 application
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`Declaration of James T. Geier
`United States Patent No. 8,155,342
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`Portions Having Highlighted New Matter
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`Col.:Ln.: 3:3, 7:17-22, 27:10-28:3.
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`Figures: 8A, 8B, 9.
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`Abstract: Lines 1-23.
`
`Col.:Ln.: 1:15-2:39, 2:45-64, 3:9,10,22, 3:44-
`5:6, 6: 3,14,18,22, 7:19, 7:23-64, 8:38-9:65,
`14:65, 15:67, 16:49-50, 16:62-17:1, 17:34-
`54, 18:26-38, 19:12-26, 20:7-18, 20:54-66,
`21:36-48, 23:53-24:41, 25:11, 26:24-30,
`26:66, 27:6-9,12,26,29-30,38,40-41,42-
`43,60-61,66-67, 28:3-33:42.
`
`Figures: 10, 11A, 11B, 12A, 12B, 13A, 13B,
`14-17.
`
`Abstract: Last 5 lines.
`
`Col.:Ln.: 1:6-13, 3:29-43, 5:7-62, 7:65-8:34,
`21:1, 26:55-57, 29:17, 33:43-38:67.
`
`Figures: 18-24.
`
`
`
`20. Based on my review, in my opinion the ’342 patent claims are not supported
`
`by any of the parent applications filed before June 27, 2006. Every claim requires
`
`first and second wireless interfaces and an integration subsystem using a wireless
`
`link (i.e., wireless functionality), which was not supported until the ’847 application,
`
`filed June 27, 2006. See EX1012, 5:7-62, 7:65-8:34, 21:1, 26:55-57, 29:17, 33:43-
`
`38:67, FIGS. 18-24. As explained below, in my opinion none of the priority
`
`documents support these claim elements:
`
`
`
`17
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`Page 17 of 96
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`
`
`
`
`1.
`
`The ’961 Application
`
`Declaration of James T. Geier
`United States Patent No. 8,155,342
`
`21. The '961 application provides no support for a wireless link, let alone any
`
`wireless functionality. Thus, in my opinion the ’342 patent claims are not supported
`
`by the ’961 application. Petitioner’s counsel has advised me that the ’342 patent is
`
`therefore not entitled to the filing date of the '961 application.
`
`2.
`
`The ’909 Application
`
`22. The ’909 application, a CIP of the ’961 application, lacks support for wireless
`
`communication with 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.
`
`23. The ’909 application added only three sentences disclosing wireless
`
`communication but only between the integration system and the car stereo:
`
`“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 EX1012 at
`
`27:39-45 (emphasis added). The ’909 application also discloses a communications
`
`link between the integration system and the portable device but only a wired link.
`
`See e.g., id. at 27:30-34. Accordingly, the ’909 application lacks 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,
`
`
`
`18
`
`Page 18 of 96
`
`
`
`
`
`
`Declaration of James T. Geier
`United States Patent No. 8,155,342
`
`as recited in claims 49 and 73, because the ’909 application discloses only wired
`
`connections between an interface and a portable device. See id.at 27:39-45 and
`
`FIGS. 8A and 8B. Therefore, in my opinion the '342 patent claims are not supported
`
`by the ’909 application. Petitioner’s counsel has advised me that the ’342 patent is
`
`therefore not entitled to the ’909 application filing date.
`
`3.
`
`The ’667 Application
`
`24. The ’667 application, filed March 3, 2005 as a CIP of the ’909 application,
`
`adds a general reference to using Bluetooth to send commands to an after-market
`
`device:
`
`The integration system of the present invention provides for control
`
`of a portable audio or video device, or other device, through the
`
`controls of the car stereo or video system system (sic.). As such,
`
`controls on the steering wheel, where present, may also be used to
`
`control the portable audio device or other device. 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.
`
`
`EX1009 at 55:15-20 (emphasis added). This still lacks support for the challenged
`
`claims because the challenged claims also require the wireless transmission of data
`
`from the portable device to the integration subsystem. The ’667 application provides
`
`little, if any details about how wireless technologies such as Bluetooth are used to
`
`control a portable device, let alone receive data and audio/video from the portable
`
`
`
`19
`
`Page 19 of 96
`
`
`
`
`
`
`Declaration of James T. Geier
`United States Patent No. 8,155,342
`
`device. I understand that the Patent Owner similarly argued that a prior art reference
`
`Tranchina was deficient during prosecution, for failing to provide details about
`
`Tranchina’s wireless functionality. See below at Section II.C. The first disclosure
`
`of these features appears in the application for the ’342 patent issued, filed on June
`
`27, 2006. Therefore, in my opinion the ’342 patent claims are not supported by the
`
`’961 application. Petitioner’s counsel has advised me that the ’342 patent is
`
`therefore not not entitled to the filing date of the ’667 application.
`
`4.
`
`The ’847 Application
`
`25. Based on my review, I understand that the ’847 application was filed on June
`
`27, 2006 and issued as the ’342 patent. The ’847 application includes the first
`
`disclosures of the “integration subsystem,” and wireless integration of a car stereo
`
`system and portable device, including the wireless receipt of audio/video and data
`
`about files stored on the portable device, as required by the ’342 patent claims. See
`
`EX1001 at cls. 1, 25, 49, 73, 97, 120.
`
`26. Accordingly, in my opinion the challenged claims are not supported by any
`
`priority application filed before June 27, 2006. Petitioner’s counsel has advised me
`
`that the ’342 patent is therefore not entitled to a priority date earlier than June 27,
`
`2006.
`
`C.
`
`Prosecution History of “integration subsystem”
`
`27. Based on my review of the prosecution history, I understand that in response
`
`to the first Non-Final Office Action issued on May 28, 2009, the Applicant for the
`
`
`
`20
`
`Page 20 of 96
`
`
`
`
`
`
`Declaration of James T. Geier
`United States Patent No. 8,155,342
`
`’342 patent filed an Amendment on November 30, 2009 canceling original claims
`
`1-91 and adding new claims 92-212. EX1014, 570-605. With this Amendment, the
`
`Applicant argued that the primary reference cited, Coon (U.S. Patent No. 6,539,358),
`
`failed to disclose an integration subsystem that obtains information about an
`
`audio/visual file. See id. at p. 603.
`
`28.
`
`In a later Office Action issued on February 15, 2011, I understand that the
`
`Examiner rejected all the claims based on Tranchina (US 7,493,645). EX1014, 398-
`
`425. In an Amendment filed on Aug. 15, 2011, the Applicant argued that Tranchina
`
`lacked an integration subsystem 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. Id., 335-336. Applicant also argued that Tranchina was deficient because
`
`it did not explain the scope and meaning of using wireless communication for
`
`“control purposes.” Id. (discussing Tranchina col. 7 ln. 23-28).
`
`29. Following another response dated January 29, 2012 having additional
`
`arguments about Tranchina, I understand that on February 16, 2012 the Examiner
`
`issued a Notice of Allowance, without providing any reasons for allowance. See id.
`
`at pp. 1079-1083, Notice of Allowance, issued Feb. 16, 2012.
`
`D. Level of Ordinary Skill in the Art
`
`30.
`
`I understand that a patent must be written such that it can be understood by
`
`a “person of ordinary skill” in the field of the patent.
`
`
`
`21
`
`Page 21 of 96
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`
`
`
`
`
`Declaration of James T. Geier
`United States Patent No. 8,155,342
`
`31.
`
`I understand that this hypothetical person of ordinary skill in the art is
`
`considered to have the normal skills and knowledge of a person in the technical
`
`field at issue. I understand that factors that may be considered in determining the
`
`level of ordinary skill in the art include: (1) the education level of the inventor; (2)
`
`the types of problems encountered in the art; (3) the prior art solutions to those
`
`problems; (4) rapidity with which innovations are made; (5) the sophistication of
`
`the technology; and (6) the education level of active workers in the field.
`
`32.
`
`It is my opinion that in June 2006, a person of ordinary skill in the art relevant
`
`to the ‘342 patent would have had: at least a Bachelor’s degree in electrical
`
`engineering or equivalent science/engineering degree and at least two years of
`
`experience in signal processing and/or electronic system design, or would have at
`
`least four years of experience in signal processing and/or electronic system design.
`
`33. Based on my experience and education, I consider myself to have been a
`
`person of at least ordinary skill in the art as of June 2006 (and through today) with
`
`respect to the field of technology implicated by the ‘342 patent.
`
`III. CLAIM CONSTRUCTION
`
`34.
`
`In this declaration, I have analyzed the claims consistent with the “broadest
`
`reasonable interpretation” meaning of the claim terms, consistent with the intrinsic
`
`and extrinsic record, including the Patent Owner’s application of the terms in
`
`litigation (see EX1013). I have also analyzed the claims considering the knowledge
`
`
`
`22
`
`Page 22 of 96
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`
`
`
`
`
`Declaration of James T. Geier
`United States Patent No. 8,155,342
`
`of a person of ordinary skill in the arts of signal processing and/or electronic system
`
`design.
`
`
`
`
`
`
`
`
`
`IV. CLAIMS 49-64, 66, 68-88, 94-97, 99-111, 113, 115, 116, 119 AND 120
`OF THE ’342 PATENT ARE UNPATENTABLE
`
`
`
`A. The Prior Art
`
`1. Michmerhuizen
`
`35. Based on my review of Michmerhuizen, I understand that the patent
`
`application was filed September 8, 2006, claiming priority to U.S. Provisional
`
`Application 60/789,176, filed April 4, 2006. EX1002, cover page; EX1003, at 1. I
`
`have been advised that because Michmerhuizen is entitled to the filing date of its
`
`provisional, Michmerhuizen is prior art to the ’342 Patent under pre-AIA 35 U.S.C.
`
`§ 102(e).
`
`36. Like the ’342 patent, Michmerhuizen is directed to systems for connecting
`
`portable media devices for integration with a vehicle audio system. EX1002,
`
`abstract, FIG. 3. Michmerhuizen discloses a “control system in a vehicle for
`
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