Paper No. 7
`Trials@uspto.gov
`571-272-7822 Entered: October 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC
`Patent Owner
`____________
`
` Case IPR2018-00926
` Patent 8,155,342
`____________
`
`
`
`Before JAMES T. MOORE, THOMAS L. GIANNETTI, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC
`Patent Owner
`____________
`
` Case IPR2018-00926
` Patent 8,155,342
`____________
`
`
`
`Before JAMES T. MOORE, THOMAS L. GIANNETTI, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`IPR2018-00926
`Patent 8,155,342
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`BMW of North America (“Petitioner” or “BMW”) filed a Petition
`requesting inter partes review of claims 49–64, 66, 68–88, 94–97, 99–111,
`113, 115, 116, 119, and 120 (the “challenged claims”) of U.S. Patent
`No. 8,155,342 (Ex. 1001, the “’342 patent”). Paper 2 (“Pet.”). Blitzsafe
`Texas, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary 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.” 35 U.S.C. § 314; see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`For the reasons that follow, we do not institute an inter partes review
`of any of the challenged claims of the ’342 patent.
`
`B. Related Proceedings
`The parties identify the following matters related to the ’342 patent:
`1. The ’342 patent is the subject of a petition for inter partes review
`in IPR2018-00927, which was filed on April 25, 2018.
`2. The ’342 patent was the subject of the following petitions for inter
`partes review that were denied institution: IPR2016-00118, IPR2016-
`00419, IPR2016-01473, IPR2016-01476, and IPR2018-00090.
`3. The ’342 patent was the subject of the following inter partes
`reviews that were terminated prior to a final written decision: IPR2016-
`
`2
`
`
`
`IPR2018-00926
`Patent 8,155,342
`
`00418, IPR2016-01533, IPR2016-01557, IPR2016-01560, IPR2016-01445,
`and IPR2016-01449. Pet. 76; Paper 5, 2; Prelim. Resp. 5–7.
`The ’342 patent has also been involved in numerous civil actions for
`infringement. See Pet. 74–76; Paper 5, 1–2.
`In addition to the matters identified by the parties, a further petition
`for inter partes review of the ’342 patent was filed by Daimler AG on June
`6, 2018. IPR2018-01209, Paper 2. A decision on that petition is pending.
`Further, on August 10, 2018, the Board denied a petition for inter partes
`review of the ’342 patent filed by Jaguar Land Rover North America.
`IPR2018-00544, Paper 8.
`
`C. The ’342 Patent
`The ’342 patent is titled “Multimedia Device Integration System.”
`
`Ex. 1001, (54). The patent describes and claims inventions relating to
`integrating a wireless portable device into a car stereo system. Ex. 1001,
`8:38–46.
`
`D. Illustrative Claim
`Of the challenged claims, claims 49, 73, 97, and 120 are independent.
`
`Claim 49, reproduced below, is illustrative:
`
`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
`
`3
`
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`IPR2018-00926
`Patent 8,155,342
`
`
`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
`system.
`Ex. 1001, 42:29–47.
`
`E. References
`Petitioner relies upon the following references:
`1. Michmerhuizen et al., U.S. Patent No. 7,870,142 B2,
`filed Sept. 8, 2006, issued Jan. 11, 2011 (Ex. 1002,
`“Michmerhuizen”);
`2. 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) (Ex.
`1004, collectively “ID3v2”);
`3. U.S. Patent Application Publication No.
`2003/0215102, published Nov. 20, 2003 (Ex. 1005,
`“Marlowe”).
`Pet. 16–22. Petitioner also relies upon the Declaration of James T. Geier,
`dated April 24, 2018 (Ex. 1015, “Geier Decl.”).
`
`F. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the challenged claims of the
`’342 patent based on the following grounds. Pet. 15.
`References
`Basis
`Claims Challenged
`Michmerhuizen
`§ 102 49–60, 62–64, 71, 73–84,
`
`4
`
`
`
`IPR2018-00926
`Patent 8,155,342
`
`
`References
`
`Michmerhuizen
`
`Michmerhuizen and ID3v2
`Michmerhuizen and Marlowe
`
`Michmerhuizen, Marlowe, and ID3v2
`
`Basis
`
`Claims Challenged
`86–88,1 95, 97, 99–107,
`109–111, 113, and 120
`§ 103 66, 69, 70, 72, 94,
`96, 116, and 119
`§ 103 66, 68, 94, and 115
`§ 103 49–64, 66, 69–88, 94–97,
`99–111, 113, 116, 119,
`and 120.
`§ 103 66, 68, 94, and 115
`
`II. DISCUSSION
`A. The Previous Petitions
`Prior to this case and IPR2018-00927, twelve petitions for inter partes
`
`review of the ’342 patent have been filed, including one by Petitioner BMW.
`Prelim. Resp. 5. So far, none has been successful in obtaining the
`cancellation of any claims.
`
`One of those petitions was IPR2018-00090 (“IPR090”). That petition
`was filed by a number of auto companies including BMW. IPR090, Paper 1.
`The IPR090 petition was based on the petition in IPR2016-00918, an inter
`partes review that was terminated after final hearing when the parties
`reached a settlement. The IPR090 petition states: “[t]his Petition, and the
`references and grounds included in it, are substantively identical to those
`included” in the petition in IPR2016-00418, filed by Toyota and terminated
`March 10, 2017 due to a settlement after oral argument. IPR090, Paper 1, 1
`(emphasis omitted); Prelim. Resp. 6.
`
`
`1 Claims 86–88 appear in the heading for this ground at Pet. 22, but are
`omitted from Petitioner’s summary at Pet. 15.
`
`5
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`IPR2018-00926
`Patent 8,155,342
`
`On April 20, 2018, the Board denied institution in IPR090.
`
`IPR090, Paper 15, 18–19. The Petition in this case was filed by BMW four
`days later, on April 24, 2018. Paper 2, 79. The petition in IPR2018-00927
`was filed a day later, on April 25, 2018.
`
`B. Discretion under 35 U.S.C. § 314(a)
`Patent Owner contends that we should exercise our discretion to deny
`institution of this Petition under 35 U.S.C. § 314(a). Prelim. Resp. 52–57.
`Patent Owner argues that “[a]fter eleven previous petitions have resulted in
`zero claims cancelled or amended, and a twelfth petition that is pending the
`Board’s institution decision, institution of this thirteenth petition, along with
`the fourteenth filed a day later (the second and third by Petitioner) should be
`denied.” Id. at 52.2
`Anticipating Patent Owner’s argument, Petitioner asserts that its
`principal reference, Michmerhuizen, was newly discovered:
`In preparing the invalidity contentions served in February
`2018, [BMW] discovered new prior art—Michmerhuizen—that
`has never been before the Board or the patent examiner in a
`newly commissioned search. The new art was undiscovered by
`a prior art search conducted in August 2017. This prior art
`anticipates not only the previously challenged claims but also
`over twenty other claims, which this petition challenges for the
`first time. [BMW] discovered this better prior art only after it
`asked the Board to reinstitute the old IPR in IPR2018-00090.3
`
`2 As noted supra, the twelfth petition, in IPR2018-00544, has since been
`denied.
`3 This refers to a request by BMW and the other petitioners in IPR090 to
`“expedite the current proceeding to proceed immediately to institution of
`trial and then immediately thereafter to render a final written decision in
`light of a previous inter partes review, IPR2016-00418.” IPR090 Paper 12,
`1. The Board denied the request. Id. at 4.
`
`6
`
`
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`IPR2018-00926
`Patent 8,155,342
`
`Pet. 2 (footnote omitted).
`
`1. Statutory Framework
`The AIA gives the Director of the USPTO the authority to institute
`inter partes review subject to certain conditions:
`The Director [of the USPTO] may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 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.
`35 U.S.C. § 314(a) (emphasis added). Section 314(a) does not require the
`Director to institute an inter partes review. See Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
`never compelled, to institute an IPR proceeding.”). Rather, a decision
`whether to institute is within the Director’s discretion, which the Director
`has delegated to the Board. See 37 C.F.R. § 42.4(a); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny
`a petition is a matter committed to the Patent Office’s discretion.”).
`In General Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha, a
`precedential decision, the Board denied a petition challenging a patent that
`was previously challenged before the Board. The Board articulated a list of
`factors to be considered in evaluating whether to exercise discretion under
`35 U.S.C. § 314(a). Those factors are:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`
`7
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`IPR2018-00926
`Patent 8,155,342
`
`
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which
`the Director notices institution of review.
`Gen. Plastic, Case IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)
`(Section II.B.4.i designated as precedential on Oct. 17, 2017), slip op. at 16.
`These factors are “a non-exhaustive list” and “additional factors may arise in
`other cases for consideration, where appropriate.” Id. at 16, 18. With that in
`mind, we now apply the General Plastic factors to the facts of this case.
`
`
`
`2. Application of the General Plastic Factor 1
`The first General Plastic factor asks “whether the same petitioner
`
`previously filed a petition directed to the same claims of the same patent.”
`Gen. Plastic, slip op. at 16. As noted supra, BMW was a petitioner in
`IPR090. Moreover, as Patent Owner points out, the petition in IPR090
`challenged the same independent claims (49, 73, 97, and 120) as the Petition
`here. Patent Owner acknowledges that additional dependent claims are
`challenged in this Petition than were challenged in IPR090. Prelim.
`Resp. 54. Patent Owner, however, argues that the previous challenges to the
`’342 patent failed due to deficiencies regarding the independent claims. Id.
`
`8
`
`
`
`IPR2018-00926
`Patent 8,155,342
`
`Thus, the addition of dependent claims fails to differentiate this petition
`meaningfully. Id.
`We observe that the focus of Petitioner’s analysis and Patent Owner’s
`response is on features of the independent claims. See, e.g., Prelim. Resp.
`15–16 (“The claimed ‘integration subsystem’ is found in all of the
`Challenged Claims because it is recited in independent claims 49, 73, 97,
`and 120, and the remaining Challenged Claims all depend from claims 49,
`73, and 97.”).
`Thus, we determine that because BMW was a petitioner in a previous
`IPR, and because the challenged claims, particularly the independent claims,
`overlap with that petition, General Plastic Factor 1 weighs heavily against
`institution.
`
`2. Application of General Plastic Factor 2
`The second General Plastic factor asks “whether at the time of filing
`of the first petition the petitioner knew of the prior art asserted in the second
`petition or should have known of it.” Gen. Plastic, slip op. at 16.
`Petitioner admits that it conducted a prior art search in August 2017
`that did not identify Michmerhuizen. Pet. 2. This fact thus raises the
`question of whether Petitioner should have discovered Michmerhuizen in
`that earlier search. Petitioner relies on the fact that Michmerhuizen was
`“undiscovered” in August 2017. Id. In General Plastic, a similar argument
`was made and rejected by the Board. There, as here, the petitioner provided
`no explanation for the delay in discovering the new reference: “Petitioner
`demonstrated that it found new prior art, but provided no explanation why it
`could not have found this new prior art earlier—prior to filing the first-filed
`
`9
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`IPR2018-00926
`Patent 8,155,342
`
`petitions—through the exercise of reasonable diligence.” Gen. Plastic, slip
`op. at 11.
`Petitioner does not persuade us that through reasonable diligence it
`could not have located Michmerhuizen in its prior search or that it has not
`benefitted from the delay in finding the reference. This factor weighs
`moderately against institution.
`
`4. Application of General Plastic Factor 3
`The third General Plastic factor asks “whether at the time of filing of
`the second petition the petitioner already received the patent owner’s
`preliminary response to the first petition or received the Board’s decision on
`whether to institute review in the first petition.” Gen. Plastic, slip op. at 16.
`The Board explained the relevance of this factor in General Plastic in terms
`of unfair benefit to petitioners from follow-on petitions:
`[F]actor 3 is directed to Petitioner’s potential benefit from
`receiving and having the opportunity to study Patent Owner’s
`Preliminary Response, as well as our institution decisions on the
`first-filed petitions, prior to its filing of follow-on petitions. . . .
`Multiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap . . . . All
`other factors aside, this is unfair to patent owners and is an
`inefficient use of the inter partes review process and other post-
`grant review processes.
`Id. at 17–18 (internal citation and footnote omitted).
`
`Petitioner claims it discovered Michmerhuizen, in a “newly
`commissioned search.” Pet. 2. Although Petitioner does not provide a
`specific date for the search, it appears that the search was conducted around
`
`10
`
`
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`IPR2018-00926
`Patent 8,155,342
`
`the time Petitioner’s invalidity contentions were served in its district court
`case with Patent Owner, namely, by February 2018. Id. Yet Petitioner
`waited until April 24, 2018, after receiving the Board’s decision denying
`review in IPR090, on April 20, 2018, before filing this Petition. 4
`Petitioner attempts to answer General Plastic’s concern over using
`prior decisions as a “roadmap” on several grounds. Pet. 2–3. Petitioner
`argues it has not “modified its challenges” or attempted to “cure the
`deficiencies” in prior challenges. Id. at 2. Further, Petitioner claims no
`“tactical advantage” accrued because “[t]he merits arguments in both the
`preliminary response and decision on institution presented issues already
`known from the record of previously-terminated IPR2016-00418.” Id. at 2–
`3. We are not persuaded by these arguments. While Petitioner admits it was
`aware of Michmerhuizen by February 2018, it does not explain why it
`waited until April 24, 2018, after receiving the Board’s decision denying
`review in IPR090, on April 20, 20018, before filing this Petition. Nor has
`Petitioner provided evidence that it did not modify its filings after receiving
`the Board’s April 20 decision.5 Just based on the timing alone, we are not
`convinced that Petitioner received no benefit from its delay.
`Thus, we determine that Factor 3 weighs heavily against institution.
`
`
`4 Patent Owner argues persuasively that “it is likely that Petitioner’s delay is
`substantially more than this given that Petitioner must have discovered
`Michmerhuizen substantially prior to February 6th in order to prepare the
`claim chart for that reference for its invalidity contentions.” Prelim. Resp.
`55.
`5 We note that Mr. Geier’s expert declaration was executed on April 24,
`2018, four days after review was denied in IPR090.
`
`11
`
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`IPR2018-00926
`Patent 8,155,342
`
`
`5. Application of General Plastic Factors 4 and 5
`The fourth General Plastic factor considers “the length of time that
`elapsed between the time the petitioner learned of the prior art asserted in the
`second petition and the filing of the second petition,” and the fifth General
`Plastic factor queries “whether the petitioner provides adequate explanation
`for the time elapsed between the filings of multiple petitions directed to the
`same claims of the same patent.” Gen. Plastic, slip op. at 16.
`
`As discussed above regarding Factor 2, the record establishes that
`Petitioner should have been aware of Michmerhuizen when it conducted its
`search in August 2017. Additionally, Petitioner admittedly was aware of
`Michmerhuizen when it filed its invalidity contentions in the district court
`action, in February 2018. Thus, Petitioner knew of Michmerhuizen several
`months before filing this Petition, in April 2018. Petitioner does not provide
`any explanation related to the timing of its Petition. If there was a
`reasonable explanation for Petitioner’s delay, Petitioner does not provide it.
`Thus, we determine that Factors 4 and 5 weigh moderately against
`institution.
`
`6. Application of General Plastic Factors 6 and 7
`The sixth General Plastic factor considers “the finite resources of the
`Board.” Gen. Plastic, slip op. at 16. The Board has already devoted
`substantial time and effort to challenges to the ’342 patent. The Board has
`dealt with twelve prior petitions for inter partes review of this patent, none
`of which has resulted in any cancelled or amended claims. Institution was
`denied in six of those petitions, including IPR090. Six more were
`terminated after institution.
`
`12
`
`
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`IPR2018-00926
`Patent 8,155,342
`
`
`Patent Owner accuses Petitioner of presenting here “the same flawed
`arguments that caused the rejection of the past petitions.” Prelim. Resp. 56.
`While we do not agree that arguments presented in the challenges here are
`exactly the same as in IPR090, they are similar. In both cases the argument
`centers around whether streaming audio meets the claim limitations calling
`for audio generated by the portable device that is also for playing at the car
`audio/video system. IPR090, Paper 15, 18. The principal reference relied
`on by BMW and the other petitioners in IPR090 was Clayton.6 In its
`Decision Denying Institution, the Board concluded:
`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 car audio/video
`system, consistent with the claim language and our claim
`construction analysis . . . . To the contrary, the Petition does not
`offer any explanation of Clayton’s disclosure in this regard, and
`instead merely repeats the claim language and provides string
`citations to Clayton.
`IPR090, Paper 15, 18–19. In this proceeding, the Michmerhuizen reference
`is relied on to show audio generated by a portable device for playing on a car
`audio/video system in its disclosure of using A2DP to stream “audio data.”
`Petition at 35. Patent Owner asserts this was the same issue that was before
`the Board in IPR090: “[T]he Board has already rejected this argument in
`IPR2018-00090 where it found that the disclosure in Clayton of ‘streaming
`audio’ via A2DP was insufficient.” Prelim. Resp. 12. The similarity (if not
`exact identity) of the arguments in BMW’s prior challenge, added to the
`twelve other unsuccessful petitions the Board has already considered,
`
`
`6 U.S. Patent App. Pub. No. 2006/0181963 A1.
`
`13
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`IPR2018-00926
`Patent 8,155,342
`
`convinces us that the sixth General Plastic factor weighs heavily against
`institution.
`
`The seventh General Plastic factor considers “the requirement . . . to
`issue a final determination not later than 1 year after the date on which the
`Director notices institution of review.” Gen. Plastic, slip op. at 16. We
`determine that this factor is neutral.
`
`7. Summary
`We have considered the factors identified in General Plastic in
`determining whether to exercise our discretion under 35 U.S.C. § 314(a). In
`summary, we determine that:
`i. Factors 1, 3, and 6 weigh heavily against institution;
`ii. Factors 2, 4 and 5 weigh moderately against institution;
`iii. Factor 7 is neutral.
`Considering these factors as a whole, and on this record, we determine that it
`is appropriate to exercise our discretion under 35 U.S.C. § 314(a) to deny
`institution of an inter partes review of the challenged claims of the ’342
`patent.
`
`III. CONCLUSION
`For the foregoing reasons, we exercise our discretion to deny
`institution of an inter partes review, pursuant to 35 U.S.C. § 314.
`
`IV. ORDER
`Upon consideration of the record before us, it is:
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
`14
`
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`IPR2018-00926
`Patent 8,155,342
`
`PETITIONER:
`
`Lionel M. Lavenue
`Cory C. Bell
`Kai Rajan
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`cory.bell@finnegan.com
`kai.rajan@finnegan.com
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino, III
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`15
`
`
`
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