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.
`
`Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`DECLARATION OF RICHARD STERN, PH.D.
`
`Case No. IPR2018-00927
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner Blitzsafe Texas, LLC – Exhibit 2001
`BMW of North America v. Blitzsafe, IPR2018-00927
`Page 1
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 3
`
`Qualifications ................................................................................................... 4
`
`III. Materials Considered ....................................................................................... 8
`
`IV. Legal Principles ............................................................................................... 9
`
`V.
`
`Background .................................................................................................... 11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Technical Background ......................................................................... 11
`
`The ’342 Patent ................................................................................... 16
`
`Level of Ordinary Skill ....................................................................... 17
`
`Claim Construction.............................................................................. 18
`
`The Cited References .......................................................................... 19
`
`1. Michmerhuizen ......................................................................... 19
`
`2.
`
`The ID3v2 References .............................................................. 23
`
`3. Marlowe .................................... Error! Bookmark not defined.
`
`VI. The Cited References Do Not Anticipate or Render Obvious an
`Integration Subsystem Receiving Audio Generated by a Portable
`Device for Playing on a Car Audio/Video System ........................................ 23
`
`A. Michmerhuizen Does Not Disclose a Portable Device
`Generating Audio for Playing on a Car Audio/Video System ............ 26
`
`B. Michmerhuizen in Combination with Marlowe Does Not
`Render Obvious an Integration Subsystem Receiving Audio
`Generated by a Portable Device for Playing on a Car
`Audio/Video System ........................................................................... 34
`
`VII. Conclusion ..................................................................................................... 34
`
`
`
`
`
`Stern Declaration
`Ex. 2001 – Page 2
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`I, Richard Stern, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Blitzsafe Texas, LLC (“Patent Owner”) to
`
`provide my opinion regarding the validity of certain claims of U.S. Patent
`
`No. 8,155,342 (“the ’342 Patent,” Ex. 1001) in response to the April 25, 2018
`
`Petition for Inter Partes Review filed by BMW of North America, LLC
`
`(“Petitioner”) and the Declaration of James T. Geier in support thereof (“Geier
`
`Declaration,” Ex. 1015).
`
`2.
`
`I am being compensated at my customary rate of $450 per hour. My
`
`compensation is not dependent upon the substance of the opinions I offer below,
`
`the outcome of this petition, or any issues involved in or related to the ’342 Patent.
`
`I have no financial interest in, or affiliation with, any of the real parties-in-interest
`
`or Patent Owner.
`
`3.
`
`In particular, I have been asked to review and provide my opinion
`
`regarding whether claims 49–64, 66, 68–88, 94–97, 99–111, 113, 115–16, and
`
`119–20 of the ’342 Patent (collectively, the “Challenged Claims”) are obvious as
`
`asserted by Petitioner and Dr. Geier in view of:
`
` U.S. Patent Application No. 2003/0215102 A1 to Ira Marlowe (“Marlowe,”
`
`Ex. 1005);
`
`Stern Declaration
`Ex. 2001 – Page 3
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
` U.S. Patent No. 7,870,142 to Mark Michmerhuizen, et al.
`
`(“Michmerhuizen,” Ex. 1002); and
`
` ID3.org, ID3v2 made easy (bearing URL “http://id3.org/easy.html” and date
`
`“5/12/2003”) and M. Nilsson, ID3 tag version 2.3.0 (bearing URL
`
`“http://id3.org/id3v2.3.0.html and dates “3rd February 1999” and
`
`“5/12/2003”) (collectively, “the ID3v2 References,” Ex. 1004).
`
`4.
`
`As set forth in detail below, in my expert opinion, the Challenged
`
`Claims are not obvious as asserted by Petitioner and Dr. Geier in view of
`
`Michmerhuizen, the ID3v2 References, and Marlowe.
`
`II. QUALIFICATIONS
`
`5.
`
`Ex. 2002 is a copy of my curriculum vitae that summarizes my
`
`education, work history and publications.
`
`6.
`
`I have over 40 years of experience in the fields relevant to multimedia
`
`device integration. In that time, I have studied and researched signal processing,
`
`audio, and acoustics, including the creation of a signal, the communication of data
`
`through the signal from one device to another, and the interpretation of that signal
`
`by a human listener. While my main areas of current professional activity are
`
`primarily in signal processing for robust speech recognition and auditory
`
`perception, I have additionally studied and performed research in a wide range of
`
`related fields of audition, acoustics, signal processing, and instrumentation.
`
`Stern Declaration
`Ex. 2001 – Page 4
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`7.
`
`I received an S.B. in Electrical Engineering from the Massachusetts
`
`Institute of Technology (MIT) in 1970; an M.S. in Electrical Engineering and
`
`Computer Sciences from the University of California, Berkeley in 1972; and a
`
`Ph.D. in Electrical Engineering and Computer Science from MIT in 1977.
`
`8. While I was a student, I worked as a Teaching and Research Assistant
`
`in the Department of Electrical Engineering at MIT, from 1973 to 1976. My
`
`teaching experience was in the area of signal processing under the direct
`
`supervision of Professors Alan Oppenheim and Alan Willsky, and in the area of
`
`acoustics under the direct supervision of Professor Amar Bose. My research at
`
`MIT had been in the area of auditory perception.
`
`9.
`
`I am a Professor of Electrical and Computer Engineering at Carnegie
`
`Mellon University (CMU), where I have taught and carried out research since
`
`1977. While my primary appointment is with the Department of Electrical and
`
`Computer Engineering, I am also a Professor by Courtesy in the Language
`
`Technologies Institute and Computer Science Department. I have also been a
`
`Lecturer in CMU’s School of Music since 2008, and I was a Professor in CMU's
`
`Biomedical Engineering Department from 1977 to 1995. From 1995 to 2003, I was
`
`Associate Director of the CMU Information Networking Institute, where I was
`
`responsible for every aspect of its Master of Science in Information Networking,
`
`including admissions, curricular development and support, and student life. In
`
`Stern Declaration
`Ex. 2001 – Page 5
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`addition to my appointments at CMU, I was an invited Visiting Professor at
`
`Nippon Telegraph and Telephone Laboratories in Tokyo in 1985 and at the Nara
`
`Institute of Science and Technology in Japan in 2003. I was also an Adjunct
`
`Assistant Professor of Otolaryngology at the University of Pittsburgh School of
`
`Medicine from 1979 to 1981.
`
`10. As noted above, my main areas of professional activity are automatic
`
`speech recognition, auditory perception, signal processing, and acoustics. My work
`
`is well known and widely cited, as a search on the generic term “robust speech
`
`recognition” will reveal. In those fields, I have been author or co-author of more
`
`than 42 archival journal articles, 13 book chapters, and more than 39 invited
`
`conference presentations, many of which were keynote addresses at major
`
`meetings, and a large number of additional critically-reviewed conference
`
`presentations. I have been invited to present my work on speech recognition in
`
`Australia, China, Japan, Korea, the Czech Republic, Denmark, France, Germany,
`
`Italy, Portugal, Spain, the United Kingdom, Israel, India, Mexico, Argentina,
`
`Brazil, and Chile, as well as virtually every major corporate and academic center of
`
`research in speech recognition and related technologies in the United States. I have
`
`supervised 23 Ph.D. theses, and more than 32 M.S. research projects. My former
`
`doctoral and masters research students include the present or former heads of
`
`speech research at Apple, Microsoft, Google, and major government intelligence
`
`Stern Declaration
`Ex. 2001 – Page 6
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`agencies, the founders of startup companies valued at hundreds of millions of
`
`dollars, and professors in major research universities.
`
`11.
`
`I am one of the few individuals who is an elected Fellow of the
`
`Institute of Electrical and Electronics Engineers (IEEE), the Acoustical Society of
`
`America (ASA), and the International Speech Communication Association (ISCA).
`
`I was the 2008–09 Distinguished Lecturer of ISCA, which sponsored tours of
`
`South America and India for the purpose of disseminating my research results. I
`
`was also a co-recipient of the Allen Newell Award for Research Excellence in
`
`1992, and I was the recipient of the CMU Electrical Engineering Department’s
`
`annual teaching award in 1979, as well as a co-recipient of the CMU Electrical and
`
`Computer Engineering Department’s Litton Teaching Award in 2018.
`
`12.
`
`I have served on numerous technical and standards committees for the
`
`IEEE, ISCA, and for the Human Language Technology Program of the U.S.
`
`Defense Department Advanced Research Projects Agency (DARPA). I served as
`
`General Chair of the 2006 Interspeech International Conference on Spoken
`
`Language Processing in Pittsburgh in 2006. The Interspeech meeting, which
`
`attracted in excess of 1100 attendees, is considered to be the major world forum
`
`(along with the IEEE International Conference on Acoustics, Speech, and Signal
`
`Processing) for the exchange and dissemination of new findings in speech
`
`processing by humans and machines. I also serve or have served as the Technical
`
`Stern Declaration
`Ex. 2001 – Page 7
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`Program Committee Chair of the Meeting of the Acoustical Society of America in
`
`Pittsburgh in 2002, Chair of the Nominating Committee for the IEEE James L.
`
`Flanagan Technical Field, and as a member of the ISCA International Advisory
`
`Board and Nomination Committee for Fellows of ISCA, the Secretary for the
`
`DARPA Speech Coordinating Committee, and I have led or served as a member of
`
`other professional, academic, and governmental committees too extensive to be
`
`enumerated here.
`
`13. As a Professor, I have taught 15 courses, many of which are at the
`
`graduate level, in the general areas of signal processing, communication theory,
`
`and acoustics. The courses that I teach at CMU encompass all aspects of signal
`
`processing including signal representation, fast Fourier transformation, digital filter
`
`design and implementation, adaptive filtering, array processing, short-time Fourier
`
`analysis, and multi-rate signal processing.
`
`III. MATERIALS CONSIDERED
`
`14. The materials I considered include:
`
` the ’342 Patent and the original prosecution history for the ’342 Patent and
`
`the applications to which the ’342 Patent claims priority;
`
` Petitioner BMW of North America, LLC’s Petition for Inter Partes Review ,
`
`including the exhibits thereto, including the Declaration of James T. Geier in
`
`Stern Declaration
`Ex. 2001 – Page 8
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`Support of Petition for Inter Partes Review filed as Exhibit 1015 thereto;
`
`and
`
` the materials that I refer to and that I cite in this declaration.
`
`15.
`
`In addition, I have drawn on my experience and knowledge, as
`
`discussed above and described more fully in my CV, in the areas of audio and
`
`multimedia integration.
`
`IV. LEGAL PRINCIPLES
`
`16.
`
`I understand that a patent claim is unpatentable as “obvious” if the
`
`subject matter of the claim as a whole would have been obvious to a person of
`
`ordinary skill in the art (“POSA”) as of the time of the invention at issue.
`
`17.
`
`I understand that the use of POSA rubric is to prevent one from
`
`improperly, in the present day, using hindsight to decide whether a claim is
`
`obvious.
`
`18.
`
`I understand that the following factors must be evaluated to determine
`
`whether the claimed subject matter is obvious: (1) the scope and content of the
`
`prior art; (2) the difference or differences, if any, between the scope of the patent
`
`claim and the scope of the prior art; and (3) the level of ordinary skill in the art at
`
`the time of the invention.
`
`19.
`
`I understand that, unlike anticipation, which allows consideration of
`
`only one item of prior art, obviousness may be shown by considering more than
`
`Stern Declaration
`Ex. 2001 – Page 9
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`one item of prior art. I understand that, when considering a combination of prior art
`
`references as part of an obviousness analysis, it can be important to ascertain if the
`
`references are from the same field of endeavor and also to ascertain whether there
`
`is any reason that would have prompted a POSA in the relevant art to combine the
`
`elements in the way the claim does. In other words, a claim generally cannot be
`
`rendered obvious by combining (1) art from across different fields, including
`
`outside the field of the claimed invention, (2) art that itself teaches away from
`
`combination with other art that would otherwise provide its missing limitations, or
`
`(3) art for which there is not at least an articulable, common sense reason to bridge
`
`the gap between its disclosure and the claim at issue.
`
`20. Moreover, I understand that so-called “objective indicia of non-
`
`obviousness,” also known as “secondary considerations,” are also to be considered
`
`when assessing obviousness. I understand that this objective evidence includes at
`
`least: (1) the commercial success of the invention; (2) the long felt but unresolved
`
`need to develop the invention; and (3) any praise of the invention in the market. I
`
`also understand that evidence of objective indicia of non-obviousness must be
`
`commensurate in scope with the claimed subject matter; i.e., that there must be a
`
`nexus or connection between the criteria and the claim itself.
`
`Stern Declaration
`Ex. 2001 – Page 10
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`V. BACKGROUND
`
`A. TECHNICAL BACKGROUND
`
`21.
`
`I understand that this proceeding concerns the wireless connection of
`
`a portable electronic device (such as a mobile phone or MP3 player) with a second
`
`device (in this case, the automobile) for the purposes of information and
`
`entertainment.
`
`22.
`
`I also understand that one of the issues in contention in this litigation
`
`concerns I understand that this proceeding concerns the wireless connection of a
`
`portable electronic device (such as a mobile phone or MP3 player) with a second
`
`device (in this case, the automobile) for the purposes of information and
`
`entertainment. I also understand that one of the issues in contention in this
`
`litigation concerns the method(s) by which audio (which is encoded or compressed
`
`into a format such as MP3) is transmitted from the portable electronic device to the
`
`automobile and converted into a format that is suitable for presentation to a human
`
`listener.
`
`23. Audio and video coding are technologies that enable widespread
`
`access to media that we have come to enjoy in the 21st century, including video
`
`downloaded from services such as Netflix and YouTube, and audio from devices
`
`such as the iPod, iPad, iPhone, and Android phones. Typically, the motivation for
`
`video and audio coding is the reduction of file size. For example, a one-minute
`
`Stern Declaration
`Ex. 2001 – Page 11
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`segment of music in stereo sampled at 44,100 Hz with 16 bits per sample (as in an
`
`audio CD) represents about 84.7 million bits of information. A representation of
`
`that segment of music using reasonably high-quality MP3 encoding with typical
`
`coding parameters would require only 11.5 million bits of storage. Clearly, this is a
`
`reduction of storage requirements by a factor of about 7.4 to 1, which
`
`concomitantly permits the storage of 7.4 times as much audio on a given device
`
`than would have been possible if the data had been stored in the original un-
`
`encoded form. (In practice the actual bit-rate reduction depends on the type of
`
`signal that is being coded as well as a number of user-selectable preferences.)
`
`24. MP3 coding is one of a class of protocols collectively referred to as
`
`perceptual audio coding, which exploits the observation that the auditory system
`
`masks certain components of sound in time and frequency. Bit-rate reduction is
`
`obtained by storing only a crude representation of those sound components that are
`
`masked by others. Other perceptual audio coding methods include Advanced
`
`Audio Coding (AAC) and Unified Speech and Audio Coding (USAC). In this
`
`report, I use the term “MP3” to refer to any type of perceptual audio coding used
`
`by the portable electronic device, regardless of whether the actual coding method
`
`used is MP3, AAC, USAC, or some other method.
`
`25.
`
`I note that conversion from the MP3 representation on a portable
`
`electronic device, such as those implicated in this case, takes place in two
`
`Stern Declaration
`Ex. 2001 – Page 12
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`separable stages: (1) decoding the MP3 parameters, which converts them into a
`
`digital representation of the original audible waveform, and (2) digital-to-analog
`
`conversion (D/A conversion), which converts the digital representation of the
`
`audible waveform into a continuous-time or “analog” representation which can be
`
`directly converted into sound by a traditional output device such as a loudspeaker
`
`or headphones.
`
`26.
`
`It is critically important to maintain a distinction between audio as
`
`represented by the audible waveform (or a digital representation of it) versus a
`
`representation of the audio by the coded MP3 parameters.
`
`27.
`
`In other words, “audio generated by the portable device” for the
`
`purpose of this proceeding specifically refers to the decoding of the MP3 on the
`
`portable device itself. Merely transmitting the MP3 file, either in whole or in part,
`
`would not satisfy that limitation because, as the Board found in IPR2018-00090,
`
`there is no “audio generated by the portable device” when the integration
`
`subsystem receives an audio file or must decode what it receives in order to render
`
`audio for playing at the car audio/video system. IPR2018-00090, Paper 15 at 11.
`
`28.
`
`In order to communicate with portable devices over a communications
`
`channel, it was possible to use Universal Serial Bus (USB) protocol or Bluetooth
`
`protocol. The actual communicated signal streams transmitted over these protocols,
`
`regardless of whether they represent an audible waveform or a sequence of MP3
`
`Stern Declaration
`Ex. 2001 – Page 13
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`parameters, are segmented into a set of subsequences or “packets” often referred to
`
`as a “stream.” Both the USB and Bluetooth protocols specify means by which
`
`communication is established between the devices.
`
`29.
`
`It was known that these standards permitted transfer of files, such as
`
`MP3 audio files as packets of audio, referred to more commonly as a “stream” or
`
`“streaming.”
`
`Comparison of Alternative Modes of Communication
`Between Portable Electronic Device and Automobile
`
`
`
`Stern Declaration
`Ex. 2001 – Page 14
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`The figure above illustrates three different contrasting ways of converting the
`
`coded MP3 parameters which enable compact storage of the user’s music
`
`collection into an audible waveform that if presented to a human listener after
`
`digital-to-analog (D/A) conversion would be intelligible and informative and/or
`
`entertaining.
`
`30. The first approach, labeled Case 1, describes a process by which both
`
`the MP3 decoding and D/A conversion takes place on the portable electronic
`
`device. In this case, the “communication” between the portable electronic device
`
`and the automobile is through an analog channel, which in fact is simply the
`
`conventional audio cable that connects the audio output of the portable electronic
`
`device to (typically) the auxiliary input of the entertainment system on the
`
`automobile.
`
`31. The second approach, labeled Case 2, describes a process by which
`
`the MP3 decoding takes place on the portable electronic device and a digitally-
`
`encoded version of the audible waveform is transmitted over a digital
`
`communications channel using either wired or wireless protocols. This decoding is
`
`performed in response to a “play” command received by the portable device. The
`
`automobile receives the digitally-encoded waveform and converts it to an analog
`
`waveform suitable for direct connection to the speaker or headphones.
`
`Stern Declaration
`Ex. 2001 – Page 15
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`32. The third approach, labeled Case 3, describes a process by which the
`
`coded MP3 parameters are transmitted directly over the digital communications
`
`channel using either wired or wireless protocols to the automobile. This file
`
`transfer is performed in response to a “play” command received by the portable
`
`device. In this case, both MP3 decoding and D/A conversion take place on the
`
`automobile itself.
`
`33.
`
`In each of the cases, play commands may be received by the portable
`
`device. The play command is agnostic as to the approach for transmission and as to
`
`where the audio is generated. In Cases 2 and 3 above, there will be some encoding
`
`and decoding of the transmission for protocol purposes, e.g., Bluetooth. The audio
`
`generated by the portable device in Case 2 may undergo additional encoding or
`
`decoding for transmission protocol purposes (e.g., Bluetooth) without affecting my
`
`analysis.
`
`B.
`
`THE ’342 PATENT
`
`34. The ’342 Patent relates to a multimedia device integration system that
`
`allows a plurality of portable electronic devices to be wirelessly integrated into an
`
`existing car stereo system, via an “integration subsystem,” while allowing
`
`information to be displayed on, and control to be provided from the car stereo. Id.
`
`at Abstract, 2:44–54, 33:43–46. The Challenged Claims are directed to an
`
`integration subsystem in communication with the car audio/video system, allowing
`
`Stern Declaration
`Ex. 2001 – Page 16
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`data and control signals to be exchanged between the portable device and the car
`
`audio/video system. The integration subsystem processes and formats data so that
`
`instructions and information are processed by the portable device and vice versa,
`
`and permits audio and video generated, i.e., decoded, by the portable device to be
`
`played on the car audio/video system. Id. at Figure 18, Figure 19, 33:43–35:62.
`
`The type of processing taught by the ’342 patent follows the general structure of
`
`Case 2 in the figure in Paragraph 29 above. Specifically, the coded parameters are
`
`converted to a digital waveform on the portable device, and that waveform is
`
`subsequently transmitted to the vehicle over the USB or Bluetooth
`
`communications link.
`
`C. LEVEL OF ORDINARY SKILL
`
`35.
`
`I understand that I should perform my analysis from the viewpoint of
`
`a POSA. I understand that this hypothetical POSA is considered to have the normal
`
`skills of a person in a certain technical field. 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.
`
`Stern Declaration
`Ex. 2001 – Page 17
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`36.
`
`I understand that Petitioner and Dr. Geier have asserted that a POSA
`
`“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.” Petition at 14;
`
`Geier Declaration at 21–22 (¶ 32).
`
`37.
`
`I do not disagree with Petitioner’s and Dr. Geier’s proposed level of
`
`ordinary skill in the art.
`
`38.
`
`I would have qualified as a POSA as of the relevant time frame under
`
`Petitioner’s and Dr. Geier’s proposed level of skill. I have a sufficient level of
`
`knowledge, experience, and education to provide an expert opinion in the field of
`
`the ’342 Patent. My opinions in this declaration are based on the perspective of a
`
`POSA as of the relevant time frame as proposed by Petitioner and Dr. Geier.
`
`D. CLAIM CONSTRUCTION
`
`39.
`
`I understand that the Board has applied the following constructions in
`
`prior IPR proceedings, and that I should apply these constructions for the purposes
`
`of rendering my opinions:
`
` INTEGRATION SUBSYSTEM: I understand that the Board construed the term
`
`“integration subsystem” as “a system which is subordinate to another
`
`system” and a “subsystem to perform at least: (1) connecting one or more
`
`Stern Declaration
`Ex. 2001 – Page 18
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`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.”
`
` CAR AUDIO/VIDEO SYSTEM: I understand that the Board construed the term
`
`“car audio/video system” as “a car audio system, a car video system, or a car
`
`audio and video system.”
`
` DEVICE PRESENCE SIGNAL: I understand that the Board construed the term
`
`“device presence signal” as “a signal indicating that a portable device is
`
`connected to the car audio/video system through the integration subsystem”
`
` AUDIO GENERATED BY THE PORTABLE DEVICE: I understand that the Board
`
`stated “if the integration subsystem either receives an ‘audio file’ or must
`
`decode what it receives in order to render ‘audio’ for playing at the car
`
`audio/video system, then there is no ‘audio generated by the portable device’
`
`for subsequent playing of the audio at the car audio/video system.”
`
`E.
`
`THE CITED REFERENCES
`
`1. MARLOWE
`
`40. Marlowe is a publication of an application that the ’342 Patent claims
`
`priority to (through several continuation-in-part applications). See ’342 Patent at
`
`Stern Declaration
`Ex. 2001 – Page 19
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`cover (“Related U.S. Application Data”). It relates to an “audio device integration
`
`system for integrating after-market components such as satellite receivers, CD
`
`players, CD changers, MP3 players, Digital Audio Broadcast (DAB) receivers,
`
`auxiliary audio sources, and the like with factory-installed (OEM) or after-market
`
`car stereo systems.” Marlowe at ¶ 2. It describes an “integration system” that
`
`“connects to and interacts with the car stereo.” Id. at ¶ 10. Marlowe describes
`
`formatting commands received from the car stereo’s control panel so the after-
`
`market audio device is able to recognize the command. Id. Audio from the audio
`
`device is channeled to the car stereo and information from the audio device is
`
`converted to a format recognizable to the car stereo for display on the car stereo’s
`
`display. Id. Marlowe describes the audio device, such as an MP3 player,
`
`electronically connected to an interface and the interface electronically connected
`
`with the car stereo. Id. at ¶¶ 42, 44. Marlowe only discloses a wired connection
`
`between the integration system and the after-market components. See, e.g., Petition
`
`at 19. It does not disclose a wireless communications link. Id.
`
`2. MICHMERHUIZEN
`
`41. Michmerhuizen discloses “a system and method for extracting and
`
`processing meta data from media files accessible from a digital media storage
`
`device, such as a media player, in [a] vehicle.” Michmerhuizen at 1:14–16.
`
`Michmerhuizen describes a digital media storage device that stores media files, id.
`
`Stern Declaration
`Ex. 2001 – Page 20
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`at 1:43–44, that contain both audio data and metadata, id. at 7:30–31. The metadata
`
`“identifies the contents of the file.” Id. at 1:36–37. “For example, with digital audio
`
`files, such as MP3 files, the meta data comprises a tagging format which may
`
`include the title of the song, the artist’s name, the title of the album, track number,
`
`genre, etc.” Id. at 1:37–41.
`
`42. Michmerhuizen addresses the issue of how the metadata can be
`
`extracted from the files on the digital media storage device in order to be stored in
`
`an onboard memory of a vehicle control module “so that a user [in the vehicle]
`
`may access and manipulate the media files via voice commands and speech
`
`commands.” Id. at 16:4–2:21. Michmerhuizen does not focus on how audio from
`
`the media files can be sent from the digital media storage device to the vehicle.
`
`43. Michmerhuizen describes “a vehicle 100 [that] includes … a sound
`
`system, and an in-vehicle control system 106,” id. at 3:41–44, that “includes an
`
`output display 108, one or more knobs 110, one or more pushbuttons 112, and one
`
`or more tactile user inputs or pushbuttons 114, which facilitate controlling various
`
`vehicle functions,” id. at 3:54–60, including “to control playback of media files
`
`over the sound system,” id. at 3:66–4:3. It further describes that “a wireless and/or
`
`wired communication link 118 [may] be established between an audio system 104
`
`of vehicle 100 and digital media storage device 116 (e.g., a digital media storage
`
`device with a Bluetooth-enabled connection) of a vehicle occupant.” Id. at 4:57–
`
`Stern Declaration
`Ex. 2001 – Page 21
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`61. “The communication link between in-vehicle control system 106 and digital
`
`media storage device 116 enables extraction of metadata from the media files
`
`stored in digital media storage device 116 to in-vehicle control system 106.” Id. at
`
`6:34–37. “Subsequently, the playback of the media files is controlled from user
`
`interface 126 or audio input device 128.” Id. at 6:37–39. Michmerhuizen describes
`
`that this playback can be done using Bluetooth using an “advanced audio
`
`distribution profile (A2DP), which is used for controlling the streaming of audio
`
`data from digital media storage device 274 … to the system.” Id. at 8:65–9:2
`
`(emphasis added).
`
`44. Petitioner and Dr. Geier have not identified any evidence that
`
`Michmerhuizen teaches audio generated by a portable device for playing on a car
`
`audio/video system. While Petitioner and Dr. Geier point to Michmerhuizen’s
`
`disclosure of using A2DP for streaming audio as teaching this, Petition at 42–43,
`
`what Michmerhuizen in fact describes is the use of A2DP to transfer “audio data,”
`
`Michmerhuizen at 8:65–9:2. Because this audio data must be further decoded by
`
`the car audio system, Michmerhuizen does not actually teach the generation of
`
`audio on the portable device for playing on the car audio/video system. In contrast,
`
`Michmerhuizen teaches the transfer of packets of coded MP3 parameters from the
`
`portable device to the car audio/video system, as in the Case 3 that is depicted in
`
`the figure in Paragraph 29 above.
`
`Stern Declaration
`Ex. 2001 – Page 22
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`
`3.
`
`THE ID3V2 REFERENCES
`
`45. The ID3v2 References are two documents: (1) an article, ID3v2 made
`
`easy (Ex. 1004 at 1–2); and (2) an “informal standard,” ID3 tag version 2.3.0 (id.
`
`at 4–44). The informal standard describes “a flexible way of storing information
`
`about an audio file within itself to determine its origin and contents.” Id. at 4. It
`
`describes various types of metadata that can be stored w