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`IPR2018-00927
`PATENT NO. 8,155,342
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`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
`
`_________________________________________________________________
`
`BLITZSAFE TEXAS, LLC’S
`PRELIMINARY RESPONSE
`
`Case No. IPR2018-00927
`__________________________________________________________________
`
`
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`

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`IPR2018-00927
`PATENT NO. 8,155,342
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`I.
`
`Background ...................................................................................................... 1
`
`TABLE OF CONTENTS
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`The ’342 Patent ..................................................................................... 1
`
`Effective Filing Date ............................................................................. 2
`
`Level of Ordinary Skill in the Art ......................................................... 3
`
`Claim Construction................................................................................ 3
`
`Prior Unsuccessful Challenges .............................................................. 5
`
`Asserted Prior Art .................................................................................. 9
`
`1. Marlowe .................................................................................... 11
`
`2. Michmerhuizen ......................................................................... 12
`
`3.
`
`The ID3v2 References .............................................................. 14
`
`II.
`
`The Challenged Claims are Not Obvious in View of the Cited
`References ...................................................................................................... 15
`
`A.
`
`B.
`
`The Obviousness Standard .................................................................. 16
`
`The Cited References Do Not Teach or Disclose an Integration
`Subsystem Receiving Audio Generated by a Portable Device
`for Playing on a Car Audio/Video System .......................................... 17
`
`1.
`
`Petitioner Concedes that Marlowe Does Not Teach or
`Suggest Generating Audio on a Wirelessly Connected
`Portable Device for Playing on a Car Audio/Video
`System ....................................................................................... 18
`
`2. Michmerhuizen Does Not Teach or Disclose Generating
`Audio on a Portable Device for Playing on a Car
`Audio/Video System ................................................................. 18
`
`(a)
`
`(b)
`
`Petitioner’s Assertion That “Streaming Audio”
`Using “A2DP” Satisfies This Limitation Has
`Already Been Rejected by the Board ............................. 19
`
`Petitioner’s Argument That Audio Streaming Via
`A2DP Discloses Audio Generated by a Portable
`Device for Playing on a Car Audio/Video System
`is Contrary to the Evidence ............................................ 23
`
`i
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`IPR2018-00927
`PATENT NO. 8,155,342
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`III. Michmerhuizen is Not Prior Art .................................................................... 28
`
`A.
`
`B.
`
`The ’342 Patent is Entitled to Priority to the Filing Date of the
`’667 Application .................................................................................. 29
`
`The ’342 Patent is Entitled to Priority to at Least the
`Conception of the Claimed Invention, at Least as Early as
`March 21, 2006 .................................................................................... 33
`
`IV. The ID3v2 References are Not Prior Art ....................................................... 42
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Printed Publication Standard ........................................................ 43
`
`There is No Evidence That the ID3v2 References Were
`Available on the Internet Prior to the Critical Date ............................ 46
`
`Even if the ID3v2 References Were Available on the Internet,
`There is No Evidence That They Were Indexed or Cataloged to
`the Extent That They Were “Publicly Available” ............................... 46
`
`The Inclusion of the ID3v2 References in the File History for
`Meyer Does Not Make Them Prior Art Printed Publications ............. 48
`
`V.
`
`The General Plastics Factors Favor Denial of Institution ............................ 49
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`VI. Conclusion ..................................................................................................... 54
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`
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`ii
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`

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`Cases
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`
`
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`IPR2018-00927
`PATENT NO. 8,155,342
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`TABLE OF AUTHORITIES
`
`Apple Inc. v. Saint Lawrence Communications LLC,
`IPR2017-01075, Paper 8 (PTAB Sept. 21, 2017) ............................................... 45
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .................................................................... 43, 44
`
`Brown v. Barbacid,
`436 F.3d 1376 (Fed. Cir. 2006) .......................................................................... 34
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .......................................................................... 44
`
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387, Paper 43 (PTAB Dec. 24, 2014) ....................................... 16, 17
`
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ......................................... 49, 51
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 16
`
`Groupon, Inc. v. Blue Calypso LLC,
`CBM2013-00044, Paper 47 (PTAB Dec. 17, 2014)........................................... 45
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ............................................................................ 44
`
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) .......................................................................... 16
`
`Intel Corp. v. Alacritech, Inc.,
`IPR2017-01395, Paper 8 (PTAB Nov. 22, 2017) ............................................... 45
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................. 49
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 16, 25
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .................................................................... 33, 34
`
`iii
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`IPR2018-00927
`PATENT NO. 8,155,342
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`Netapp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) ................................................ 50
`
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) .................................................................... 33, 42
`
`Rohm & Hass Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) .......................................................................... 25
`
`SRI International, Inc. v. Internet Security Systems, Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) .......................................................................... 44
`
`Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc.,
`774 F.3d 968 (Fed. Cir. 2014) ............................................................................ 34
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 44
`
`Statutes
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`35 U.S.C. § 314 ........................................................................................................ 49
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`35 U.S.C. § 316 ........................................................................................................ 51
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`Other Authorities
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`37 C.F.R. § 42.65 ..................................................................................................... 25
`
`37 C.F.R. § 42.100 ..................................................................................................... 3
`
`37 C.F.R. § 42.104 ................................................................................................... 18
`
`Fed. R. Evid. 801 ..................................................................................................... 18
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`Fed. R. Evid. 802 ..................................................................................................... 25
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`Fed. R. Evid. 901 ............................................................................................... 25, 46
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`iv
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`IPR2018-00927
`PATENT NO. 8,155,342
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`EXHIBIT DESCRIPTION
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`EXHIBIT LIST
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`
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`Declaration of Richard Stern, Ph.D.
`
`Curriculum Vitae of Richard Stern, Ph.D.
`
`excerpts from Appendix B (Claim Chart for U.S. Patent
`No. 8,155,342 Against Accused Infotainment Systems of BMW
`Automobiles) from Plaintiff’s First Amended Disclosure of Asserted
`Claims and Infringement Contentions (Oct. 31, 2017), Blitzsafe Texas,
`LLC v. Bayerische Motoren Werke AG and BMW of North America,
`LLC, No. 2:15-cv-418 (E.D. Tex.)
`
`Declaration of Ira Marlowe
`
`Handwritten Notes of Conception of Invention
`
`Email from Mark Nikolsky to Josephine Lobello re Conflict Check
`(Mar. 22, 2006)
`
`McCarter & English LLP Conflict of Interest Report (Mar. 23, 2006)
`
`Fax from Mark Nikolsky to Ira Marlowe with Draft Drawings
`(Apr. 18, 2006)
`
`Fax from Mark Nikolsky to Ira Marlowe with Draft Drawings
`(Apr. 19, 2006)
`
`Email from Mark Nikolsky to Ira Marlowe with Draft Application
`(May 15, 2006)
`
`Email from Mark Nikolsky to Ira Marlowe with Draft Application
`(June 5, 2006)
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`Email from Kenneth Dell to Ira Marlowe re Open Balance Detail
`(Oct. 13, 2006)
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`Invoice from McCarter & English, LLP to Blitzsafe of America, Inc.
`(Apr. 24, 2006)
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`v
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`IPR2018-00927
`PATENT NO. 8,155,342
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`Institution should be denied because, as shown herein and by Patent
`
`Owner’s expert, Dr. Richard Stern,1 Petitioner has failed to demonstrate that the
`
`cited references teach or disclose each of the limitations of the Challenged Claims
`
`and because it has failed to demonstrate that each of the references is prior art to
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`the ’342 Patent. Additionally, the Board should exercise its discretion to deny
`
`institution as counseled by the General Plastics factors.
`
`I.
`
`BACKGROUND
`
`A. The ’342 Patent
`
`U.S. Patent No. 8,155,342 (the “’342 Patent,” Ex. 1001) describes and
`
`claims inventions relating to integrating a wireless portable device into a car stereo
`
`system. ’342 Patent at 8:38–46.2 Among its accomplishments, the ’342 Patent
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`enables “[c]ontrol of the [portable] device … using the car stereo or car video
`
`system, and information from the after-market device, such as channel, artist,
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`track, time, song, and other information, [can be] retrieved f[ro]m the [portable]
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`device, processed, and forwarded to the car stereo or car video system for display
`
`
`1 Dr. Stern is well qualified as an expert in the field of multimedia device
`
`integration. See Ex. 2001 (“Stern Declaration”) at ¶¶ 5–13; Ex. 2002 (CV). His
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`opinions relating to the ’342 Patent have been credited by the Board. See IPR2018-
`
`00090, Paper 15 at 19–20.
`
`2 Unless otherwise noted, citations are provided with reference to the internal page
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`number of exhibits.
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`1
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`IPR2018-00927
`PATENT NO. 8,155,342
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`thereon.” Id. at 8:46–51. Such systems were not possible prior to the invention of
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`the ’342 Patent because “signals generated by [wireless portable devices and car
`
`stereo systems] [we]re in proprietary formats” and it was therefore “necessary to
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`convert signals between such system.” Id. at 1:54–63. In order to overcome these
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`challenges, the ’342 Patent discloses and claims an “integration subsystem” or
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`module that can be positioned within the car audio/video system to receive data
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`from the portable device (such as track information, song information, artist
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`information, etc.) and process it into a format compatible with the car system. Id. at
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`5:23–30. This integration subsystem allows both data and commands to be
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`exchanged between the portable device and the car audio/video system so that the
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`user can access information relating to the audio and/or video files on the portable
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`device from the car stereo and use the car stereo controls to issue commands to the
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`portable device to play audio generated by the portable device. Id. at 33:43–35:62,
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`Figure 19. See also Stern Declaration at ¶ 34.
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`B.
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`Effective Filing Date
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`Petitioner submits that the Challenged Claims are entitled to an effective
`
`filing date no earlier than June 27, 2006. Petition at 9. As discussed in § III below,
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`this is incorrect, as the ’342 Patent is in fact entitled to priority to at least the
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`March 3, 2005 filing date of U.S. Patent Application No. 11,071,667 (“the ’667
`
`Application,” Ex. 1009). Patent Owner reserves the right to establish an earlier
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`2
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`IPR2018-00927
`PATENT NO. 8,155,342
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`effective filing date in any district court proceeding or in any other proceeding
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`where such a date may be necessary.
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`C. Level of Ordinary Skill in the Art
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`Petitioner states that the person of ordinary skill in the art (“POSA”) would
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`have had at least a bachelor’s degree in electrical engineering or equivalent
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`science/engineering degree and at least two years of experience in signal
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`processing and/or electronic system design, or would have had at least four years
`
`of experience in signal processing and/or electronic system design. Petition at 14.
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`Patent Owner agrees that this level of skill is appropriate. See also Stern
`
`Declaration at ¶¶ 35–38.
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`D. Claim Construction
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`Because the ’342 Patent is not expired, the broadest reasonable construction
`
`of each claim term is applied. 37 C.F.R. § 42.100(b). Petitioner, ignoring that
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`several terms from the claims of the ’342 Patent have already been construed by
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`the Board in previous IPRs, asserts that “[f]or the purposes of this Petition, no
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`explic[it] claim construction is needed.” Petition at 15. The Board’s prior
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`constructions, listed in the table below, should be followed here.
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`3
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`IPR2018-00927
`PATENT NO. 8,155,342
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`TERM
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`CONSTRUCTION
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`“integration subsystem” “a subsystem to perform at least: (1) connecting one or
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`more portable devices or inputs to the car audio/video
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`system via an interface, (2) processing and handling
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`signals, audio, and/or video information, (3) allowing a
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`user to control the one or more portable devices via the
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`car audio/video system, and (4) displaying data from the
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`one or more portable devices on the car audio/video
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`system”
`
`IPR2016-00118, Paper 19 at 11; IPR2016-00418,
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`Paper 13 at 15; IPR2016-00419, Paper 13 at 15–16;
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`IPR2016-01473, Paper 9 at 12; IPR2016-01476,
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`Paper 12 at 10
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`“a system which is subordinate to another system”
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`IPR2016-01473, Paper 9 at 12; IPR2016-01476,
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`Paper 12 at 10
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`“car audio/video
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`“a car audio system, a car video system, or a car audio
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`system”
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`and video system”
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`IPR2016-00418, Paper 13 at 16; IPR2016-00419,
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`Paper 13 at 17
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`4
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`IPR2018-00927
`PATENT NO. 8,155,342
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`TERM
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`CONSTRUCTION
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`“device presence
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`“a signal indicating that a portable device is connected to
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`signal”
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`the car audio/video system through the integration
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`subsystem”
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`IPR2016-00418, Paper 13 at 16
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`“audio generated by the
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`“if the integration subsystem either receives an ‘audio
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`portable device … [for
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`file’ or must decode what it receives in order to render
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`playing or subsequently
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`‘audio’ for playing at the car audio/video system, then
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`playing of the audio] on
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`there is no ‘audio generated by the portable device’ for
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`the car audio/video
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`[subsequent] playing [of the audio] at the car
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`system”
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`audio/video system”
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`IPR2018-00900, Paper 15 at 8–11
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`E.
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`Prior Unsuccessful Challenges
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`Twelve prior petitions for inter partes review of the ’342 Patent have been
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`filed, including one by Petitioner (among others). The previous petitions have
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`resulted in zero claims cancelled or amended (one remains pending the Board’s
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`institution decision). A brief summary of the previous IPRs is below:
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`IPR
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`PETITIONER(S)
`
`OUTCOME
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`IPR2016-00118
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`Unified Patents Inc.
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`Institution denied (Apr. 27, 2016)
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`5
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`IPR2018-00927
`PATENT NO. 8,155,342
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`IPR
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`PETITIONER(S)
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`OUTCOME
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`IPR2016-00418
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`Toyota Motor Corp. Terminated due to settlement after oral
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`argument (Mar. 10, 2017)
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` IPR2016-01533 American Honda
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`Joined with IPR2016-00418
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`Motor Co., Inc.
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`Terminated due to settlement after oral
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`IPR2016-01557 Hyundai Motor
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`argument (Mar. 10, 2017)
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`Company Ltd., et al.
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`IPR2016-01560 Nissan North
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`America, Inc., et al.
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`IPR2018-00090 Subaru of America,
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`“substantially identical to”
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`Inc., et al. (including
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`IPR2016-00418
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`Petitioner)
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`Institution denied (Apr. 20, 2018)
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`IPR2016-00419
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`Toyota Motor Corp.
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`Institution denied (July 19, 2016)
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`Rehearing denied (Aug. 31, 2016)
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`IPR2016-01445
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`Volkswagen Group
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`Terminated due to settlement before
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`IPR2016-01449
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`of America, Inc.
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`institution (Jan. 31, 2017)
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`IPR2016-01473
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`American Honda
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`Institution denied (Jan. 24, 2017)
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`Motor Co., Ltd.
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`IPR2016-01476
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`Hyundai Motor
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`Institution denied (Jan. 24, 2017)
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`Company Ltd., et al.
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`6
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`IPR2018-00927
`PATENT NO. 8,155,342
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`IPR
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`PETITIONER(S)
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`OUTCOME
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`IPR2018-00544
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`Jaguar Land Rover
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`Currently pending decision on
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`North America,
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`institution
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`LLC, et al.
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`Each of the prior petitions failed, at least in part, because the petitioners had
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`failed to show that the references that they relied on disclosed the “audio generated
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`by the portable device” limitations of the Challenged Claims.
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`In IPR2016-00118, the Board found that in one of the primary references,
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`Ohmura, “audio is generated on the car audio/video system by playing a
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`transferred music file and not generated on the portable device by playing a music
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`file on the portable device as is required by the claims.” Paper 19 at 20. The
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`petitioner conceded that its other primary reference, Owens, disclosed “all aspects
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`of the challenged claims … except for the wireless Bluetooth connection” and
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`alleged “it would have been obvious to substitute the Bluetooth interface of Ahn
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`for the wired bus of Owens.” Id. at 27. But, the Board found that the petitioner had
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`not shown that Owens and Ahn could be combined with a reasonable expectation
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`of success such that “Owen’s ‘head unit’ [could] instruct Ahn’s mobile device or
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`any other portable device to play the audio file and transmit/receive ‘audio
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`generated by the portable device’ as the result of playing the audio file in the
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`manner suggested by the claim.” Id. at 31.
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`7
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`IPR2018-00927
`PATENT NO. 8,155,342
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`In IPR2016-00419, the Board found that the primary reference, Ohmura, did
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`not disclose the “audio generated by the portable device” limitation because
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`“Ohmura’s audio is generated at car audio/video system 100 by playing a
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`transferred music file and is not generated on portable device 200a or 200b by
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`playing a music file on portable device 200a or 200b.” Paper 13 at 28.
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`In IPR2016-01473, the Board found that one of the primary references,
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`Marlowe — which is one of the references relied on here by Petitioner — “[did]
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`not disclose a wireless communication link.” Paper 9 at 15. Similarly, the
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`petitioners conceded that another primary reference, Simon, did not disclose audio
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`signals being transmitted over a wireless communication link. Id. at 22. The Board
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`found the petitioner’s attempts to rely on additional references to overcome these
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`shortcomings insufficient. For example, the petitioner asserted that Marlowe could
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`be combined with Plagge, which did include a wireless link. Id. at 15. But, Plagge
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`was insufficient because in it “the audio from the portable device [wa]s transmitted
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`through a wire connection, despite the disclosure of a wireless interface.” Id.
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`Similarly, the petitioner asserted that Marlowe and Simon could be combined with
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`Bhogal, but this was insufficient because Bhogal only contained “disclosure of
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`accessing or retrieving digital audio files,” which the Board found did not
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`“constitute[] receiving audio generated by the portable device over said wireless
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`communication link.” Id. at 18; see also id. at 22.
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`8
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`IPR2018-00927
`PATENT NO. 8,155,342
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`In IPR2016-01476, the Board found that the primary reference, Shibasaki,
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`did not disclose the “audio generated by the portable device” limitation because it
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`“expressly discloses that what MP3 player 20-2 ‘transmits’ over the Bluetooth
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`system and what car audio apparatus 10 ‘receive[s]’ is the ‘music file.’” Paper 12
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`at 19–20.
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`Finally, In IPR2018-00090, the Board found that the petitioner failed to
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`demonstrate that the primary reference, Clayton, teaches or suggests that the
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`“‘integration subsystem’ ‘receives audio generated by the portable device over said
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`wireless communication link for playing on the car audio/video system,’ as recited
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`in claims 49 and 73, and similarly addressed in claims 97 and 120.” Paper 15 at 25.
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`The Board found that Clayton teaches that audio content is transferred from a
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`portable device and then further decoded into a format understood by the car
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`audio/video system for playback. Id. at 20. The transfer of an audio file does not
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`meet the limitation that the integration subsystem receives “audio generated by the
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`portable device that is also for playing at the car audio/video system.” Id. at 18.
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`F. Asserted Prior Art
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`Petitioner now files the thirteenth and fourteenth petitions against the ’342
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`Patent. On April 24, 2018, Petitioner filed the petition for IPR2018-00926. The
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`9
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`IPR2018-00927
`PATENT NO. 8,155,342
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`next day,3 Petitioner filed the present Petition, alleging that the same claims are
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`invalid in view of the same prior art.
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`In the present Petition, Petitioner asserts that claims 49–64, 66, 68–88, 94–
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`97, 99–111, 113, 115–16, and 119–20 (collectively, “the Challenged Claims”) are
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`obvious in view of:
`
` U.S. Patent Application No. 2003/0215102 A1 to Ira Marlowe (“Marlowe,”
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`Ex. 1005);
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` U.S. Patent No. 7,870,142 to Mark Michmerhuizen, et al.
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`(“Michmerhuizen,” Ex. 1002); and
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` ID3.org, ID3v2 made easy (bearing URL “http://id3.org/easy.html” and date
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`“5/12/2003”) and M. Nilsson, ID3 tag version 2.3.0 (bearing URL
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`“http://id3.org/id3v2.3.0.html and dates “3rd February 1999” and
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`“5/12/2003”) (collectively, “the ID3v2 References,” Ex. 1004); and
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`(collectively, “the Cited References”). Petition at 15. But, as discussed below, the
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`Cited References fail to address the repeated deficiencies of the prior petitions.
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`3 Although the Petition here was filed on April 25, 2018, as indicated by the dates
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`in its Certificate of Compliance and Certificate of Service, see Petition at 77–78,
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`and in the Board’s E2E system, the Notice of Accord [of] Filing Date states that
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`the Petition “has been accorded the filing date of April 24, 2018,” see Paper 3 at 1
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`(emphasis added). Patent Owner believes that this is likely a typographical error.
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`10
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`IPR2018-00927
`PATENT NO. 8,155,342
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`1. Marlowe
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`The Petition relies on Marlowe as its primary reference. Marlowe, which
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`was previously asserted in IPR2016-01473, is a publication of an application that
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`the ’342 Patent claims priority to through several continuation-in-part applications.
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`See ’342 Patent at cover (“Related U.S. Application Data”). It relates to an “audio
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`device integration system for integrating after-market components such as satellite
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`receivers, CD players, CD changers, MP3 players, Digital Audio Broadcast (DAB)
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`receivers, auxiliary audio sources, and the like with factory-installed (OEM) or
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`after-market car stereo systems.” Marlowe at ¶ 2. It describes an “integration
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`system” that “connects to and interacts with the car stereo.” Id. at ¶ 10. Marlowe
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`describes formatting commands received from the car stereo’s control panel so the
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`after-market audio device is able to recognize the command. Id. Audio from the
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`audio device is channeled to the car stereo and information from the audio device
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`is converted to a format recognizable to the car stereo for display on the car
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`stereo’s display. Id. Marlowe describes the audio device, such as an MP3 player,
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`electronically connected to an interface and the interface electronically connected
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`with the car stereo. Id. at ¶¶ 42, 44.
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`As found by the Board in IPR2016-01473 and admitted by Petitioner,
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`Marlowe only discloses a wired connection between the integration system and the
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`after-market components. Paper 9 at 15; Petition at 19. It does not disclose a
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`wireless communications link. Id.
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`2. Michmerhuizen
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`Michmerhuizen discloses “a system and method for extracting and
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`processing meta data from media files accessible from a digital media storage
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`device, such as a media player, in [a] vehicle.” Michmerhuizen at 1:14–16. As
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`described by Michmerhuizen, a digital media storage device stores media files, id.
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`at 1:43–44, that contain both audio data and meta data, id. at 7:30–31. The meta
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`data “identifies the contents of the file.” Id. at 1:36–37. “For example, with digital
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`audio files, such as MP3 files, the meta data comprises a tagging format which
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`may include the title of the song, the artist’s name, the title of the album, track
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`number, genre, etc.” Id. at 1:37–41. The issue addressed by Michmerhuizen is how
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`the meta data can be extracted from these files on a digital media storage device
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`and be stored in an onboard memory of a vehicle control module “so that a user [in
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`the vehicle] may access and manipulate the media files via voice commands and
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`speech commands.” Id. at 16:4–2:21. It is not concerned with the issue of how
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`audio from the media files can be sent from the digital media storage device to the
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`vehicle. See Stern Declaration at ¶ 42.
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`Michmerhuizen describes “a vehicle 100 [that] includes … a sound system,
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`and an in-vehicle control system 106,” Michmerhuizen at 3:41–44, that “includes
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`an output display 108, one or more knobs 110, one or more pushbuttons 112, and
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`one or more tactile user inputs or pushbuttons 114, which facilitate controlling
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`various vehicle functions,” id. at 3:54–60, including “to control playback of media
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`files over the sound system,” id. at 3:66–4:3. It further describes that “a wireless
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`and/or wired communication link 118 [may] be established between an audio
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`system 104 of vehicle 100 and digital media storage device 116 (e.g., a digital
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`media storage device with a Bluetooth-enabled connection) of a vehicle occupant.”
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`Id. at 4:57–61. “The communication link between in-vehicle control system 106
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`and digital media storage device 116 enables extraction of meta data from the
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`media files stored in digital media storage device 116 to in-vehicle control system
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`106.” Id. at 6:34–37. “Subsequently, the playback of the media files is controlled
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`from user interface 126 or audio input device 128.” Id. at 6:37–39. Michmerhuizen
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`describes that this playback can be done using Bluetooth using an “advanced audio
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`distribution profile (A2DP), which is used for controlling the streaming of audio
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`data from digital media storage device 274 … to the system.” Id. at 8:65–9:2
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`(emphasis added).
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`The only evidence identified by Petitioner that Michmerhuizen teaches audio
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`generated by a portable device for playing on a car audio/video system is its
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`disclosure of using A2DP to stream “audio data.” Petition at 42–43. But the Board
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`has already rejected this argument in IPR2018-00090 where it found that the
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`disclosure in Clayton of “streaming audio” via A2DP was insufficient. See
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`Paper 15 at 18, as “the A2DP protocol enables transfer or the content as streaming
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`audio, which is further decoded at the content decoder to obtain a format
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`understood by the car audio system.” Id. at 20 (emphasis added). Here too,
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`Michmerhuizen describes the use of A2DP to transfer “audio data,”
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`Michmerhuizen at 8:65–9:2, which must be further decoded by the car audio
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`system. Petitioner does not provide any further explanation regarding why
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`Michmerhuizen’s disclosure of the use of A2DP to transfer audio data discloses
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`audio generated by a portable device for playing on a car audio/video system.
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`As discussed in § III below, because the applications to which
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`Michmerhuizen claims priority were filed after the date to which the ’342 Patent is
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`entitled priority, Michmerhuizen does not qualify as prior art to the ’342 Patent.
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`3.
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`The ID3v2 References
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`The ID3v2 References are actually two separate documents. The first is an
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`article entitled ID3v2 made easy. Ex. 1004 at 1–2. The second is an “informal
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`standard” entitled ID3 tag version 2.3.0. Id. at 4–44. The informal standard
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`describes “a flexible way of storing information about an audio file within itself to
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`determine its origin and contents.” Id. at 4. It describes various types of metadata
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`that can be stored within a file. Id. at 4. Each unit of information about an audio
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`file is stored within its own “frame.” Id. at 5. It describes “frames” that can include
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`information such as “the title of the recording,” “the date for the recording,” “the
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`length of the audiofile in milliseconds,” the “main artist(s),” and “a picture directly
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`related to the audio file.” Id. at 13, 14, 16, 18, 30.
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`Petitioner relies on the ID3v2 references only with respect to limitations
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`found in dependent claims 66, 68, 94, and 115. See Petition at 15.
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`As discussed in § IV below, because Petitioner has not established that when
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`or how the ID3v2 References were publically available, they do qualify as prior art
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`to the ’342 Patent.
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`II. THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED REFERENCES
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`Institution should be denied because Petitioner has not established that the
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`Challenged Claims are obvious in view of the Cited References. In particular, the
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`Petition is deficient because Petitioner has not shown that the Cited References
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`teach an integration system receiving audio generated by the portable device for
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`playing on the car audio/video system.4 The claimed “integration subsystem” is
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`found in all of the Challenged Claims because it is recited in independent claims
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`4 Patent Owner reserves the right to present additional argument and evidence that
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`the Cited References fail to teach or disclose additional limitations of each of the
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`Challenged Claims and that Petitioner has failed to show that a POSA would have
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`been motivated to combine the references with a reasonable expectation of success.
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`49, 73, 97, and 120, and the remaining Challenged Claims depend from claims 49,
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`73, and 97.
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`A. The Obviousness Standard
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`Obviousness is determined on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art, (2) any differences between
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`the claimed subject matter and the prior art, (3) the level of skill in the art, and
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`(4) where in evidence, so-called secondary considerations. Graham v. John Deere
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`Co., 383 U.S. 1, 17–18 (1966). However, a conclusion of obviousness “cannot be
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`sustained with mere conclusory statements; instead, there must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In determining
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`obviousness, the references must be considered as a whole; picking and choosing
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`from a reference only the favorable parts and ignoring the rest is prohibited. In re
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`Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).
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`Here, the Petition fails because it fails to explain how the combination of
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`references teaches each element of each claim. See C.B. Distributors, Inc. v.
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`Fontem Holdings 1 B.V., IPR2013-00387, P