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`IPR2018-01142
`Patent No. 7,489,786
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BMW OF NORTH AMERICA, LLC,
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`Petitioner,
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`v.
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`BLITZSAFE TEXAS, LLC,
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`Patent Owner.
`
`Patent No. 7,489,786
`Issue Date: December 11, 2002
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-01142
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`TABLE OF CONTENTS
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`IPR2018-01142
`Patent No. 7,489,786
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`I.
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`II.
`
`BACKGROUND ............................................................................................. 1
`A.
`Prior Unsuccessful Challenges .............................................................. 1
`B.
`Asserted Prior Art .................................................................................. 2
`C.
`Effective Filing Date ............................................................................. 3
`D.
`Level of Ordinary Skill in the Art ......................................................... 3
`E.
`Claim Construction................................................................................ 4
`THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED REFERENCES........................................................................... 6
`A.
`The Obviousness Standard .................................................................... 6
`B.
`The Cited References Do Not Teach or Disclose an “Interface”
`That Is Separate From the Car Stereo As Required By Each of
`the Independent Claims ......................................................................... 7
`The Cited References Do Not Teach or Disclose an “Auxiliary
`Input Source External to the Car Stereo” As Required By
`Independent Claim 1 ........................................................................... 14
`The Cited References Do Not Teach or Disclose a “Device
`Presence Signal” As Required By Independent Claims 57 and
`86 ......................................................................................................... 18
`III. THE GENERAL PLASTIC FACTORS FAVOR DENIAL OF
`INSTITUTION .............................................................................................. 22
`IV. CONCLUSION .............................................................................................. 26
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`C.
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`D.
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`ii
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`IPR2018-01142
`Patent No. 7,489,786
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`TABLE OF AUTHORITIES
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`Cases
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387, Paper 43 (PTAB Dec. 24, 2014) ........................................... 7, 8
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ............................................... 23
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 6
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) ............................................................................ 7
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................. 23
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 7
`Netapp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) .......................................... 23, 24
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`IPR2016-00421, Paper 13 (PTAB July 7, 2016) .................................................. 5
`
`Statutes
`35 U.S.C. § 301 ...................................................................................................... 4, 5
`35 U.S.C. § 314 ........................................................................................................ 22
`35 U.S.C. § 316 ........................................................................................................ 24
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`Other Authorities
`37 C.F.R. § 42.100 ..................................................................................................... 4
`37 C.F.R. § 42.104 ................................................................................................. 4, 5
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`iii
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`Exhibit
`2001
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`IPR2018-01142
`Patent No. 7,489,786
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`EXHIBIT LIST
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`Description
`Defendants’ Joint Disclosures Pursuant to P.R. 4-2 in Blitzsafe Texas,
`LLC v. Mitsubishi Electric Corporation, et al., Case No. 2:17-cv-
`00430 (E.D. Tex.), served March 14, 2018
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`i
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`IPR2018-01142
`Patent No. 7,489,786
`Institution should be denied because, as shown herein, Petitioner has failed
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`to demonstrate that the references teach or disclose each of the limitations of the
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`challenged claims.
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`I.
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`BACKGROUND
`Prior Unsuccessful Challenges
`A.
`Five prior petitions for inter partes review of the ’786 Patent have been
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`filed. The previous petitions all resulted in zero claims cancelled or amended. A
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`brief summary of the previous IPRs is below:1
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`IPR
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`PETITIONER(S)
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`OUTCOME
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`IPR2016-00421
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`Toyota Motor Corp.
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`IPR2016-00422
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`IPR2016-01448
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`Volkswagen Group
`of Am., Inc.
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`Institution as to all claims at issue here
`denied (July 7, 2016)2
`
`Institution denied (July 6, 2016)
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`Institution denied (Jan. 13, 2017)
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`
`1 Three additional petitions were filed on June 6, 2018: IPR2018-01203 by Jaguar
`Land Rover Ltd. and Jaguar Land Rover North America, LLC; and IPR2018-
`01211 and IPR2018-01214 by Daimler AG.
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`2 The Board instituted the ’421 Petition only as to claims 44 and 47, which relate to
`“docking stations,” and which are not challenged in the present petition. The ’421
`IPR was terminated due to settlement on February 21, 2017.
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`1
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`IPR2018-01142
`Patent No. 7,489,786
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`IPR
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`PETITIONER(S)
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`OUTCOME
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`IPR2016-01472
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`IPR2016-01477
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`Am. Honda Motor
`Co., Inc.
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`Hyundai Motor Co.
`Ltd., et al.
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`Institution denied (Feb. 2, 2017)
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`Institution denied (Jan. 27, 2017)
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`B. Asserted Prior Art
`Petitioner now files the two additional petitions against the ’786 Patent. In
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`the present petition, Petitioner asserts that claims 1–2, 4–8, 10, 13–14, 23–24, 57–
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`58, 60–65, 86, and 88–91 (collectively, “the Challenged Claims”)3 are obvious in
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`view of:
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`• U.S. Patent Publication No. 2005/0262528 A1 to Cormac Herley, et al.
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`(“Herley,” Ex. 1003);
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`• European Patent Application Publication No. EP 0950570 A2 to Kazuhiro
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`Ido, et al. (“Ido,” Ex. 1005); and
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`• U.S. Patent Publication No. 2002/0196134 to Robert Pierce Lutter, et al.
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`(“Lutter,” Ex. 1008)
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`3 Claims 1, 57, and 86 are independent. The remaining Challenged Claims depend
`from them. In IPR2018-01204, filed on the same day, Petitioner alleges that
`independent claim 92 and other claims dependent thereon are invalid in view of the
`same prior art.
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`2
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`Patent No. 7,489,786
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`(collectively, “the Cited References”). Petition at 12. 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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`C. Effective Filing Date
`Petitioner submits that the Challenged Claims are entitled to an effective
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`filing date “no earlier than December 11, 2002, which is the filing date of the
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`application for the ’786 Patent.” Petition at 12. Patent Owner states that, for the
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`purposes of this proceeding, a determination of the effective filing date is
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`unnecessary and thus does not respond to this characterization of the effective
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`filing date. Patent Owner reserves the right to establish an earlier effective filing
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`date in any district court proceeding or in any other proceeding if necessary.
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`D. Level of Ordinary Skill in the Art
`Petitioner states that the person of ordinary skill in the art (“POSA”) would
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`have “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 at least four years of
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`experience in signal processing and/or electronic system design.” Petition at 9.
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`Patent Owner agrees for the purposes of this proceeding that this level of skill is
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`appropriate.
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`E. Claim Construction
`Because the ’786 Patent is not expired, the broadest reasonable construction
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`of each claim term is applied. 37 C.F.R. § 42.100(b). Petitioner proposes that the
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`Board should apply constructions for three claim terms adopted by the Board in
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`previous IPRs relating to the ’786 Patent: (1) “portable”; (2) “interface”; and
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`(3) “device presence signal.” Petition at 9–10; see also IPR2016-00421, Paper 13
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`at 12, 15, 18; IPR2016-00422, Paper 12 at 15; IPR2016-01448, Paper 7 at 13;
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`IPR2016-01472, Paper 7 at 11, 13, 14; IPR2016-01477, Paper 13 at 10. For the
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`purposes of this preliminary response, Patent Owner assumes that the Board will
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`apply its prior constructions.
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`Notwithstanding that Petitioner “adopts the Board’s prior constructions,”
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`Petitioner also suggests that the Board apply different claim constructions
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`purportedly based on claim construction and infringement positions taken by
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`Patent Owner in the district court. See Petition at 10–11. But, Petitioner does not
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`propose alternate claim constructions based on these statements. This is improper
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`under 35 U.S.C. § 301(d) and 37 C.F.R. § 42.104(b)(3).
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`According to Section 301(d):
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`A written statement submitted pursuant to subsection (a)(2), and
`additional information submitted pursuant to subsection (c), shall not
`be considered by the Office for any purpose other than to determine
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`IPR2018-01142
`Patent No. 7,489,786
`the proper meaning of a patent claim in a proceeding that is ordered
`or instituted pursuant to section 304, 314, or 324.
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`35 U.S.C. § 301(d) (emphasis added). Petitioner is required by 37 C.F.R.
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`§ 42.104(b)(3) to identify the constructions that it proposes should be adopted by
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`the Board. Toyota Motor Corp. v. Blitzsafe Texas, LLC, IPR2016-00421, Paper 13
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`at 24 (P.T.A.B., July 7, 2016) (“The ‘construction’ referred to by 37 C.F.R.
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`§ 42.104(b)(3) is the construction proposed by the Petitioner, one that Petitioner
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`believes is the correct construction under applicable law and should apply in the
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`involved proceeding.”). Since Petitioner does not propose constructions that should
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`be adopted based on Patent Owner’s statements cited under 35 U.S.C. § 301(a)(2),
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`but instead adopts the Board’s prior constructions, Patent Owner’s prior statements
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`are irrelevant to these proceedings and should not be considered by the Board.
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`Additionally, the claim term “auxiliary input source,” which appears in
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`claims 1 and 14, should be construed to mean “a device that outputs audio by
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`headphone jack or other connector.” This is the construction that was agreed to by
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`Patent Owner and Petitioner in a related district court case. See Ex. 1009
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`(Plaintiff’s Mar. 14, 2018 Proposed Constructions and Extrinsic Evidence Pursuant
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`to Patent Rule 4-2) at 1; Ex. 2001 (Defendants’ Mar. 14, 2018 Joint Disclosures
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`Pursuant to P.R. 4-2) at 7.
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`Patent No. 7,489,786
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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 or disclose (1) an “interface” that is separate from the car stereo as required
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`by each of the independent claims; (2) an “auxiliary input source external to the car
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`stereo” as required by independent claim 1; and (3) a “device presence signal” as
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`required by independent claims 57 and 86.4
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`A. The Obviousness Standard
`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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`4 Patent Owner reserves the right to present additional argument and evidence that
`the Cited References fail to teach or disclose additional limitations of each of the
`Challenged Claims and that Petitioner has failed to show that a POSA would have
`been motivated to combine the references with a reasonable expectation of success.
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`Patent No. 7,489,786
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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 references, alone
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`or in combination, teach each element of each claim. See C.B. Distributors, Inc. v.
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`Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at 30–31 (PTAB Dec. 24,
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`2014).
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`B.
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`The Cited References Do Not Teach or Disclose an “Interface”
`That Is Separate From the Car Stereo As Required By Each of
`the Independent Claims
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`Independent claim 1 recites “a first connector electrically connectable to a
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`car stereo, a second connector electrically connectable to an after-market audio
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`device external to the car stereo,” and “an interface connected between said first
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`and second electrical connectors for channeling audio signals to the car stereo
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`from the after-market audio device, said interface including a microcontroller in
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`electrical communication with said first and second electrical connectors.” ’786
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`Patent at 21:32–35, 21:38–41 (emphasis added). Independent claims 57 and 86 are
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`similar, except that they recite “a first [and second] electrical connector
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`connectable” instead of “a first [and second] connector electrically connectable,”
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`id. at 26:14–16, 28:42–44, and recite “a portable MP3 player” (claim 57), id. at
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`26:15–20, and “an after-market audio device” (claim 86), id. at 28:43–47, instead
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`of “an after-market audio device.”
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`As Petitioner agrees, an “interface” is “a physical unit that connects one
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`device to another and that has a functional and structural identify separate from
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`that of both connected devices.” Petition at 10. But Petitioner has failed to identify
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`an interface that is functionally and structurally separate from a car stereo, and has
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`failed to identify a first electrical connector between the interface and the car
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`stereo. Instead, Petitioner attempts to artificially divide the car stereo of Herley
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`into multiple components, even though nothing in Herley describes the
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`components as being functionally or structurally separate.
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`Figure 1 of Herley, reproduced below, depicts a car stereo, 100, connected to
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`an external media source 116.
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`Herley at Figure 1
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`
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`Importantly, this figure does not depict an electrical wiring diagram or the
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`like of Herley. Rather, it depicts “a block diagram of a mobile audio system in
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`accordance with the present invention.” Herley at ¶ 14. Herley describes that its
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`“mobile audio system 100” (i.e., its car stereo), id. at ¶ 39, includes “a user
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`interface 102, a controller 104, a tuner 106, a storage component 108, a high speed
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`interface 110, a media database 112 and a sound system 114,” id. at ¶ 40. It also
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`describes that an “external media source 116” can be intermittently connected to
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`the system through the “high speed interface 110.” Id. at ¶ 42; see also id. at ¶ 43
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`(“It is to be appreciated that the external media source 116 can be detached and
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`Patent No. 7,489,786
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`removed from the system 100, swapped with another media source, be reattached
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`to the system, and the like and still be in accordance with the present invention.”).
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`Petitioner, however, attempts to manufacture separate structural components
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`out of Herley’s Figure 1 by arbitrarily drawing colored boxes around certain of
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`them. For example, Petitioner strangely identifies two of the boxes of Herley’s
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`Figure 1 as corresponding to the claimed “car stereo” even though they are on
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`opposite side of the figure. In particular, as shown in the annotated version of
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`Figure 1 of Herley from the Petition reproduced below, Petitioner identifies user
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`interface 102 (at the top-left of the figure) and sound system 114 (at the bottom
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`right) as the car stereo, even though there are numerous other system blocks
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`located between them and even though nothing in Herley suggests that these two
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`blocks should together be treated separately from the remainder of the blocks. See
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`also Petition at 17–19 (claim 1[2]): “User interface 102 and sound system 114
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`comprise a ‘car stereo’ ….”), 56 (claim 57[2]), 59 (claim 82[2]).
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`10
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`Petition at 25–26
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`Petitioner then identifies two other of the boxes of Herley’s Figure 1 as
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`corresponding to the claimed “interface.” In particular, as shown in the annotated
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`version of Figure 1 of Herley from the Petition reproduced above, Petitioner
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`identifies controller 104 and high speed interface 110 as the interface. See also
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`Petition at 25–26 (claim 1[5]: “Controller 104 and high speed interface 110
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`together comprise an ‘interface,’ ….”), 56 [claim 57[4]), 59 (claim 86[4]). But
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`interface 102 and sound system 114 (identified by Petitioner as the car stereo) and
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`Patent No. 7,489,786
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`controller 104 and high speed interface 110 (identified by Petitioner as the
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`interface) are, in fact, part of the same mobile audio system 100 (along with other
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`boxes), and Petitioner does not provide any explanation for why they should be
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`treated as functionally and structurally separate.
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`Relatedly, perhaps because Herley does not disclose a structurally separate
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`car stereo and interface, Petitioner has failed to adequately explain what it alleges
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`to be the “first connector electrically connectable” between the car stereo and the
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`interface, as is also required by the claims. Rather, through the use of color coding
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`as shown in the annotated version of Figure 1 from the Petition reproduced above,
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`Petitioner identifies two5 double headed arrows in Figure 1 of Herley, which
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`Herley does not even designate with any reference numeral, as corresponding to
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`the “first connector.” See Petition at 19.
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`But nothing in Herley indicates that the arrows are electrical connectors, and
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`Petitioner does not provide any reasoning to support that they are. See Petition at
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`24. Figure 1 of Herley does not provide an electrical wiring diagram, and Herley
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`does not indicate that the arrows therein are electrical connectors. Rather, Herley
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`5 Because Petitioner identifies two separate blocks of the mobile audio system 100
`(on opposite sides of Figure 1) as corresponding to the car stereo, Petitioner is
`forced to identify two separate “first connector[s].” This further shows that
`Petitioner is improperly attempting to create separate structural components out of
`Figure 1 where none exist.
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`Patent No. 7,489,786
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`describes Figure 1 as “a block diagram of a mobile audio system.” Herley at ¶ 14.
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`Indeed, in the one instance where Herley chose to specify an electrical connector
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`between the blocks of Figure 1, it did so explicitly. As alleged by Petitioner itself,
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`the high speed interface 110 of Herley is an electrical connector, and Herley
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`describes it as such.6 See Petition at 21 (identifying the high speed interface 110 as
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`the “second connector electrically connectable to an after-market audio device
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`external to the car stereo”); see also Herley at ¶ 42 (“The high speed interface 110
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`is connected to the controller 104 and is connected to the external media source
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`116. … The high speed interface 110 is an interface that permits sufficient data
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`rates for the media items stored in the external media source 116 when external
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`media source 116 is accessible. The high speed interface 110 can be implemented
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`utilizing a mechanism such as universal serial bus (USB), firewire, infrared, and
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`the like. Furthermore, networking technologies (e.g., wired and wireless) can also
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`6 Petitioner identifies high speed interface 110 as both part of the “interface,”
`Petition at 25, and as part of the “second connector,” id. at 21 (alleging that the
`claimed second connector corresponds to a “USB connection of Herley”; Herley
`identifies the “USB connection” as one way to implement the high speed interface
`110 (i.e., the USB connection is not something connected to the high speed
`interface; it is the high speed interface). See Herley at ¶ 42), which is connected to
`the interface. This further shows Petitioner’s struggle to reconcile Herley’s
`disclosure of a single structural car stereo with Petitioner’s attempts to divide the
`car stereo up into separate, electrically connected components.
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`be employed for the high speed interface 110.”). By contrast, Herley does not
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`describe any electrical connections between the remainder of the blocks of Figure
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`1, likely because the blocks are all part of the same structural system and therefore
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`no electrical connections are required between them.
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`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
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`Cited References teach an “interface” that is a physical unit with a structural and
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`functional identity separate from the car stereo, as it asserts.
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`C. The Cited References Do Not Teach or Disclose an
`“Auxiliary Input Source External to the Car Stereo” As
`Required By Independent Claim 1
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`Independent claim 1 recites “a third connector electrically connectable to
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`one or more auxiliary input sources external to the car stereo and the after-market
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`audio device.” ’786 Patent at 21:35–38.
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`Petitioner’s Ground 1 alleges that this limitation is disclosed by Herley. See
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`Petition at 22–25. In particular, Petitioner alleges that Herley’s “tuner 106”
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`corresponds to the claimed “auxiliary input.” Id. at 23 (“Herley discloses tuner 106
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`being connected to controller 104. Tuner 106 ‘can receive broadcasts, e.g., AM
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`and/or FM broadcasts, satellite radio broadcasts, network broadcasts and the like),’
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`and ‘provide[s] audio streams or audio content (e.g., analog or digital) to the
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`controller 104.’” (citations omitted)).
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`But, as explained with respect to “interface” limitation above, tuner 106 is
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`not external to the car stereo. See § II.B infra. Rather, it is part of the car stereo
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`itself. Herley describes its mobile audio system 100 as a single structure
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`“includ[ing] a user interface 102, a controller 104, a tuner 106, a storage
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`component 108, a high speed interface 110, a media database 112 and a sound
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`system 114.” Herley at 40. Petitioner, however, attempts to identify tuner 106 as
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`separate structural components by arbitrarily drawing a separate colored box
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`around it (as shown in the annotated version of Figure 1 of Herley from the
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`Petition reproduced above). But Herley only describes a single box of Figure 1 as
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`corresponding to an “external” component: the “external media source 116,” which
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`“can be detached and removed from the system 100.” Id. at 42.
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`Additionally, tuner 106 is not an “auxiliary” device. The ’786 Patent itself
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`explains that a tuner is part of the car stereo itself, see, e.g., ’786 Patent at 1:14–20
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`(“Automobile audio systems have continued to advance in complexity and the
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`number of options available to automobile purchases. Early audio systems offered
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`a simple AM and/or FM tuner, and perhaps an analog tape deck for allowing
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`cassettes, 8-tracks, and other types of tapes to be played while driving. Such early
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`systems were closed, in that external devices could not easily be integrated
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`therewith.”), and distinguishes between such components of the car stereo and
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`“auxiliary input sources,” which are external and need to “be integrated with the
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`Patent No. 7,489,786
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`car stereo,” id. at Abstract. This is why the claims require “a third connector” to
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`connect the “auxiliary input source” to the car stereo, and why the parties to the
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`district court litigation, including Patent Owner and Petitioner, agreed that an
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`“auxiliary input source” is “a device that outputs audio by headphone jack or other
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`connector.”
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`Relatedly, perhaps because the tuner 106 is part of the car stereo of Herley,
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`Petitioner has failed to adequately explain what it alleges to be the “third connector
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`electrically connectable” to the tuner 106, as is also required by the claims, and has
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`failed identify any evidence that Herley’s tuner 106 outputs audio by headphone
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`jack or other connection, or to even allege that it does so. Rather, through the use
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`of color coding as shown in the annotated version of Figure 1 from the Petition
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`reproduced above, Petitioner identifies a double headed arrow between the tuner
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`106 and the controller 104, which Herley does not even designate with any
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`reference numeral, as corresponding to the “third connector.” See Petition at 24.
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`But, as explained with respect to the “interface” limitation above, nothing in
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`Herley indicates that the arrows are an electrical connector, and Petitioner does not
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`provide any reasoning that supports that they are. See § II.B infra. Petitioner does
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`not provide any reasoning as to why it believes that the arrows are electrical
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`connectors, see Petition at 24, and Herley does not indicate that the arrows therein
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`are electrical connectors. Rather, Herley describes Figure 1 as “a block diagram of
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`Patent No. 7,489,786
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`a mobile audio system,” Herley at ¶ 14, and only describes a single electrical
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`connector between the blocks of Figure 1: high speed interface 110 between the
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`external media source 116 and the controller 104. See Petition at 21 (identifying
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`the high speed interface 110 as the “second connector electrically connectable to
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`an after-market audio device external to the car stereo”); see also Herley at ¶ 42
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`(“The high speed interface 110 is connected to the controller 104 and is connected
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`to the external media source 116. … The high speed interface 110 is an interface
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`that permits sufficient data rates for the media items stored in the external media
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`source 116 when external media source 116 is accessible. The high speed interface
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`110 can be implemented utilizing a mechanism such as universal serial bus (USB),
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`firewire, infrared, and the like. Furthermore, networking technologies (e.g., wired
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`and wireless) can also be employed for the high speed interface 110.”). By
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`contrast, Herley does not describe any electrical connections between the
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`remainder of the blocks of Figure 1, likely because the blocks are all part of the
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`same structural system and therefore no electrical connections are required
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`between them.
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`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
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`Cited References teach an “auxiliary input source external to the car stereo,” as it
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`asserts.
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`D. The Cited References Do Not Teach or Disclose a “Device
`Presence Signal” As Required By Independent Claims 57
`and 86
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`Independent claim 57 recites “said interface including a microcontroller in
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`electrical communication with said first and second electrical connectors, said
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`microcontroller pre-programmed to execute: a first pre-programmed code portion
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`for generating a device presence signal and transmitting the signal to the car
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`stereo to maintain the car stereo in an operational state ….” ’786 Patent at
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`26:19–27 (emphasis added). Independent claim 86 is similar, except that it
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`specifically recites that the “transmitting the signal to the car stereo” is “through
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`said first electrical connector” and similarly recites “an interface connected
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`between said first and second electrical connectors for transmitting video
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`information from the after-market video device to the car stereo, the interface
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`including a microcontroller in electrical communication with said first and second
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`electrical connectors, said microcontroller pre-programmed to execute: a first pre-
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`programmed code portion for generating a device presence signal and
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`transmitting the signal to the car stereo through said first electrical connector to
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`maintain the car stereo in an operational state responsive to signals generated by
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`the after-market video device.” Id. at 28:47–56 (emphasis added).7
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`Petitioner’s Ground 2 alleges that this limitation is rendered obvious by
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`Herley in view of Ido and Lutter. See Petition at 50–55 (claim 6), 56 (claim
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`element 57[5]), 60 (claim element 86[5]). In particular, Petitioner relies on an icon
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`displayed on the GUI 30 of Lutter as disclosing this limitation. See Petition at 51
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`(“Audio device manage 14 provides a signal to display detected audio devices on
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`GUI 30, by causing GI 30 to display icons representing the detected audio devices.
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`The icons remain displayed on GUI 30 based on the detection of the audio devices,
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`and therefore the GUI 30 (part of the car stereo) is maintained ‘in a state
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`responsive to the processed data and audio signals.’” (citations omitted)).
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`Petitioner, however, admits that displayed icons indicating a connected USB
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`device are not a “device presence signal” as described by the ’786 Patent. See
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`Petition at 11 (alleging (incorrectly) that “Patent Owner interprets displayed icons
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`indicating a connected USB device as comprising a ‘device presence signal’ even
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`though this scope is not described in the ’786 Patent” (citations omitted, emphasis
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`added)).
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`7 Dependent claim 6 similarly recites “said interface generates a device presence
`signal for maintaining the car stereo in a state responsive to processed data and
`audio signals.” Id. at 22:13–15.
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`19
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`Rather, Petitioner attempts to argue that “Lutter’s disclosure is consistent
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`with Patent Owner’s interpretation of” the limitation. Petition at 52. But Patent
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`Owner never advanced any such interpretation of this limitation, which is
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`inconsistent with the claim construction and infringement contention positions
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`taken by Patent Owner in district court. First, in the district court litigation, Patent
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`Owner proposed construing “device presence signal” to mean “a continuously
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`transmitted signal indicating an audio device is present.” Ex. 1009 at 2. An icon
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`displayed on a GUI is not, under any interpretation, “a continuously transmitted
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`signal.” Second, Patent Owner’s infringement contentions did not contend that an
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`icon displayed on a GUI satisfied this limitation. Rather, Patent Owner’s
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`infringement contentions, which were “preliminary in nature” and made prior to
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`any review of documentation or source code produced by Petitioner showing the
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`actual operation of the accused instrumentalities, see Ex. 1013 at 1, explained that
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`the presence of “a USB graphic … indicating that a compatible device is connected
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`and recognized” provided evidence that a device presence signal was generated, id.
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`at 96. The contentions did not assert that the graphic itself satisfied the limitation.
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`Rather, the contentions went on to explain:
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`The device presence signal is generated when at least the
`microcontroller of the interface (and potentially other microcontrollers
`on one or more circuit boards of the device integration system)
`executes pre-programmed code stored in onboard flash and/or other
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`memory modules (such as flash memory modules), and/or within
`firmware elsewhere in the interface (such as within the
`microcontroller itself).
`The specific manner in which the interface implements the device
`presence signa
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