Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: November 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01142
`Patent 7,489,786 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: November 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01142
`Patent 7,489,786 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2018-01142
`Patent 7,489,786 B2
`
`
`I.
`INTRODUCTION
`BMW of North America, LLC (“Petitioner”) filed a Petition requesting
`inter partes review of claims 1, 2, 4–8, 10, 13, 14, 23, 24, 57, 58, 60–65, 86,
`and 88–91 (“the challenged claims”) of U.S. Patent No. 7,489,786 B2
`(Ex. 1001, “the ’786 patent”). Paper 2 (“Pet.”). Blitzsafe Texas, LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which states that inter
`partes review may not be instituted unless “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” Having considered the Petition and the
`Preliminary Response, and for the reasons stated below, we do not institute
`inter partes review of the ’786 patent.
`
`A. Related Matters
`The parties indicate that the ’786 patent is the subject matter of district
`court litigation pending in the Eastern District of Texas. Pet. 61–62; Paper
`6, 1–2.
`The ’786 patent has been challenged in many AIA proceedings:
`IPR2016-00421, IPR2016-00422, IPR2016-01448, IPR2016-01472,
`IPR2016-01477, IPR2018-01203, IPR2018-01204, IPR2018-01211, and
`IPR2018-01214. Pet. 49–50; Paper 6, 2.
`
`B. The ’786 Patent (Ex. 1001)
`The ’786 patent is entitled “Audio Device Integration System.” Ex.
`1001, [54] (emphasis omitted). According to the ’786 patent, a “particular
`problem with integrating after-market audio systems with existing car
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`stereos is that signals generated by the car stereo is in a proprietary format,
`and is not capable of being processed by the after-market system.” Id. at
`1:36–39. “Thus, in order to integrate after-market systems with car stereos,
`it is necessary to convert signals between such systems.” Id. at 1:4244.
`The ’786 patent is directed to an audio device integration system that
`allows after-market audio devices to be integrated for use with an existing
`car stereo system, such that control commands can be issued at the car stereo
`for execution by the audio device and data from the audio device can be
`displayed on the car stereo. Id. at [57], 2:12–42. More specifically, control
`commands generated at the car stereo are received, converted into a format
`recognizable by the after-market audio device, and dispatched to the device
`for execution. Id. at [57], 2:35–40. In addition, information from the audio
`device, such as track, channel, song, and artist information, is received,
`processed, converted into a format recognizable by the car stereo, and
`dispatched to the stereo for display. Id. at [57], 2:40–47. The audio device
`could, for example, comprise a “CD player, CD changer, MP3 player,
`satellite receiver, [or] digital audio broadcast (DAB) receiver.” Id. at 4:28–
`30; see id. at [57], 2:23–26. Figures 2A–2C are reproduced below:
`
`
`
`
`Figures 2A–C illustrate embodiments in which a car stereo is integrated with
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`a CD player (Figure 2A), an MP3 player (Figure 2B), and a satellite radio or
`DAB receiver (Figure 2C). Id. at 3:14–23.
`In addition, an external audio device as well as auxiliary input sources
`may be integrated with a car stereo. Id. at [57], 2:53–56. A user then “can
`select between the external audio device and the auxiliary input using the
`controls of the car stereo.” Id. at 2:56–57. Figure 1 is reproduced below:
`
`
`Figure 1 illustrates an embodiment integrating a car stereo with a CD player,
`an MP3 player, and a satellite radio or DAB receiver, as well as a number of
`auxiliary input sources. Id. at 3:12–13, 5:14–27.
`As shown in the above figures, central to the ’786 patent is an
`“interface” positioned between the car stereo and the audio device(s) and
`auxiliary input(s). See, e.g., id. at Fig. 1, 2A–C, 5:33–36. The interface
`allows for the integration of the audio devices and auxiliary inputs with the
`OEM or after-market car stereo. Id. at 5:33–36.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 57, and 86 are independent.
`Claims 2, 4–8, 10, 13, 14, 23, 24 depend directly or indirectly from claim 1.
`Claims 58 and 60–65 depend directly or indirectly from claim 57. Claims
`88–91 depend directly or indirectly from claim 86.
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`
`Claim 1, reproduced below, is illustrative:
`1.
`An audio device integration system comprising:
`a first connector electrically connectable to a car stereo;
`a second connector electrically connectable to an after-
`market audio device external to the car stereo;
`a third connector electrically connectable to one or more
`auxiliary input sources external to the car stereo and the after-
`market audio device;
`an interface connected between said first and second
`electrical connectors for channeling audio signals to the car
`stereo from the after-market audio device, said interface
`including a microcontroller in electrical communication with
`said first and second electrical connectors, said microcontroller
`pre-programmed to execute:
`a first pre-programmed code portion for remotely
`controlling the after-market audio device using the car
`stereo by receiving a control command from the car stereo
`through said first connector in a format incompatible with
`the after-market audio device, processing the received
`control command into a formatted command compatible
`with the after-market audio device, and transmitting the
`formatted command to the after-market audio device
`through said second connector for execution by the after-
`market audio device;
`for
`a second pre-programmed code portion
`receiving data from the after-market audio device through
`said second connector in a format incompatible with the
`car stereo, processing the received data into formatted data
`compatible with the car stereo, and transmitting the
`formatted data to the car stereo through said first connector
`for display by the car stereo; and
`a third pre-programmed code portion for switching
`to one or more auxiliary input sources connected to said
`third electrical connector.
`Ex. 1001, 21:31–64.
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`
`D. Asserted Prior Art and Grounds of Unpatentability
`The Petition identifies the following references in connection with
`Petitioner’s challenge of unpatentability (Pet. 12–16):
`a) Herley: U.S. Patent Application Pub. No. 2005/0262528 A1, filed
`in the record as Exhibit 1003;
`
`b) Ido: European Patent Application Pub. No. EP 0950570 A2, filed
`in the record as Exhibit 1005; and
`
`c) Lutter: U.S. Patent Application Pub. No. 2002/0196134 A1, filed
`in the record as Exhibit 1008.
`
`Petitioner asserts the following grounds of unpatentability based on
`the afore-mentioned references (Pet. 12):
`
`Basis
`Challenged Claims
`1, 2, 4, 7, 8, 10, 13, 14, 23, and 24 § 103(a)
`5, 6, 57, 58, 60–65, 86, and 88–91 § 103(a)
`
`References
`Herley and Ido
`Herley, Ido, and Lutter
`
`Petitioner also relies on a Declaration of Mr. James T. Geier, filed as
`Exhibit 1002 (“Geier Declaration”).
`
`II. DISCUSSION
`
`Claim Construction
`A.
`In an inter partes review, the Board interprets claims terms of an
`unexpired patent using the “broadest reasonable construction in light of the
`specification of the patent.” 37 C.F.R. § 42.100(b) (2012); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A claim term will be
`interpreted more narrowly than its ordinary and customary meaning only
`where: (1) the “patentee sets out a definition and acts as [its] own
`lexicographer,” or (2) the “patentee disavows the full scope of a claim term
`either in the specification or during prosecution.” Aventis Pharma S.A. v.
`Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). We note that only
`those claim terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`
`“interface”
`1.
`Petitioner correctly notes that the Board previously construed the term
`“interface” to mean “a physical unit that connects one device to another and
`that has a functional and structural identity separate from that of both
`connected devices.” Pet. 10 (referring to the Decision on Institution in
`IPR2016-00421, Ex. 1007, 1215, which concerns the ’786 patent). Patent
`Owner, without disputing the construction, acknowledges that we will apply
`it in this proceeding. Prelim. Resp. 4. Accordingly, for purposes of this
`Decision, we review Petitioner’s challenge of unpatentability applying the
`prior Board construction of “interface.”
`
`“auxiliary input source”
`2.
`Petitioner does not offer a construction for “auxiliary input source,”
`but Patent Owner does. Prelim. Resp. 5. Patent Owner proffers the agreed-
`to district court claim construction (Ex. 1009), in which the parties construed
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`the term to mean “a device that outputs audio by headphone jack or other
`connector.” For purposes of this Decision, we adopt the claim construction
`that the parties have agreed to in district court, as stated in this record: “a
`device that outputs audio by headphone jack or other connector.” Ex. 1009,
`1.
`
`B.
`
`Principles of Law
`
`Obviousness
`1.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when in evidence, objective evidence
`of nonobviousness, i.e., secondary considerations. Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`Petitioner asserts that a “person of ordinary skill in the art relevant to
`the ’786 patent would have had: at least a Bachelor’s degree in electrical
`engineering or equivalent science/engineering degree and at least two years
`of experience in signal processing and/or electronic system design, or would
`have at least four years of experience in signal processing and/or electronic
`system design.” Pet. 9 (citing Ex. 1002 ¶¶ 21–24). Patent Owner agrees that
`this level of ordinary skill in the art is appropriate. Prelim. Resp. 3. We
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`adopt the level of ordinary skill as articulated by Petitioner, except that we
`delete the qualifier “at least” to eliminate vagueness. The qualifier expands
`the range indefinitely without an upper bound and thus preclude a
`meaningful indication of the level of ordinary skill in the art.
`
`Petitioner’s Burden
`2.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Summary of Asserted Prior Art
`C.
`The obviousness grounds rely on Herley, Ido, and Lutter. Therefore,
`we summarize these references below.
`
`Overview Herley (Ex. 1003)
`1.
`Herley is entitled “Smart Car Radio.” Ex. 1003, [54] (emphasis
`omitted). Herley relates to an audio content delivery system that can be
`portable and can include an interface that facilitates utilization in an
`automobile. Ex. 1003 ¶ 10. Figure 1 of Herley is reproduced below:
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`
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`Figure 1 is a block diagram of mobile audio system 100. Id. ¶ 14. System
`100 includes user interface 102, controller 104, tuner 106, storage
`component 108, high speed interface 110, media database 112, sound system
`114, and external media source 116. Id. ¶¶ 40, 42. User interface 102
`enables a user to select, control, and obtain content to be received and
`played, and can include a touch screen or physical push buttons. Id. ¶¶ 41,
`58. Controller 104 interfaces and/or controls other components of system
`100. Id. Media from external media source 116 can be copied to media
`database 112 via high speed interface 110, which can be a universal serial
`bus (USB), firewire, or infrared connection. Id. ¶ 42. Sound system 114,
`which can be a car radio or speaker system, receives and plays the media
`audio stream. Id. ¶ 48. External media source 116 can be a portable
`compact disc (CD) player, portable digital video disc (DVD) player, portable
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`hard drive, flash memory, personal digital assistant, or MP3 player. Id.
`¶¶ 44, 137.
`
`Overview of Ido (Ex. 1005)
`2.
`Ido is entitled “Automotive Information System, Automotive
`Computer System, and Method of Controlling the Automotive Information
`System.” Ex. 1005, [54] (emphasis omitted). Ido relates to an automobile
`information system that consolidates a plurality of information apparatuses,
`such as a car audio system, car navigation system, voice recognition system,
`hands-free mobile telephone, and security system, by providing a means to
`convert data between different types of data buses. Id. ¶ 1. Figure 2 of Ido
`is reproduced below:
`
`
`Figure 2 is a block diagram of the automotive information system,
`illustrating CPU module 11, support module 12, external unit 30, and option
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`unit 40. Id. ¶ 80. A user can operate the system via external unit faceplate
`15, for example, by pressing a key to select the CD player source. Id. ¶¶ 72,
`118. Option unit 40 devices, such as CD-ROM auto-changer unit 7, are
`connected to the system via USB serial bus B3. Id. ¶ 77. Each of the
`devices connected to the USB, such as CD-ROM auto-changer unit 7, “is
`adapted to transmit and receive [data] to and from other [devices] in a form
`that conforms with the USB” protocol. Id. ¶ 78. Data read from the CD-
`ROM device is converted from ATAPI parallel form to a serial form that
`conforms with USB. Id. Ido discloses that “all kinds of data are exchanged
`[and] processed in the form of digital data through, for example, the USB,
`regardless of whether the data is audio data or character or other data.” Id.
`¶ 160.
`
`Overview of Lutter (Ex. 1008)
`3.
`Lutter is entitled “Method and Apparatus for Managing Audio
`Devices.” Ex. 1008, [54] (emphasis omitted). Lutter is directed to a vehicle
`audio manager system, which detects different portable audio sources that
`are brought into the vehicle and connects the sources to output devices such
`as speakers or headsets. Id. ¶¶ 14–15. Figure 2 of Lutter is reproduced
`below:
`
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`Figure 2 depicts an example of a graphical user interface (GUI) 30
`that is coupled to the audio manager system. Id. ¶ 16. The GUI 30 displays
`audio sources, such as a cellular phone 38 (shown as icon 32 on the GUI),
`CD player 24 (icon 34), and radio 37 (icon 36), that are connected wirelessly
`or hardwired to the audio manager of vehicle 12. Id. The audio manager
`allows a user to selectively connect the different audio sources to the
`different output devices by dragging and dropping source icons over the
`output icons. Id. ¶ 20. For example, “to output a cellular telephone
`conversation over the car Speakers 20A–20D and the headset 29, an operator
`simply drags icon 32 over the speaker icons 20A–20D and the headset icon
`29. Id.
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`
`D.
`
`Analysis of Petitioner’s Contentions
`
`Formatted Command Limitation
`1.
`Independent claims 1 and 57 require that the “interface” include a
`microcontroller programmed to execute a pre-programed code portion for
`remotely controlling the after-market audio device or MP3 player “using the
`car stereo by . . . processing the received control command into a formatted
`[control] command compatible with” the after-market audio device or MP3
`player. See Ex. 1001, 21:4551, 26:2833 (“formatted command”
`limitation). Petitioner contends that Herley, in view of Ido, teaches the
`limitation. Pet. 37. First, Petitioner focuses on Herley’s user interface 102
`(as part of the “car stereo”), which issues a “control command” for controller
`104 to control components of Herley’s system. Id. at 3132. Second, as to
`the formatted commands, Petitioner argues that Herley transmits media in
`external media sources 116 (“after-market audio device” or “MP3 player”)
`to controller 104 (“interface”), presumably in response to the control
`command issued by the user interface 102, via high speed interface 110
`using USB. Id. Similarly, Petitioner points to Ido’s support module 12
`(“interface”) as receiving audio data or other digital data (and presumably
`control commands issued through the faceplate of Ido’s “car stereo”)
`through a USB bus connection from CD-ROM unit 14 or CD-ROM auto-
`changer 7. Id. Petitioner focuses on the USB bus for two purposes. First,
`Petitioner identifies the USB bus as the second connector that separates the
`after-market audio device or MP3 player from the interface. Id. Second,
`Petitioner alleges that Ido converts the data received at the USB bus for
`transmission to the PCI Bus. Id. at 38. In sum, Petitioner argues that the
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`“form conversion” from USB to PCI Bus equates to the processing of the
`control command into a formatted command.
`We do not agree with Petitioner that the “form conversion” identified
`in Ido satisfies the limitation. The claim language requires both a received
`control command and a formatted control command. The required
`“formatting” is for making the control command compatible with the after-
`market audio device or MP3 player. For instance, claim 1 states that the
`processing of the received command (from the car stereo) results in a
`“formatted command compatible with the after-market audio device.” The
`specification further describes this “formatted command” as a “new
`command that is in a format compatible with the after-market CD player”
`because the car stereo command is in a proprietary format not
`understandable to the CD changer. See Ex. 1001, 17:2618:2 (emphasis
`added). Thus, in a system where the car stereo and the after-market CD
`player are not compatible because they do not understand each other’s
`commands, the formatting from PCI bus to USB bus format (and vice versa)
`alone does not address the incompatibility problem. Ido’s formatting of data
`from one bus protocol to another may solve part of the incompatibility—that
`is, Ido modifies the signal carrying the car stereo command so that the
`command may be transported to a different type of data bus. But unless the
`car stereo command itself is changed to another command that the after-
`market CD player can execute, the command from the car stereo will not be
`understood by the CD player, even though the format of the signal carrying
`the command is changed from one data bus protocol format to another.
`Thus, as the claims require, the received command (from the car stereo)
`must be different from the formatted command (issued to the device), and
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`neither Ido’s disclosures nor Petitioner’s explanation of those disclosures
`explains that the control command from the car stereo is different in any
`material way from the command that the MP3 player or after-market audio
`device understands. Alleging a conversion from USB format to another data
`bus format alone is not enough to meet this limitation, because with either
`format, the same command may be transmitted. There is no evidence in
`either Herley or Ido of the command itself being converted to another
`command for the sake of compatibility with the device.
`We are not persuaded by Petitioner’s argument based on Patent
`Owner’s assertion in district court that the allegedly infringing products
`meet this limitation because they use USB formatting. See Pet. 39
`(Petitioner explaining that its theory of unpatentability aligns with Patent
`Owner’s alleged assertion that converting data from USB to a local bus form
`meets the limitation). On this point we are not convinced that Petitioner’s
`contentions regarding the use of USB formatting are supported by Patent
`Owner’s district court infringement contentions. The district court record
`shows that Patent Owner identified converting (1) the received command to
`USB “and [(2)] device-specific protocols understandable to the after-market
`audio device.” Ex. 1013, 74. Thus, even if we were to agree with Patent
`Owner’s position on claim construction in district court, we would not be
`convinced by Petitioner’s position that USB formatting alone is enough to
`satisfy the claims. The “device-specific protocol” conversion is also needed.
`Consequently, Petitioner has failed to show that Herley and Ido teach the
`formatted command limitation, under either the plain meaning of the claim
`or under Patent Owner’s infringement allegations in district court.
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`
`Interface
`2.
`As stated above, Petitioner has identified Herley’s controller and, in
`the alternative, Ido’s support module as teaching the recited “interface.” We
`have construed this term to mean “a physical unit that connects one device to
`another and that has a functional and structural identity separate from that of
`both connected devices.” See supra Section II.A.1. Although Petitioner
`argues that the identified “interfaces” are “between” certain alleged
`connectors, Petitioner does not explain how or why either Herley’s
`controller or Ido’s support module is a physical unit that has a functional and
`separate identity from the car stereo. Patent Owner points out this omission
`by Petitioner. Prelim. Resp. 8. And we agree that the omission is
`significant, particularly because Patent Owner raises sufficient doubt as to
`whether Petitioner’s identification of the car radio and the alleged
`“interface” show units that they are physically separate.
`For the Herley reference, Petitioner has drawn boxes around the user
`interface and sound system as being the recited “car stereo,” and separately
`drawn a box around controller 104 and high speed interface 110 as being the
`“interface.” Each component of Herley’s system has its own “arrow” to
`controller 104. See Pet. 13 (showing annotated Figure 1 of Herley with
`green boxes to denote the “car stereo” and pink box to denote the
`“interface”). Herley does not describe what these arrows are (data, cables,
`connectors, etc.). But Herley states that these are all part of a unified
`“mobile audio system,” as Patent Owner points out, and Herley may confirm
`this by its title: “Smart Car Radio.” Prelim. Resp. 912. Although there is
`no conclusive evidence of a unified car radio system as a physical structure
`depicted in Figure 1, the point is that Herley is silent as to a structural
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`separation, if any, between the controller and any of the other depicted
`components. Petitioner as the proponent of Herley’s controller and high-
`speed interface comprising the “interface” has the burden of explaining that
`this separation requirement is met, especially since the Petition
`acknowledges that the construction of “interface” requires it.
`For the Ido reference, Petitioner identifies support module 12 as the
`interface, again with no explanation as to how or why this component has a
`structural identity separate from the car radio. Pet. 2830. Indeed, the
`opposite is evident. Ido’s main unit houses both the CPU module 11 (part of
`the “car stereo” according to Petitioner) and the support module. See Ex.
`1005, Fig. 1 (showing main unit 1); ¶ 70 (“The main unit 1 incorporates a
`controlling computer that performs overall control of the whole system.”);
`¶ 80 (“The CPU module 11 and the support module 12 are incorporated in
`the main unit 1.”). Thus, as we understand Ido, the “car stereo” and the
`“interface” are housed together, there being no structural separation apparent
`from any disclosure cited by Petitioner. The broken lines between the CPU
`module and the support module also do not support physical separateness, as
`Ido describes these as dividing “sections” of the system, but expressly
`describing the physical location of CPU module and support module as
`“incorporated in the main unit 1.” Ex. 1005 ¶ 80.
`In sum, Petitioner has failed to show that the alleged “interface” in
`either Herley or Ido satisfies the construction for the term as discussed
`above.
`
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`
`First Connector
`3.
`All challenged independent claims require a first connector or first
`electrical connector connectable to the car stereo. Petitioner identifies
`arrows as disclosing the required connector, in Herley’s Figure 1,
`reproduced below with Petitioner’s annotations.
`
`
`Figure 1 of Herley is a block diagram of a mobile audio system,
`showing orange arrows between controller 104 and (a) user interface 102
`and (b) sound system 114. As noted above, we are not persuaded that the
`alleged “car stereo” (which Petitioner highlights in green) is physically
`separate from the controller such that there is a connector between them.
`Further, Petitioner points to another Figure of Herley and summarily states
`that Herley describes “interface ports” and “system bus 2118” that are used
`by Herley to connect the components. Pet. 20 (citing Ex. 1003 ¶¶ 128135,
`referring to Figure 21 of Herley). Petitioner’s explanation is insufficient to
`
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`IPR2018-01142
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`show that Herley teaches a connector that connects the interface to the car
`stereo. The ports and system bus in Herley correspond to an embodiment of
`a computer environment “for implementing various aspects of the
`invention.” Ex. 1003 ¶ 128. Herley does not describe, nor does Petitioner
`explain, how either the identified “interface ports” or the “system bus 2118”
`connect to the identified “car stereo,” or any part of a car radio for that
`matter. Petitioner failed to provide an explanation that would link its
`contention that the orange arrows would be the “connectors” identified in the
`computer embodiment, and that those computer “connectors” would be
`connectable to the car radio of Herley. The absence of this linking adds to
`the already identified weaknesses of Petitioner’s reading of the claims onto
`Herley. As Patent Owner argues, and we agree, Petitioner has attempted to
`create a connector, and, thus, a structural separation, that Herley does not
`support. Prelim. 1213.
`
`Auxiliary Input Source and Third Connector
`4.
`The parties had agreed to the construction of “auxiliary input source,”
`recited in claim 1, as comprising “a device that outputs audio by headphone
`jack or other connector.” See supra Section II.A.2. Petitioner, for the third
`connector, again points to Herley’s disclosure of a “bus connection” citing
`as support the computer embodiment discussed above. Pet. 3940.
`Petitioner also draws a red arrow between the tuner and the controller of
`Herley to illustrate, via its annotation, the alleged disclosure of a “third
`connector.” We see here the same deficiencies noted above with respect to
`the first connector. The drawing of the red arrow to create a “connector”
`between the tuner and the controller is unsupported by either Herley or other
`
`20
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`IPR2018-01142
`Patent 7,489,786 B2
`
`evidence. The mere existence of communication between the tuner and the
`controller is not evidence of a “connector.” Further, the tuner, which
`Petitioner has identified as the “auxiliary input source” connected to the
`third connector, has not been shown to be “a device that outputs audio by
`headphone jack or other connector.” That is, no connector is disclosed,
`taught, or suggested in Herley for the communication between the controller
`and the tuner. And Petitioner’s reliance on a generic computer bus is
`unpersuasive, as there is no explanation for how or why that generic
`computer bus would provide a connector to the tuner.
`
`Independent Claims
`5.
`Claims 1 and 57 recite the formatted command limitation, the
`interface, and the first connector. Claim 1 recites the third connector and the
`auxiliary input sources. Claim 86 recites the first connector and the interface
`terms. We have discussed above Petitioner’s contentions regarding these
`limitations, in light of Patent Owner’s arguments. Because we find
`Petitioner’s contentions not sufficiently persuasive, we determine that
`Petitioner has not established a reasonable likelihood of prevailing on its
`assertion that independent claims 1, 57, and 86 of the ’786 patent are
`unpatentable as asserted.
`
`6.
`
`Dependent Claims
`
`Challenged dependent claims 2, 48, 10, 13, 14, 23, 24, 58, 6065,
`and 8891, depend directly or indirectly from claims 1, 57, and 86,
`discussed above. Patent Owner does not argue these claims separately.
`Prelim. Resp. 6. For the same reasons discussed above with respect to the
`independent claims, however, we determine that Petitioner has not
`
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`established a reasonable likelihood of prevailing on its assertion that the
`challenged dependent claims of the ’786 patent are unpatentable as asserted.
`
`III. ORDER
`In consideration of the foregoing, it is hereby ORDERED that the
`Petition is denied.
`
`
`
`
`
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`
`
`For PETITIONER:
`
`Lead Counsel
`Lionel M. Lavenue
`lionel.lavenue@finnegan.com
`
`Back-up Counsel
`Cory C. Bell
`cory.bell@finnegan.com
`Kai Rajan
`kai.rajan@finnegan.com
`
`
`
`
`
`
`For PATENT OWNER:
`
`Lead Counsel
`Peter Lambrianakos
`
`Back-up Counsel
`Alfred R. Fabricant
`Vincent J. Rubino, III
`Timothy J. Rousseau
`Enrique W. Iturralde
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
`trousseau@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`23
`
`
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