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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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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
`
`U.S. Patent No. 7,489,786
`Filing Date: December 11, 2002
`Issue Date: February 10, 2009
`
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`
`____________
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`
`
`DECLARATION OF JAMES T. GEIER IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
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`Page 1 of 63
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`BMW EXHIBIT 1002
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`I, James T. Geier, hereby declare and state as follows:
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`I.
`
`INTRODUCTION
`
`A. Qualifications
`
`1.
`
`I have been asked to prepare a declaration on behalf of BMW of North
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`America, LLC (“BMWNA” or “Petitioner”) in connection with a petition for inter
`
`partes review of U.S. Patent 7,489,786 (EX1001). Specifically, I have been
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`retained as an independent expert consultant by BMWNA to provide my opinions
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`on the technology claimed in, and the patentability or unpatentability of, claims 92-
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`94, 97, and 98 of U.S. Patent 7,489,786 (“the challenged claims”).
`
`2.
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`Although I am being compensated for the time I spend on this matter, no
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`part of my compensation depends on the outcome of this proceeding, and I have no
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`other interest in this proceeding.
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`3.
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`I have 30 years of experience in the communications industry designing,
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`analyzing and implementing communications systems, wireless networks, and
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`mobile devices.
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`4.
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`I received a Bachelor’s Degree in Electrical Engineering from California
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`State University in 1985. I received a Master’s Degree in Electrical Engineering
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`from the Air Force Institute of Technology in 1990. I also received an M.B.A.
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`from the University of Phoenix in 2001.
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`5.
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`From 1986 to 1989, while in the Air Force and assigned to the 1815th
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`Operational Test and Evaluation Squadron, I tested and evaluated wired and
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`wireless communications systems supporting the transport of military data, voice
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`and video information worldwide. For example, this included running tests to
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`validate performance and compatibility of different communications devices, such
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`as secure telephones. During this time, I was also an instructor at the 1815th
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`System Evaluation School, where
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`I developed and
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`taught courses on
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`communications technologies and test methods.
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`6.
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`From 1990 to 1992, while in the Air Force and assigned to the Information
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`Systems Center, I designed and implemented computer networks for Wright-
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`Patterson Air Force Base. This involved testing some of the first-available routers,
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`switches and controllers in a laboratory environment and then later designing and
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`overseeing the installation of corresponding networks throughout Wright-Patterson
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`Air Force Base for supporting thousands of users.
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`7.
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`From 1992 to 1994, while employed at Adroit Systems, Inc., I analyzed and
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`evaluated communications technologies for use in Airborne communications
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`platforms, such as aircraft and satellites, to support secure transport of data, voice
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`and video information.
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`8.
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`From 1994 to 1996, while employed at TASC, Inc., I designed and
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`implemented communication networks for civilian and military applications. For
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`example, I analyzed and designed for the U.S. Department of Defense an audio /
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`video conferencing system for use by soldiers in battlefields. I also designed a
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`highly secure communications network supporting data, voice and video
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`applications for a U.S. Navy attack submarine.
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`9.
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`From 1996 to 2000, while employed at Monarch Marking Systems, I
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`designed and developed wireless printers and corresponding networks for
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`customers. This included designing wireless bar code scanners having voice
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`command recognition capabilities. In addition, I designed and implemented
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`wireless middleware
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`that provided an
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`interoperable
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`interface between
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`incompatibility bar code scanners and servers.
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`10. Since 2000, I have been an independent consultant working under the
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`business name Wireless-Nets, Ltd., where I have been analyzing and designing
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`wireless devices, communications systems and applications. As examples, I have
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`designed and tested voice-over-Wi-Fi user devices and networks, designed and
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`implemented drivers for Bluetooth transceivers, and implemented microcontroller-
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`based audio encoding for operation over ZigBee wireless networks.
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`11. A copy of my curriculum vitae is attached.
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`B. Materials Reviewed
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`12.
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`In forming my opinions expressed in this declaration, I have considered,
`
`among other things:
`
`Exhibit
`1001
`1003
`1005
`
`
`
`Description
`U.S. Patent No. 7,489,786 (“the ’786 patent”)
`U.S. Patent Publication No. 2005/0262528 A1 (“Herley”)
`European. Patent Application Publication No. EP 0950570 A2
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`4
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`1006
`1007
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`1008
`1009
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`1011
`1013
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`(“Ido”)
`U.S. Patent No. 6,394,774
`Decision Instituting Inter Partes Review, Case IPR2016-00421,
`Paper No. 13 (July 7, 2016)
`U.S. Publication No. 2002/0196134 (“Lutter”)
`Plaintiff’s Proposed Claim Constructions in Case No. 2:17-cv-
`00430 (E.D. Tex.), served March 14, 2018.
`File History of the ’786 Patent
`Plaintiff's Infringement Contentions Exhibit A, served September
`2017 in Blitzsafe Texas, LLC v. Bayerische Motoren Werke AG et
`al., 2:17-cv-00418 (E.D. Tex.)
`
`
`In forming my opinions, I have also relied on my education and experience.
`
`C. Relevant Legal Standards
`
`13.
`
`I have been asked to consider the ’786 patent and what I have been advised
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`is prior art to the ’786 patent, and to offer my opinions on the effect of that art on
`
`the claims of the ’786 patent. In particular, I have been asked to consider whether
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`claims 92-94, 97, and 98 would have been obvious to a person of ordinary skill in
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`the art as of the effective filing date of the ’786 patent (December 11, 2002). In my
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`opinion, these claims would have been obvious as of that date. In particular, the
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`claims would have been obvious based on the combinations of Herley, Ido, and
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`Lutter set forth below, which I have been advised constitute prior art as of
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`December 11, 2002.
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`14. Petitioner’s Counsel advises me that the following legal principles apply to
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`analysis of patentability based on 35 U.S.C. §§ 102 and 103:
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`a)
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`In an inter partes review proceeding, a patent claim may be deemed
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`unpatentable if it is shown by a preponderance of the evidence that the
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`claim was anticipated by a prior art patent or publication under § 102
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`and/or rendered obvious by one or more prior art patents or
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`publications under § 103.
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`b)
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`For a claim to be anticipated under 35 U.S.C. § 102, every limitation
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`of the claimed invention must be found in a single prior art reference,
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`as arranged in the claim.
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`c)
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`Under 35 U.S.C. § 103(a), “[a] patent may not be obtained though the
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`invention is not identically disclosed or described as set forth in
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`section 102, if the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter
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`pertains.”
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`d) When considering the issues of obviousness, I am to do the following:
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`i.
`
`ii.
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`determine the scope and content of the prior art;
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`ascertain the differences between the prior art and the claims at
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`issue;
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`iii.
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`resolve the level of ordinary skill in the pertinent art; and
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`United States Patent No. 7,489,786
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`iv.
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`consider evidence of secondary indicia of nonobviousness (if
`
`available).
`
`e)
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`The relevant time for considering whether a claim would have been
`
`obvious to a person of ordinary skill in the art is the time of alleged
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`invention.
`
`f)
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`I am to assume a priority date for the challenged claims of no earlier
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`than December 11, 2002.
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`g)
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`A reference may be modified or combined with other references or
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`with the person of ordinary skill’s own knowledge if the person would
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`have found the modification or combination obvious.
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`h)
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`A person of ordinary skill in the art is presumed to know all the
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`relevant prior art, and the obviousness analysis may take into account
`
`the inferences and creative steps that a person of ordinary skill in the
`
`art would employ.
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`i)
`
`In determining whether a prior-art reference could have been
`
`combined with another prior-art reference or other information known
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`to a person having ordinary skill in the art, the following principles
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`may be considered:
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`i. A combination of familiar elements according to known methods is
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`likely to be obvious if it yields predictable results;
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`United States Patent No. 7,489,786
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`ii. The substitution of one known element for another is likely to be
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`obvious if it yields predictable results;
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`iii. The use of a known technique to improve similar items or methods
`
`in the same way is likely to be obvious if it yields predictable
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`results;
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`iv. The application of a known technique to a prior art reference that is
`
`ready for improvement is likely obvious if it yields predictable
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`results;
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`v. Any need or problem known in the field and addressed by the
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`reference can provide a reason for combining the elements in the
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`manner claimed;
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`vi. A person of ordinary skill often will be able to fit the teachings of
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`multiple references together like a puzzle; and
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`vii. The proper analysis of obviousness requires a determination of
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`whether a person of ordinary skill in the art would have a
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`“reasonable expectation of success,” not “absolute predictability” of
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`success, in achieving the claimed invention by combining prior art
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`references.
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`j) Whether a prior art reference renders a patent claim unpatentable as
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`obvious is determined from the perspective of a person of ordinary
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`skill in the art.
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`k) While there is no requirement that the prior art contain an express
`
`suggestion to combine known elements to achieve the claimed
`
`invention, a suggestion to combine known elements to achieve the
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`claimed invention may come from the prior art as a whole or
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`individually, as filtered through the knowledge of one skilled in the
`
`art.
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`l)
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`The inferences and creative steps a person of ordinary skill in the art
`
`would employ are also relevant to the determination of obviousness.
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`m) When a work is available in one field, design alternatives and other
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`market forces can prompt variations of it, either in the same field or in
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`another.
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`n)
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`If a person of ordinary skill in the art can implement a predictable
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`variation and would see the benefit of doing so, that variation is likely
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`to be obvious.
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`o)
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`In many fields, there may be little discussion of obvious
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`combinations, and in these fields market demand, not scientific
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`literature, may drive design trends.
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`p) When there is a design need or market pressure and there are a finite
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`number of predictable solutions, a person of ordinary skill in the art
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`has good reason to pursue those known options.
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`United States Patent No. 7,489,786
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`q)
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`There is no rigid rule that a reference or combination of references
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`must contain a “teaching, suggestion, or motivation” to combine
`
`references, But the “teaching, suggestion, or motivation” test can be a
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`useful guide in establishing a rationale for combining elements of the
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`prior art. This test poses the question as to whether there is an express
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`or implied teaching, suggestion, or motivation to combine prior art
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`elements in a way that realizes the claimed invention, and that it seeks
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`to counter impermissible hindsight analysis.
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`r)
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`A reference is a printed publication if it is “publicly accessible,”
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`which requires a showing that the document has been disseminated or
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`otherwise made available to the extent that interested persons having
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`ordinary skill in the relevant subject matter or art can locate the
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`document by exercising reasonable diligence.
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`II. U.S. PATENT 7,489,786
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`A. Overview
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`15. Based on my review, I understand that the ’786 patent discloses an “audio
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`device integration system” for integrating after-market audio components with an
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`existing car stereo system. EX1001, Abstract. “Control commands can be issued
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`at the car stereo and responsive data from the connected devices can be displayed
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`on the stereo.” EX1001, Abstract. Examples of devices that may be integrated
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`include CD players, CD changers, MP3 players, satellite receivers, and DAB
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`receivers. EX1001, Abstract. The audio device, along with one or more auxiliary
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`input sources may be integrated with the car stereo, and a user may select between
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`the various audio input devices. EX1001, Abstract. FIG. 1 of the ’786 patent is
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`reproduced and annotated below:
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`
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`EX1001, FIG. 1 (annotated showing after-market audio devices MP3 player
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`30 and CD player 15 in blue, interface 20 in red, satellite radio / DAB receiver 25
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`and auxiliary inputs 35 in brown, car radio 10 and control head 12 in green,
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`examples of a “first connector” in orange, examples of a “second connector” in
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`purple, and examples of a “third connector” in burgundy)
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`16.
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`I understand that, according to the ’786 patent, “integration” is achieved by
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`positioning an interface 20 between the car stereo and the after-market audio
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`device and/or auxiliary input being integrated. EX1001, 2:53-60. Control
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`commands generated at the car stereo are converted by the interface into a format
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`recognizable by the after-market audio device, and information received from the
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`after-market audio device is converted into a format recognizable by the car stereo.
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`See EX1001, 2:35-42. The interface includes a microcontroller programmed to
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`perform the format conversion for signals to and from the car stereo and portable
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`audio device(s). EX1001, 8:46-9:7.
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`17. The ’786 patent contains eleven independent claims (1, 25, 33, 44, 49, 57,
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`66, 76, 86, 92, and 99), one of which is challenged herein (92). Independent claim
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`92 is directed to a system that connects a portable audio device to a car stereo. An
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`interface is connected between a car stereo and a portable audio device. The
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`interface includes a microcontroller pre-programmed to execute three functions
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`recited in means-plus-function form: 1) generating a device presence signal, and
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`transmitting the signal; 2) remotely controlling the portable audio device, by
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`receiving a control command, processing the control command, and transmitting
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`the control command; and 3) transmitting audio from the portable audio device to
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`the stereo. The text of independent claim 92 is as follows:
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`92. An audio device integration system comprising:
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`a car stereo;
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`a portable audio device external to the car stereo;
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`an interface connected between the car stereo and the portable audio
`device, the interface including a microcontroller pre-programmed
`to execute:
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`United States Patent No. 7,489,786
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`first pre-programmed means for generating a device presence
`signal and transmitting the signal to the car stereo to
`maintain the car stereo in an operational state;
`
`second pre-programmed means for remotely controlling the
`portable audio device using the car stereo by receiving a
`control command from
`the car stereo
`in a format
`incompatible with the portable audio device, processing the
`control command
`into a formatted control command
`compatible with the portable audio device, and transmitting
`the formatted control command to the portable audio device
`for execution thereby; and
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`means for transmitting audio from the portable audio device to
`the car stereo.
`
`18.
`
`I understand that during prosecution of the ’786 patent, the patent examiner
`
`stated that “interfacing auxiliary after-market devices with a car stereo was known
`
`in the art at the time of the invention.” EX1011, 416. The patent examiner
`
`indicated
`
`that he had not found prior art
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`teaching or suggesting “the
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`communication of incompatible audio devices” or “generati[on] and transmiss[ion
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`of] a device presence signal to a car stereo…” EX1011, 416. However, the patent
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`examiner did not consider Patent Owner’s interpretation of the ’786 patent claims
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`as presented in EX1013.
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`B.
`
`19.
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`Level of Ordinary Skill in the Art
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`I understand that a patent must be written such that it can be understood by
`
`a “person of ordinary skill” in the field of the patent.
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`United States Patent No. 7,489,786
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`I understand that this hypothetical person of ordinary skill in the art is
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`
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`20.
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`considered to have the normal skills and knowledge of a person in the technical
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`field at issue. I understand that factors that may be considered in determining the
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`level of ordinary skill in the art include: (1) the education level of the inventor;
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`(2) the types of problems encountered in the art; (3) the prior art solutions to
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`those problems; (4) rapidity with which
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`innovations are made; (5)
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`the
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`sophistication of the technology; and (6) the education level of active workers in
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`the field.
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`21.
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`It is my opinion that in December 2002, a person of ordinary skill in the art
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`relevant to the ’786 patent would have had: at least a Bachelor’s degree in
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`electrical engineering or equivalent science/engineering degree and at least two
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`years of experience in signal processing and/or electronic system design, or
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`would have at least four years of experience in signal processing and/or
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`electronic system design.
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`22. Based on my experience and education, I consider myself to have been a
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`person of at least ordinary skill in the art as of December 2002 (and through
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`today) with respect to the field of technology implicated by the ’786 patent.
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`III. CLAIM CONSTRUCTION
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`23.
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`In this declaration, I have analyzed the claims consistent with the “broadest
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`reasonable interpretation” meaning of the claim terms, consistent with the intrinsic
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`and extrinsic record, including the Board’s prior constructions of the terms
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`“portable,” “interface,” and “device presence signal” as set forth in EX1007, Patent
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`Owner’s proposed claim constructions set forth in EX1009, and Patent Owner’s
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`interpretation and assertion of the challenged claims in litigation as set forth in
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`EX1013. I have also analyzed the claims considering the knowledge of a person of
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`ordinary skill in the arts of signal processing and/or electronic system design.
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`24.
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`I understand that Patent Owner’s statements in EX1013 provide examples of
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`“portable” devices, an “interface” and a “device presence signal” which Patent
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`Owner asserts meet the claims. For example, I understand that Patent Owner
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`asserts that head unit may comprise an “interface,” and such an assertion requires
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`interpreting components such as control devices or display units as the car stereo.
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`See EX1013, 9, 18. Without Patent Owner’s interpretation, a head unit would
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`normally be considered part of the car stereo, as the ’786 patent repeatedly
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`discloses an interface as a device connected to a car radio. Furthermore, Patent
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`Owner interprets displayed icons indicating a connected USB device as comprising
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`a “device presence signal” (EX1013, 95-98), even though this scope is not
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`described in the ’786 patent. Therefore, Patent Owner’s statements set forth in
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`EX1013 are informative as to the asserted scope of the challenged claims, which,
`
`in my opinion, cannot be readily ascertained from the Board’s claim constructions
`
`and a reading of the ’786 patent alone.
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`25. Petitioner’s counsel has also advised me that independent claim 92 recites
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`means-plus-function claim
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`terms, for which Patent Owner has proposed
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`constructions in the district court litigation, which are provided in the table below
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`and in EX1009, for the purposes of this analysis. I have been asked to apply these
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`claim constructions in conjunction with Patent Owner’s interpretation provided in
`
`EX1013.
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`Means-plus-function
`Term
`“first pre-programmed
`
`Function
`
`“generating a
`
`Proposed Corresponding
`Structure
`“ports J2A1, X2, RCH, and LCH,
`
`means for generating a
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`device presence
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`connected to a power source (i.e.
`
`device presence signal”
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`signal to the car
`
`battery) that are provided for
`
`EX1009, 15.
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`stereo”
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`allowing connection between the
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`interface system of the present
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`invention and an after-market
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`device, or an auxiliary input
`
`source” and “a microcontroller
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`(U1) with hardware components
`
`such as resistors, diodes,
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`capacitors, and oscillators.”
`
`See, e.g., EX1001, 8:31-9:44.
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`“first pre-programmed
`
`“transmitting the
`
`“resistors, diodes, capacitors,
`
`means for . . .
`
`signal to the car
`
`transistors, transformers,
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`transmitting the signal
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`stereo to maintain
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`amplifiers, oscillator” of FIG. 3B”
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`to the car stereo to
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`Declaration of James T. Geier
`United States Patent No. 7,489,786
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`the car stereo in an
`
`See, e.g., EX1001, 9:22-10:34.
`
`maintain the car stereo
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`operational state”
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`in an operational state”
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`EX1009, 15.
`
`“second pre-
`
`“remotely
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`“a microcontroller, which is
`
`programmed means for
`
`controlling the
`
`comprised of a 16F873
`
`remotely controlling the
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`portable audio
`
`microcontroller manufactured by
`
`portable audio device
`
`device using the
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`MICROCHIP, Inc.; and a plurality
`
`using the car stereo by
`
`car stereo by
`
`of resistors (R1-R7), capacitors
`
`receiving a control
`
`receiving a control
`
`(C1-C2), and amplifier (A1)”
`
`command from the car
`
`command from
`
`See, e.g., EX1001, 11:47-12:3.
`
`stereo in a format
`
`the car stereo in a
`
`incompatible with the
`
`format
`
`portable audio device”
`
`incompatible with
`
`EX1009, 17.
`
`the portable audio
`
`“second pre-
`
`device”
`
`“remotely
`
`“the code or algorithm illustrated in
`
`programmed means for
`
`controlling the
`
`Tables 1 and 2 of the ’786 patent”
`
`remotely controlling the
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`portable audio
`
`EX1001, 17:31-18:50.
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`portable audio device
`
`device by
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`using the car stereo by .
`
`processing a
`
`. . processing the control
`
`control command
`
`command into a
`
`from the car stereo
`
`formatted control
`
`in a format
`
`command compatible
`
`compatible with
`
`with the portable audio
`
`the portable audio
`
`device”
`
`EX1009, 17.
`
`“second pre-
`
`device.”
`
`“transmitting the
`
`“circuit in Figure 3B . . . having a
`
`programmed means for
`
`formatted control
`
`plurality of resistors, diodes,
`
`remotely controlling the
`
`command to the
`
`capacitors, transistors,
`
`portable audio device
`
`portable audio
`
`transformers, amplifiers, oscillator,
`
`using the car stereo by .
`
`device for
`
`among other structural components
`
`. . transmitting the
`
`execution thereby”
`
`that provide the hardware
`
`formatted control
`
`command to the
`
`portable audio device
`
`for execution thereby”
`
`EX1009, 18.
`
`framework, for the microcontroller
`
`to act as an interface in integrating
`
`stereo”
`
`an after-market device with a car
`
`See, e.g., EX1001, 9:22‐10:34.
`
`“means for transmitting
`
`“transmitting
`
`“circuit in Figure 3B . . . having a
`
`
`
`18
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`Page 18 of 63
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`
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`audio from the portable
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`audio from the
`
`plurality of resistors, diodes,
`
`audio device to the car
`
`portable audio
`
`capacitors, transistors,
`
`stereo”
`
`device to the car
`
`transformers, amplifiers, oscillator,
`
`stereo”
`
`
`
`among other structural components
`
`that provide the hardware
`
`framework, for the microcontroller
`
`to act as an interface in integrating
`
`stereo”
`
`an after-market device with a car
`
`See, e.g., EX1001, 9:22‐10:34.
`
`
`26. Under either construction, in my opinion the prior art renders the claims
`
`obvious, especially in light of Patent Owner’s statements as to the scope of the
`
`claims set forth in EX1013.
`
`IV. CLAIMS 92-94, 97, AND 98 OF THE ’786 PATENT ARE
`UNPATENTABLE
`
`
`A. The Prior Art
`
`27.
`
`I understand that the ’786 Patent has an effective filing date no earlier than
`
`December 11, 2002, which is the filing date of the application for the ’786 Patent.
`
`I have been advised that the following patents and publications, relied upon in the
`
`grounds presented herein, are all prior art to the claims of the ’786 Patent.
`
`
`
`19
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`Page 19 of 63
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`
`
`
`1. Herley
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`28. Based on my review, I understand that Herley (U.S. Patent Publication No.
`
`2005/0262528) was filed in the United States on July 25, 2005, and published on
`
`November 24, 2005. I also understand that Herley is a continuation of U.S. Patent
`
`Application No. 10/180,249, filed on June 26, 2002. I have been advised that
`
`Herley is prior art to the ’786 patent based on its June 26, 2002 priority date, under
`
`at least 35 U.S.C. § 102(e) (pre-AIA).
`
`29. Based on my review, Herley discloses an “audio content delivery system”
`
`for an audio system in an automobile. EX1003, Abstract, ¶ [0010]. Figure 1 of
`
`Herley, annotated below, illustrates Herley’s mobile audio system 100:
`
`
`
`20
`
`
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`Page 20 of 63
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`
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`EX1003, FIG. 1 (annotated showing external media source 116 in blue, user
`
`interface 102 and sound system 114 in green, high speed interface 110 and
`
`controller 104 in red)
`
`30. Herley discloses a mobile audio system 100 that includes a controller 104,
`
`high speed interface 110 such as a USB interface for connecting an external media
`
`source 116 such as an MP3 player or CD player, and a sound system 114 with user
`
`interface 102. Controller 104 also connects to a tuner 106 or media database 112.
`
`2.
`
`Ido
`
`31. Based on my review, I understand that Ido is a European Patent Application
`
`Publication (No. EP 0950570) that was filed in the European Patent Office on
`
`March 19, 1999 and published on October 20, 1999. I have been advised that Ido
`
`is prior art to the ’786 Patent under at least 35 U.S.C. § 102(a) (pre-AIA).
`
`32.
`
`Ido discloses an automotive information system having a CPU module 11
`
`and a support module 12. EX1005, ¶¶ [0069], [0080], FIG. 2. FIG. 2 of Ido is
`
`reproduced and annotated below:
`
`
`
`21
`
`Page 21 of 63
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`
`
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`
`
`EX1005, FIG. 2 (annotated showing a car stereo in green, interface in red, after-
`
`market audio devices in blue, first connector(s) in orange,
`
`and second connector(s) in purple)
`
`33. As shown in FIG. 2 above, CD-ROM unit 14 and CD-ROM auto-changer 7
`
`are connected to the support module 12 via one or more bus connections, such as a
`
`Universal Serial Bus (USB). EX1005, ¶¶ [0060], [0061], [0077], [0078], [0098],
`
`[0160], [0170]. Main unit 11 (which has a display and controls) and an amplifier
`
`22 (which is connected to speakers) collectively form parts of a car stereo, and are
`
`also in communication with support module 12 via one or more PCI BUS
`
`
`
`22
`
`Page 22 of 63
`
`
`
`
`
`connections. EX1005, ¶ [0124], FIG. 2. Support module 12 serves as an interface
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`between main unit 11 or amplifier 22 (parts of the car stereo) and CD-ROM unit 14
`
`and CD-ROM auto-changer 7 (after-market audio devices).
`
`3.
`
`Lutter
`
`34.
`
`I understand that Lutter (U.S. Patent Publication No. 2002/0196134) was
`
`filed on June 26, 2001 and published on December 26, 2002. I have been advised
`
`that Lutter is prior art to the ’786 Patent under pre-AIA 35 U.S.C. § 102(e) based
`
`on its filing date.
`
`35. Lutter discloses an audio manager 14 located inside a vehicle. EX1008,
`
`¶ [0014]. The audio manager 14 monitors for any wireless or wired audio sources,
`
`detects audio sources that are located in or proximate the vehicle. The audio
`
`sources can include any “device connected by wires [such as an ‘audio wiring
`
`harness 118’] to the vehicle’s electrical system,” as well as wireless audio devices.
`
`EX1008, ¶¶ [0016], [0038], [0041], FIG. 7. Audio manager 14 causes a graphical
`
`user interface (GUI) 30 of a car stereo to display detected audio sources. EX1008,
`
`¶¶ [0016], [0019], [0020], [0022]. In particular, audio device manager 14 provides
`
`a signal to display detected audio devices on GUI 30, by causing GUI 30 to display
`
`icons representing the detected audio devices. EX1008, ¶¶ [0016], [0019], [0020],
`
`[0022].
`
`
`
`
`
`23
`
`Page 23 of 63
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`
`
`
`
`B. Ground 1: Claims 92-94, 97, and 98 are invalid under 35 U.S.C. § 103 as
`unpatentable over Herley in view of Ido and Lutter
`1.
`
`
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`Claim 92
`a)
`
`92[1]: “An audio device integration system”
`
`36. To the extent the preamble to this claim is limiting, in my opinion, Herley
`
`discloses it. Herley discloses an “audio content delivery system” that is utilized in
`
`an automobile. EX1003, ¶ [0010]. Herley’s system 100 includes a controller 104
`
`and high speed interface 110 that connect a detachable external media source 116
`
`to a sound system 114 of the automobile. EX1003, ¶¶ [0042]-[0044], [0048].
`
`EX1003, FIG. 1 (annotated)
`
`
`
`37. External media source 116 is connected to a high speed interface 110 (such
`
`as a USB mechanism) to “add and/or modify the entertainment content available to
`
`24
`
`Page 24 of 63
`
`
`
`
`
`the system 100.” EX1003, ¶¶ [0042]-[0043]. Therefore, like the ’786 patent,
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`Herley discloses a system that allows for the connection (integration) of an
`
`external media source (an audio device) with an automobile car stereo.
`
`b)
`
`92[2]: “a car stereo”
`
`38.
`
`In my opinion, Herley disclose this element. Herley discloses a car stereo
`
`comprising at least user interface 102 and sound system 114.
`
`EX1003, FIG. 1 (annotated showing a car stereo)
`
`
`
`39. User interface 102 allows “a user to select, control and obtain content to be
`
`received and played,” and can include a touch-sensitive LCD display and physical
`
`push buttons. EX1003, ¶¶ [0041], [0058]. Thus, user interface 102 includes
`
`
`
`25
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`Page 25 of 63
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`
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`
`
`components for inputting commands regarding audio or other media played in the
`
`Declaration of James T. Geier
`United States Patent No. 7,489,786
`
`vehicle, and provides information for display about the media.
`
`40. Herley also discloses sound system 114 as part of system 100. Sound
`
`system 115 “can be a number of suitable devices such as, car radio, speaker system
`
`and the like.” EX1003, ¶ [0048].
`
`41. User interface 102 and sound system 114 comprise a car stereo within the
`
`scope of Patent Owner’s interpretation of the term. Indeed, Patent Owner agrees
`
`that the car stereo can be components such as head unit, display unit, amplifiers,
`
`speakers, and control units that provide control inputs. See EX1013, 9, 134.
`
`c)
`
`92[3]: “a portable audio device external to the car stereo”
`
`42.
`
`In my opinion, Herley discloses this element. Herley discloses an external
`
`media source 116 (portable audio device) connected to controller 104 via a high
`
`speed interface 110. EX1003, ¶ [0042]. Herley discloses that external media
`
`source 116 can be, for example, a CD player (playing MP3 CDs), a portable CD
`
`player, a portable DVD player, an MP3 player, portable hard drive, or personal
`
`digital assistant, which include audio devices that would be understood by a person
`
`of ordinary skill
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