Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 13
`Filed: July 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00421
`Patent 7,489,786 B2
`____________
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Page 1 of 44
`
`BMW EXHIBIT 1007
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 13
`Filed: July 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00421
`Patent 7,489,786 B2
`____________
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Page 1 of 44
`
`BMW EXHIBIT 1007
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`I. INTRODUCTION
`
`Background
`A.
`On December 30, 2015, Petitioner filed a Corrected Petition (Paper 3,
`“Pet.”) to institute inter partes review of claims 1, 2, 4–8, 10, 13, 14, 23, 24,
`44, 47, 57, 58, 60–65, 86, 88–92, 94, 97, and 98 of U.S. Patent
`No. 7,489,786 (Ex. 1101, “the ’786 patent”). On April 22, 2016, Patent
`Owner filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
`To institute an inter partes review, we must determine that the
`information presented in the Petition 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.” 35 U.S.C. § 314(a). Having considered
`both the Petition and the Preliminary Response, we determine that Petitioner
`has demonstrated a reasonable likelihood that it would prevail in
`establishing the unpatentability of claims 44 and 47. Petitioner has not,
`however, shown a reasonable likelihood that it would prevail in establishing
`the unpatentability any other claim. We institute an inter partes review of
`claims 44 and 47 of the ’786 patent.
`Related Matters
`B.
`The parties indicate that the ’786 patent was asserted in five
`infringement actions before the United States District Court of the Eastern
`District of Texas and two infringement actions before the United States
`District Court for the District of New Jersey. Pet. 1–2, Paper 5, 1–2. The
`’786 patent also is involved in IPR2016-00422. Related Patent 8,155,342
`B2 is involved in IPR2016-00118, IPR2016-00418, and IPR2016-00419.
`
`
`
`
`
`2
`
`
`
`Page 2 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`The ’786 Patent
`C.
`The ’786 patent is titled “Audio Device Integration System.” Ex.
`1001 (54). “One or more after-market audio devices, such as a CD player,
`CD changer, MP3 player, satellite receiver, DAB receiver, or the like, is
`integrated for use with an existing OEM or after-market car stereo system,
`wherein control commands can be issued at the car stereo and responsive
`data from the audio device can be displayed on the stereo.” Id. at Abstr.
`The ’786 patent describes:
`Control commands generated at the car stereo are received,
`processed, converted into a format recognizable by the audio
`device, and dispatched to the audio device for execution.
`Information from the audio device, including track, disc, song,
`station, time, and other information, is received, processed,
`converted into a format recognizable by the car stereo, and
`dispatched to the car stereo for display thereon.
`Id. Additional auxiliary sources also may be integrated together, and “a user
`can select between the [audio] device or the one or more auxiliary input
`sources by issuing selection commands through the car stereo.” Id. A
`docking station for docking a portable audio or video device for integration
`with the car stereo. Id. Figures 2A–2C are reproduced below:
`
`
`
`
`
`
`
`3
`
`
`
`Page 3 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`Figure 2A illustrates an embodiment integrating a CD player with the car
`stereo; Figure 2B illustrates an embodiment integrating a MP3 player with a
`car stereo; and Figure 2C illustrates an embodiment integrating a satellite or
`DAB receiver with a car stereo. Id. at 3:14–23. A more versatile
`embodiment is shown in Figure 1:
`
`
`Figure 1 illustrates an embodiment integrating a CD player, a MP3 player, a
`satellite radio or DAB receiver, and a number of auxiliary input sources with
`a car stereo. Id. at 3:12–13. 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) being integrated.
`
`With regard to Figure 2B, the ’786 patent describes:
`The interface 20 allows data and audio signals to be exchanged
`between the MP3 player 30 and the car radio 10, and processes
`and formats signals accordingly so that instructions and data
`from the radio 10 are processable by the MP3 player 30, and vice
`versa. Operational commands, such as track selection, pause,
`play, stop, fast forward, rewind, and other commands, are entered
`via the control panel buttons 14 of car radio 10, processed by the
`interface 20, and formatted for execution by the MP3 player 30.
`Data from the MP3 player, such as track, time, and song
`information, is received by the interface 20, processed thereby,
`and sent to the radio 10 for display on display 13. Audio from
`
`4
`
`
`
`Page 4 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`MP3 player 30 is selectively forwarded by the interface 20 to the
`radio 10 for playing.
`Id. at 6:11–24. Similar description is provided with respect to Figures 2A
`and 2C. Id. at 5:49–55, 6:35–43.
`Claims 1, 44, 57, 86, and 92 are independent. Claim 1 is directed to a
`system that connects an after-market audio device as well as one or more
`auxiliary input sources to a car stereo. In particular, claim 1 recites a first
`connector electrically connectable to a car stereo, a second connector
`electrically connectable to an after-market device, and a third connector
`electrically connectable to one or more auxiliary input sources. Id. at 21:33–
`38. Claim 1 also recites an interface connected between the first and second
`electrical connectors, and that the interface includes a 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;
`a second pre-programmed code portion for 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.
`Id. at 21:44–64.
`
`5
`
`
`
`Page 5 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`Claim 57 is directed to a system including an interface that connects a
`portable MP3 player to a car stereo. Claim 86 is directed to a system
`including an interface that connects an after-market video device to a car
`stereo. Claim 92 is directed to a system including an interface that connects
`a portable audio device with a car stereo. Claims 57, 86, and 92 each require
`the generation, within an interface, of a device presence signal that is
`transmitted to the car stereo to maintain the car stereo in an operational state.
`Claims 57, 86, and 92 are reproduced below:
`57. An audio device integration system comprising:
`a first electrical connector connectable to a car stereo;
`a second electrical connector connectable to a portable MP3
`player external to the car stereo
`an interface connected between said first and second electrical
`connectors for transmitting audio from a portable MP3 player
`to a car stereo, 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 generating a
`device presence signal and transmitting the signal to
`the car stereo to maintain the car stereo in an
`operational state; and
`a second pre-programmed code portion for remotely
`controlling the MP3 player using the car stereo by
`receiving a control command from the car stereo
`through said first electrical connector in a format
`incompatible with the MP3 player, processing the
`control command into a formatted control command
`compatible with the MP3 player, and transmitting
`the formatted control command to the MP3 player
`through said second electrical connector for
`execution by the MP3 player.
`
`6
`
`
`
`Page 6 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`Id. at 26:13–37.
`86. A device for integrating video information for use with a car
`stereo, comprising:
`a first electrical connector connectable to a car stereo;
`a second electrical connector connectable to an after-market
`video device external to the car stereo;
`an interface connected between said first and second electrical
`connectors for transmitting video information from the after-
`market video device to the car stereo, the 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 generating a
`device presence signal and transmitting the signal to
`the car stereo through said first electrical connector
`to maintain the car stereo in an operational state
`responsive to signals generated by the after-market
`video device.
`Id. 28:40–56.
`92. An audio device integration system comprising:
`a car stereo;
`a portable audio device external to the car stereo;
`an interface connected between the car stereo and the portable audio
`device, the interface including a microcontroller pre-programmed
`to execute:
`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
`
`7
`
`
`
`Page 7 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`transmitting the formatted control command to the
`portable audio device for execution thereby; and
`means for transmitting audio from the portable audio device
`to the car stereo.
`Id. at 29:11–31.
`Claim 44 is directed to an apparatus for docking a portable device for
`integration with a car stereo. We reproduce claim 44 in the portion of our
`analysis below specifically discussing claim 44.
`Evidence Relied Upon
`D.
`Petitioner relies on the following references:1
`
`
`
`Reference
`
`Lau
`
`International Pub. No. WO
`01/67266 A1
`
`Date
`
`Exhibit
`
`Sept. 13, 2001 Ex. 1103
`
`JP ’9542
`
`Jap. Pub. App. No. H7–6954
`
`Jan. 31, 1995
`
`Ex. 1106
`
`XR-C5120
`
`XA-C30
`
`SONY® 3-865-814-11(1)
`Operating Instructions, Model
`No. XR-C5120 /4890
`
`SONY® 9-923-535-11
`Source Selector
`Service Manual XA-C30
`
`1999
`
`Ex. 1108
`
`March, 1996
`
`Ex. 1109
`
`Bhogal
`
`U.S. Patent No. 6,629,197 B1
`
`Sept. 30, 2003 Ex. 1110
`
`
`1 For certain alleged grounds of unpatentability, Petitioner also relies on
`what it refers to as “known bus technology.” Hereinafter, we refer to that
`material as “KBT.” We understand Petitioner to have presented KBT as
`common knowledge and routine skill within the level of ordinary skill in the
`art that does not require citation of any particular reference.
`2 All citations to specific content of JP’954 refer to its English Translation
`(Ex. 1107).
`
`8
`
`
`
`Page 8 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`§ 103(a)
`
`§ 103(a)
`
`Petitioner also relies on the Declaration of Thomas G. Matheson,
`Ph.D. Ex. 1115.
`The Asserted Grounds
`E.
`Petitioner asserts the following grounds of unpatentability:
`Claim(s) Challenged
`Basis
`References
`57, 58, 60, 64, 86, 88, 90, 91,
`92, 94, and 97
`61, 62, and 63
`
`JP ’954 and Lau
`JP ’954, Lau, and XR-
`C5120
`JP ’954, Lau, and KBT
`JP ’954, XR-C5120, and
`XA-C30
`JP ’954, XR-C5120, XA-
`C30, and KBT
`JP ’954, XR-C5120, XA-
`C30, and Lau
`JP ’954, Lau, and Bhogal
`
`65, 89, and 98
`
`§ 103(a)
`
`1, 2, 4, 7, 8, 13, 14, and 23
`
`§ 103(a)
`
`5 and 24
`
`6 and 10
`
`44 and 47
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`57, 86, and 92
`
`§ 103(a)
`
`II. ANALYSIS
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`
`JP ’954, Lau, and Bhogal3
`
`
`3 Petitioner identifies this alleged ground of unpatentability simply as
`“obvious in view of Bhogal.” Pet. 57. However, a plain reading of
`Petitioner’s analysis on pages 57–59 of the Petition reveals that the alleged
`ground actually is that of obviousness over JP ’954, Lau, and Bhogal. Also,
`although Petitioner labels this ground as directed to claims 57 and 86, a plain
`reading of the Petitioner’s analysis reveals that it is intended to apply to
`claims 57 and 92. We have restated the applicable claims as 57, 86, and 92.
`
`9
`
`
`
`Page 9 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`One seeking to establish obviousness based on more than one reference also
`must articulate sufficient reasoning with rational underpinnings to combine
`teachings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
`With regard to the level of ordinary skill in the art, we determine that
`no express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, No. 15–446, 2016 WL 3369425, at *12
`(U.S. June 20, 2016) (upholding the use of the broadest reasonable
`interpretation standard as the claim construction standard to be applied in an
`inter partes review proceeding). Consistent with the rule of broadest
`reasonable interpretation, claim terms also 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 Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`“Claims are not interpreted in a vacuum, but are part of and are read
`in light of the specification.” Slimfold Mfg. Co. v. Kinkead Indus., Inc.,
`810 F.2d 1113, 1116 (Fed. Cir. 1987). Although it is improper to read a
`
`10
`
`
`
`Page 10 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`limitation from the specification into the claims, In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993), the claims still must be read in view of the
`specification of which they are a part. Microsoft Corp. v. Multi-Tech Sys.,
`Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004).
`If a limitation of an embodiment described in the specification is not
`necessary to give meaning to a claim term, it would be “extraneous” and
`should not be read into the claim. See Hoganas AB v. Dresser Indus., Inc.,
`9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips
`Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). If the applicants for a
`patent desire to be their own lexicographer, the purported definition must be
`set forth in either the specification or prosecution history. See CCS Fitness,
`Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Such a
`definition must be set forth with reasonable clarity, deliberateness, and
`precision. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). However, only terms which are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. See Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`“portable”
`1.
`Independent claim 44 recites a portable device. Independent claim 57
`recites a portable MP3 player. Independent claim 92 recites a portable audio
`device. Petitioner proposes that the term “portable” be construed the way it
`has been construed by the district court in related actions involving the ’786
`patent, i.e., “capable of being moved about.” Pet. 13–14 (citing Ex. 1112).
`Patent Owner argues that Petitioner’s proposed construction is unreasonably
`
`11
`
`
`
`Page 11 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`broad because it “improperly broadens the plain meaning of the term to
`include anything which can be moved, no matter how large or unwieldy.”
`Prelim. Resp. 9. Patent Owner asserts that one with ordinary skill in the art
`could readily understand the plain meaning of the term “portable,” and that
`no further construction is necessary. Id.
`We agree with Patent Owner that Petitioner’s proposed construction is
`unreasonably broad. In the Specification of the ’786 patent, the term
`“portable” is used to modify devices that can be integrated with a car stereo
`through an interface. In that context, not every device that is capable of
`being moved is reasonably deemed portable. Few items, if any, simply
`cannot be moved, given appropriate tools and persistent effort. Thus, the
`term must be read in context within its application environment. In that
`regard, we note that certain objects, although heavy and large, may be
`deemed portable, such as freight containers and emergency generators.
`It may be that the term requires no express construction, and simply
`would be understood by one with ordinary skill in the art. We note that even
`the ’786 patent itself and Bhogal, both using the term “portable” in their
`written description, do not provide a definition therefor. Nevertheless, an
`express construction is helpful to this proceeding. We construe “portable,”
`in the context of the ’786 patent, as meaning capable of being carried by a
`user.
`
`“interface”
`2.
`Of all challenged claims, claims 1, 44, 57, 86, and 92 are independent,
`
`and each recites an “interface.”
`Claims 1, 57, and 86 require the interface to be connected between a
`first electrical connector and a second electrical connector, where the first
`
`12
`
`
`
`Page 12 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`connector is connectable to a car stereo and the second connector is
`connectable to an after-market audio device (claim 1), a portable MP3 player
`(claim 57), or an after-market video device (claim 86). Claim 92 requires
`the interface to be connected between the car stereo and a portable audio
`device. Claim 44 recites a docking portion that mates with a portable
`device, and an interface that is connected to the car stereo as well as to a data
`port that communicates with the docking portion.
`Also, claim 57 recites that the interface is “for transmitting audio from
`a portable MP3 player to a car stereo”; claim 86 recites that the interface is
`“for transmitting video information from the after-market video device to the
`car stereo”; claim 1 recites that the interface is “for channeling audio signals
`to the car stereo from the after-market audio device”; claim 44 recites an
`interface for “channeling audio from the portable device to the car stereo”;
`and claim 92 recites that the interface includes a microcontroller pre-
`programmed to execute “means for transmitting audio from the portable
`audio device to the car stereo.”
`Petitioner proposes the proper construction of “interface” is “a
`microcontroller that is functionally and structurally separate component
`from the car stereo, which integrates an after-market device with a car
`stereo,” and notes that that is the construction determined by the district
`court in related actions involving the ’786 patent. Pet. 12–14. For several
`reasons, the proposal is unpersuasive. First, as is noted by Patent Owner,
`even if the interface is deemed “functionally and structurally separate” from
`the car stereo, the proposed construction is incomplete in that it omits any
`requirement of separation or distinctness of the interface from the portable or
`after-market device connected thereto. Prelim. Resp. 8–9. Second, the
`
`13
`
`
`
`Page 13 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`proposed construction is too narrow by specifying that the interface
`“integrates an after-market device with a car stereo.” We note that the
`Specification of the ’786 patent provides a special definition for
`“integration” or “integrated.” Ex. 1101, 4:47–52. We discern no reason to
`import limitations into a claim if they are unnecessary to accord meaning to
`the claim.
`Third, the proposed construction is too narrow by requiring the
`interface to be a microcontroller. In the Specification of the ’786 patent, the
`term “interface” is described as including not only a microcontroller but also
`several discrete components, such as resistors, diodes, capacitors, transistors,
`oscillators, amplifiers, and multiplexers, shown in various embodiments of
`Figures 3A, 3B1–3B2, 3C1–3C2, and 3D. Ex. 1101, 9:8–20, 10:19–33,
`11:4–18, 11:59–67. Thus, the term “interface” itself is not limited to a
`microcontroller. In that regard, we note that if the interface itself is
`construed as a microcontroller, as Petitioner proposes, then the additional
`claim language reciting that the interface includes a microcontroller would
`serve no meaningful purpose.
`With regard to an “interface,” the Specification states:
`Thus, as can be readily appreciated, the interface 20 of the
`present invention allows for the integration of a multitude of
`devices and inputs with an OEM or after-market car radio or
`stereo.
`Ex. 1101, 5:33–36.
`As mentioned earlier, the interface 20 of the present invention
`allows for a plurality of disparate audio devices to be integrated
`with an existing car radio for use therewith.
`Id. at 6:4–7.
`
`14
`
`
`
`Page 14 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`Data from the MP3 player, such as track, time, and song
`information, is received by the interface 20, processed thereby,
`and sent to the radio 10 for displaying on display 13. Audio from
`the MP3 player 30 is selectively forwarded by the interface 20 to
`the radio 10 for playing.
`Id. at 6:19–24. Thus, the Specification refers to the interface receiving
`information from an audio device and forwarding information to the car
`stereo, and to the interface allowing integration of a plurality of disparate
`audio devices with a car radio.
`
`During prosecution, the Applicants of the ’786 patent distinguished
`U.S. Patent 6,993,615 B2 (“Falcon”),4 in part by arguing that the reference
`failed to disclose an interface connected between a car stereo and an external
`audio source. Ex. 1102, 0267. Specifically, in distinguishing the invention
`from Falcon, Applicants stated: “[Falcon’s graphical user interface] is an
`entirely different concept than the interface of the present invention, which
`includes a physical interface device connected between a car stereo system
`and an external audio source (e.g., a plurality of auxiliary input sources).”
`Id.
`Construing the term “interface” in light of the Specification, other
`
`language in the claims, as well as the prosecution history noted by
`Petitioner, we determine that—interface is a physical unit that connects one
`device to another and that has a functional and structural identity separate
`from that of both connected devices.
`
`
`4 Falcon discloses a portable computing device connectable to a car stereo
`through an interface configurable within the portable computing device.
`Ex. 3001, Abstr.
`
`15
`
`
`
`Page 15 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`In the specific context of claims 1 and 86, the connected devices are
`the car stereo and an after-market device. In the specific context of claims
`44, 57, and 92, the connected devices are the car stereo and a portable
`device. Each of claims 1, 44, 57, 86, and 92 further requires the interface to
`include a microcontroller.
`“device presence signal”
`3.
`Each of claims 57 and 86 requires within the interface a
`
`microcontroller having a first pre-programmed code portion “for generating
`a device presence signal and transmitting the signal to the car stereo to
`maintain the car stereo in an operational state.” (Emphasis added). Claim
`92 requires within the interface a microcontroller pre-programmed to
`execute “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.” (Emphasis added). A description of “device
`presence signal” is contained in the Specification in the discussion of an
`embodiment that is for connecting a CD player to the car stereo:
`Beginning in step 110, a signal is generated by the present
`invention indicating that a CD player/changer is present, and the
`signal is continuously transmitted to the car stereo. Importantly,
`this signal prevents the car stereo from shutting off, entering a
`sleep mode, or otherwise being unresponsive to signals and/or
`data from an external source.
`Ex. 1001, 12:29–35. All other disclosed embodiments, whether they are for
`connecting an MP3 player or an auxiliary device to the car stereo, refer back
`to the above-quoted description of the device presence signal. Id. at 13:15–
`18, 13:62–65, 14:48–51, 15:35–38, 16:12–15, 16:57–60.
`Petitioner proposes that the term “device presence signal” be
`construed the way it has been construed by the district court in related
`
`16
`
`
`
`Page 16 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`actions involving the ’786 patent, i.e., “transmission of a continuous signal
`indicating an audio device is present.” Pet. 13 (citing Ex. 1112). Patent
`Owner has not proposed a construction. For two reasons, we do not adopt
`Petitioner’s proposed construction.
`First, the proposed construction is too narrow because continuous
`transmission is not necessary to accord meaning to the term. The manner of
`transmission simply reflects how the signal is transmitted and does not
`change what the signal was generated and intended to accomplish and
`actually accomplishes. The Specification also does not put continuous
`transmission in the same category of importance as the requirements in the
`italicized portion of the above-quoted text.
`Second, in claims 57 and 86, the device presence signal is generated
`and transmitted by the interface that is connected between the first and
`second electrical connector, where the first electrical connector is
`connectable to a car stereo and the second electrical connector is connectable
`to a portable MP3 player (claim 57) or an after-market video device (claim
`86). Claim 57 recites that the interface is for transmitting audio from the
`portable MP3 player to the car stereo, and claim 86 recites that the interface
`is for transmitting video information from the after-market video device to
`the car stereo. In claim 92, the device presence signal is generated and
`transmitted by the interface that is connected between the car stereo and the
`portable audio device. Claim 92 further includes, within the interface, a
`means for transmitting audio from the portable audio device to the car
`stereo. In the context of these claims, the device the presence of which is
`signaled by the interface is that device which connects to the interface to
`
`17
`
`
`
`Page 17 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`communicate with the car stereo. Petitioner’s proposed construction does
`not make that clear.
`On the record before us, we construe “device presence signal,” as a
`signal indicating that an audio device (claim 57) or video device (claim 86)
`or portable audio device (claim 92), other than the car stereo, is connected
`to the interface.
`Alleged Obviousness of Claims 57, 58, 60, 64,
`B.
`86, 88, 90, 91, 92, 94, and 97 over JP ’954 and Lau
`We have reviewed the Petition and the Preliminary Response, and
`
`determine that Petitioner has not shown a reasonable likelihood that it would
`prevail in establishing unpatentability of claims 57, 58, 60, 64, 86, 88, 90,
`91, 92, 94, and 97 as obvious over JP ’954 and Lau.
`JP ’954
`1.
`JP ’954 is directed to solving the problem of equipment
`incompatibility, in the environment of automotive audio equipment, between
`a main unit made by one company and a CD changer made by another
`company. Ex. 1101, Abstr. Specifically, JP ’954 describes the
`disadvantages associated with prior art systems as follows:
`When installing an audio device in a vehicle on the occasion of
`a vehicle purchase, it is common for a so-called “basic” main unit
`to be installed. If one were to subsequently attempt to add a CD
`changer capable of automatically changing and playing a
`plurality of loaded CDs, prior to now it would have been
`necessary to purchase and install a model produced by the same
`manufacturer ass the “basic” main unit, as the format of signals
`connecting the respective devices vary from manufacturer to
`manufacturer. Furthermore, if a user had installed both of these
`devices produced by the same manufacturer, and at a later point
`wished to upgrade the main unit to, for example, a model
`produced by company A, it would have been necessary for the
`
`18
`
`
`
`Page 18 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`same reason to also purchase a new CD changer made by
`company A.
`Id. (0002). JP ’954 describes its objective as: “to make it possible to add a
`CD changer made by company B to a main unit made by company A, as
`well as to add a CD changer made by company A to a main unit made by
`company B.” Id. (0003). JP ’954 achieves that objective by providing an
`interface unit as noted below:
`(PROBLEM) Provide an interface unit for automotive audio
`equipment that renders possible the addition of a CD changer
`made by company B to a main unit made by company A as well
`as the addition of a CD changer made by company A to a main
`unit made by company B.
`Id. Abstr. JP ’954 summarizes its interface unit as follows:
`(MEANS FOR SOLVING) The [interface] unit is constituted
`by splitting signals into three systems, namely a control system,
`audio system and power system, and providing a conversion
`circuit for each of these systems.
`Id. Figure 1 of JP ’954 is reproduced below:
`
`
`Figure 1 illustrates a block diagram of the structure of the audio system
`according to JP ’954. Id. (0006). Interface unit 1 “converts the format of
`the signal that links the CD changer 2 and the main unit 3, etc.” Id.
`
`19
`
`
`
`Page 19 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`Interface unit 1 links main unit 3 and CD changer 2, and is provided with
`control system conversion portion 4, audio system conversion portion 5, and
`power conversion portion 6. Id. at Abstr. Control conversion portion 4 is
`for the bus line, clock control signal, etc.; audio conversion portion 5 is for
`the audio signal; and power conversion portion 6 is for the power supply.
`Id. (0006).
`
`Figure 2 of JP ’954 is reproduced below:
`
`
`Figure 2 illustrates control system conversion portion 4. Id. (0007).
`Microcomputer 4a is provided to convert and unify different signal formats
`between the CD changer and the main unit. Id.
`
`Figure 4 is reproduced below:
`
`
`Figure 4 illustrates audio system conversion portion 5. Id. (0011). It
`includes differential amplifiers 5a and 5b and amplifiers 5c and 5d. Id.
`
`20
`
`
`
`Page 20 of 44
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`JP ’954 states: “[a]lthough one embodimen
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
