`
`
`IPR2018-01214
`Patent No. 7,489,786
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DAIMLER AG,
`
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner.
`
`Patent No. 7,489,786
`Issue Date: December 11, 2002
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-01214
`
`
`
`
`
`
`
`

`

`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`IPR2018-01214
`Patent No. 7,489,786
`
`BACKGROUND ............................................................................................. 1
`Prior Unsuccessful Challenges ................................................................... 1
`Asserted Prior Art ....................................................................................... 2
`Effective Filing Date .................................................................................. 3
`Level of Ordinary Skill in the Art .............................................................. 4
`Claim Construction ..................................................................................... 4
`THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED REFERENCES........................................................................... 7
`The Obviousness Standard ......................................................................... 8
`Petitioner’s Proposed Obvious Combination is Not Adequately
`Explained or Supported .............................................................................. 9
`The Cited References Do Not Teach or Disclose an Interface for
`Channeling/Transmitting Audio/Video to a Car Stereo from a
`Portable Device/After-Market Audio Device As Required By Each
`of the Independent Claims ........................................................................ 14
`The Cited References Do Not Teach or Disclose a “Third
`Connector Electrically Connectable to One or More Auxiliary
`Input Source External to the Car Stereo and the After-Market
`Audio Device” As Required By Independent Claim 1 ............................ 17
`The Cited References Do Not Teach or Disclose a “Code …. for
`Remotely Controlling” a Portable/Aftermarket Audio Device As
`Required By Independent Claims 1, 44, 57, and 92 ................................. 19
`The Cited References Do Not Teach or Disclose a “Code …. for
`Receiving Data From” a Portable/Aftermarket Audio Device in a
`Format Incompatible with a Car Stereo As Required By
`Independent Claim 1 ................................................................................. 24
`The Cited References Do Not Teach or Disclose a “Device
`Presence Signal” As Required By Independent Claims 57, 86, and
`92 .............................................................................................................. 26
`The Cited References Do Not Teach or Disclose The Means-Plus-
`Function Limitations of Independent Claim 92 ....................................... 28
`
`A.
`B.
`C.
`D.
`E.
`
`A.
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`ii
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`

`

`IPR2018-01214
`
`Patent No. 7,489,786
`
`III. THE GENERAL PLASTIC FACTORS FAVOR DENIAL OF
`INSTITUTION .............................................................................................. 31
`IV. CONCLUSION .............................................................................................. 35
`
`iii
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`

`

`
`
`
`TABLE OF AUTHORITIES
`
`IPR2018-01214
`Patent No. 7,489,786
`
`Cases
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387, Paper 43 (PTAB Dec. 24, 2014) ............................................... 9
`
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ......................................... 30, 31
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 8
`
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) ............................................................................ 9
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................. 31
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 9
`
`Netapp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) .........................................passim
`
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`IPR2016-00421, Paper 13 (PTAB July 7, 2016) .................................................. 4
`
`Statutes
`
`35 U.S.C. § 314 ........................................................................................................ 31
`
`35 U.S.C. § 316 ........................................................................................................ 32
`
`Other Authorities
`
`37 C.F.R. § 42.100 ..................................................................................................... 4
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`iv
`
`

`

`
`
`
`Exhibit
`2001
`2002
`
`IPR2018-01214
`Patent No. 7,489,786
`
`EXHIBIT LIST
`
`Description
`Transcript of August 10, 2018 PTAB Conference Call
`Defendants’ Joint Disclosures Pursuant to P.R. 4-2 in Blitzsafe Texas,
`LLC v. Mitsubishi Electric Corporation, et al., Case No. 2:17-cv-
`00430 (E.D. Tex.), served March 14, 2018
`
`v
`
`

`

`
`
`
`IPR2018-01214
`Patent No. 7,489,786
`Institution should be denied because, as shown herein, Petitioner has failed
`
`to demonstrate that the references teach or disclose each of the limitations of the
`
`challenged claims.1
`
`I.
`
`BACKGROUND
`Prior Unsuccessful Challenges
`A.
`Five prior petitions for inter partes review of the ’786 Patent have been
`
`filed. The previous petitions all resulted in zero claims cancelled or amended. A
`
`brief summary of the previous IPRs is below:2
`
`IPR
`
`PETITIONER(S)
`
`OUTCOME
`
`IPR2016-00421
`
`Toyota Motor Corp.
`
`IPR2016-00422
`
`Institution denied as to all claims
`except 44 and 47 (July 7, 2016)3
`
`Institution denied (July 6, 2016)
`
`
`1 Unless otherwise noted, all citations to the Petition are to the Corrected Petition
`filed on August 17, 2018.
`
`2 Three additional petitions were filed on June 6 and 7, 2018: IPR2018-01203 by
`Jaguar Land Rover Ltd. and Jaguar Land Rover North America, LLC; and
`IPR2018-01142 and IPR2018-01204 by BMW of North America, LLC.
`
`3 The Board instituted the ’421 Petition only as to claims 44 and 47, which relate to
`“docking stations.” The ’421 IPR was terminated due to settlement on February 21,
`2017.
`
`1
`
`

`

`
`
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`IPR2018-01214
`Patent No. 7,489,786
`
`IPR
`
`PETITIONER(S)
`
`OUTCOME
`
`IPR2016-01448
`
`IPR2016-01472
`
`IPR2016-01477
`
`Volkswagen Group
`of Am., Inc.
`
`Am. Honda Motor
`Co., Inc.
`
`Hyundai Motor Co.
`Ltd., et al.
`
`Institution denied (Jan. 13, 2017)
`
`Institution denied (Feb. 2, 2017)
`
`Institution denied (Jan. 27, 2017)
`
`B. Asserted Prior Art
`Petitioner now files two additional petitions against the ’786 Patent. In the
`
`present petition, Petitioner asserts that claims 1–2, 4–8, 10, 13–14, 23–24, 44, 47,
`
`57–58, 60–65, 86, 88–92, 94, and 97–98 (collectively, “the Challenged Claims”)4
`
`are obvious in view of:
`
`• U.S. Patent No. 6,396,164 to Michael Barnea et al. (“Barnea,” Ex. 1004);
`
`• Garman Patent No. DE 10101702A1 to Frank Plagge et al. (“Plagge,”
`
`Ex. 1005)5;
`
`
`4 Claims 1, 44, 57, 86, and 92 are independent. The remaining Challenged Claims
`depend from them. In IPR2018-01211, filed on the same day, Petitioner alleges
`that the same claims are invalid in view of essentially the same art, except JP
`Model Utility App. H7-6954 (“Ouchida”) is relied on instead of Plagge.
`
`5 Plagge was asserted as a prior art reference in a petition for inter partes review
`filed against related U.S. Patent No. 8,155,342. See Am. Honda Motor Co. v.
`
`2
`
`

`

`
`
`
`IPR2018-01214
`Patent No. 7,489,786
`• U.S. Patent No. 6,629,197 to Kulvir Singh Bhogal et al. (“Bhogal,”
`
`Ex. 1006)6;
`
`• CAN Specification v 2.0 (“CAN,” Ex. 1011);
`
`• U.S. Patent Publication No. 2001/0028717 to Hiroshi Ohmura et al.
`
`(“Ohmura,” Ex. 1008)7; and
`
`• U.S. Patent No. 6,472,771 to Thomas Frese et al. (“Frese,” Ex. 1009).
`
`(collectively, “the Cited References”). Petition at 18–19. But, as discussed below,
`
`the Cited References fail to address the repeated deficiencies of the prior petitions.
`
`C. Effective Filing Date
`Petitioner asserts that the “earliest claimed effective filing date of the ’786
`
`Patent” is December 11, 2002,” Petition at 14. Patent Owner states that for the
`
`purposes of this proceeding, a determination of the effective filing date is
`
`unnecessary and thus does not respond to this characterization of the effective
`
`
`Blitzsafe Texas, LLC, IPR2016-01473, Paper 2 (July 21, 2016). Institution of inter
`partes review based on that petition was denied. See Am. Honda Motor Co. v.
`Blitzsafe Texas, LLC, IPR2016-01473, Paper 9 (Jan. 24, 2017).
`
`6 Bhogal was asserted as a prior art reference in IPR2016-00421 and IPR2016-
`01472.
`
`7 Ohmura was asserted as a prior art reference in IPR2016-01448 and IPR2016-
`01472.
`
`3
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`

`

`IPR2018-01214
`
`Patent No. 7,489,786
`
`filing date. Patent Owner reserves the right to establish an earlier effective filing
`
`date in any district court proceeding or in any other proceeding if necessary.
`
`D. Level of Ordinary Skill in the Art
`Petitioner states that the person of ordinary skill in the art (“POSA”) would
`
`have “at least an undergraduate degree in computer science or computer
`
`engineering, or equivalent work experience, including familiarity with
`
`transmission of audio and video and methods of software control and data
`
`conversion.” Petition at 14. Patent Owner agrees for the purposes of this
`
`proceeding that this level of skill is appropriate.
`
`E. Claim Construction
`Because the ’786 Patent is not expired, the broadest reasonable construction
`
`of each claim term is applied. 37 C.F.R. § 42.100(b).
`
`Petitioner “accepts” the construction that the Board applied for the claim
`
`term “device presence signal” in previous IPRs relating to the ’786 Patent. See
`
`Petition at 14–15; see also IPR2016-00421, Paper 13 at 18; IPR2016-01472,
`
`Paper 7 at 14; IPR2016-01477, Paper 13 at 10. This is improper, as Petitioner is
`
`required by 37 C.F.R. § 42.104(b)(3) to offer its own proposed construction that it
`
`believes to be correct. See Toyota Motor Corp. v. Blitzsafe Texas, LLC, IPR2016-
`
`00421, Paper 13 at 24 (P.T.A.B., July 7, 2016) (“The ‘construction’ referred to by
`
`37 C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that
`
`4
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`

`IPR2018-01214
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`Patent No. 7,489,786
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`Petitioner believes is the correct construction under applicable law and should
`
`apply in the involved proceeding.”). Regardless, for the purposes of this
`
`preliminary response, Patent Owner assumes that the Board will apply its prior
`
`constructions.
`
`Petitioner ignores that in previous decisions relating to the ’786 Patent, the
`
`Board addressed the construction of the terms “portable” and “interface.” The
`
`Board’s prior constructions are listed in the table below.
`
`TERM
`
`CONSTRUCTION
`
`“portable”
`
`“capable of being carried by a user”
`
`IPR2016-00421, Paper 13 at 12; IPR2016-01472,
`Paper 7 at 11.
`
`5
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`

`
`
`
`TERM
`
`“interface”
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`IPR2018-01214
`Patent No. 7,489,786
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`CONSTRUCTION
`
`“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”
`
`IPR2016-00421, Paper 13 at 15 (also noting: “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.”);
`IPR2016-00422, Paper 12 at 15 (same); IPR2016-
`01448, Paper 7 at 13 (same); IPR2016-01472,
`Paper 7 at 13 (similar).
`
`For the purposes of this preliminary response, Patent Owner assumes that the
`
`Board will apply its prior constructions.
`
`Additionally, Petitioner “adopts [Patent Owner]’s [proposed] constructions”
`
`from the district court litigation of six means-plus-function claim terms: (1) “first
`
`pre-programmed means for generating a device presence signal …”; (2) “first pre-
`
`programmed means for … transmitting the signal to the car stereo to maintain the
`
`car stereo in an operational state”; (3) “second pre-programmed means for
`
`remotely controlling the portable audio device using the car stereo by receiving a
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`6
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`IPR2018-01214
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`Patent No. 7,489,786
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`control command from the car stereo in a format incompatible with the portable
`
`audio device”; (4) “second pre-programmed means for remotely controlling the
`
`portable audio device using the car stereo by … processing the control command
`
`into a formatted control command compatible with the portable audio device”;
`
`(5) “second pre-programmed means for remotely controlling the portable audio
`
`device using the car stereo by … transmitting the formatted control command to
`
`the portable audio device for execution thereby”; and (6) “means for transmitting
`
`audio from the portable audio device to the car stereo.” See Petition at 15–18. For
`
`the purposes of this preliminary response, Patent Owner assumes that the Board
`
`will apply these constructions
`
`Finally, the claim term “auxiliary input source,” which appears in claims 1
`
`and 14, should be construed to mean “a device that outputs audio by headphone
`
`jack or other connector.” This is the construction that was agreed to by Patent
`
`Owner and Petitioner in a related district court case. See Ex. 1009 (Plaintiff’s
`
`Mar. 14, 2018 Proposed Constructions and Extrinsic Evidence Pursuant to Patent
`
`Rule 4-2) at 1; Ex. 2001 (Defendants’ Mar. 14, 2018 Joint Disclosures Pursuant to
`
`P.R. 4-2) at 7.
`
`II. THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED REFERENCES
`
`Institution should be denied because Petitioner has not established that the
`
`Challenged Claims are obvious in view of the Cited References. In particular, the
`
`7
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`

`

`IPR2018-01214
`
`Patent No. 7,489,786
`
`Petition is deficient because Petitioner has not shown that the Cited References
`
`teach or disclose (1) an interface that channels or transmits audio or video to a car
`
`stereo from a portable or after-market audio device as required by each of the
`
`independent claims; (2) a “third connector electrically connectable to one or more
`
`auxiliary input sources external to the car stereo and the after-market audio device”
`
`as required by independent claim 1; (3) “code …. for remotely controlling” a
`
`portable or aftermarket audio device as required by independent claims 1, 44, 57,
`
`and 92; (4) “code … for received data from” a portable or aftermarket audio device
`
`in a format incompatible with a car stereo as required by independent claim 1; (5) a
`
`“device presence signal” as required by independent claims 57, 86, and 92; (6) the
`
`means-plus-function limitations of claim 92.8
`
`A. The Obviousness Standard
`Obviousness is determined 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) where in evidence, so-called secondary considerations. Graham v. John Deere
`
`
`8 Patent Owner reserves the right to present additional argument and evidence that
`the Cited References fail to teach or disclose additional limitations of each of the
`Challenged Claims and that Petitioner has failed to show that a POSA would have
`been motivated to combine the references with a reasonable expectation of success.
`
`8
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`

`

`IPR2018-01214
`
`Patent No. 7,489,786
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`Co., 383 U.S. 1, 17–18 (1966). However, a conclusion of obviousness “cannot be
`
`sustained with mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In determining
`
`obviousness, the references must be considered as a whole; picking and choosing
`
`from a reference only the favorable parts and ignoring the rest is prohibited. In re
`
`Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).
`
`Here, the Petition fails because it fails to explain how the references, alone
`
`or in combination, teach each element of each claim. See C.B. Distributors, Inc. v.
`
`Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at 30–31 (PTAB Dec. 24,
`
`2014).
`
`B.
`
`Petitioner’s Proposed Obvious Combination is Not Adequately
`Explained or Supported
`
`Petitioner attempts to construct a Frankenstein’s monster-style obvious
`
`combination out of a minimum of three references: Bhogal, Barnea, and Plagge.
`
`But Petitioner has not shown how these references could be combined together to
`
`create a device integration system as claimed by each of the Challenged Claims
`
`(independent claims 1, 57, and 92 claim “[a]n audio device integration system”;
`
`independent claim 44 claims “[a]n apparatus for docking a portable device for
`
`integration with a car stereo”; independent claim 86 claims “[a] device for
`
`integrating video information for use with a car stereo.”
`
`9
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`

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`IPR2018-01214
`Patent No. 7,489,786
`Petitioner’s proposed combination begins with the “vehicle electrical system
`
`10” of Barnea, which includes a “gateway 30” that “couples the vehicle bus 12
`
`with a device bus 32.” See Petition at 24, 32; Barnea at 2:41–42. The vehicle bus
`
`12 couples “various original equipment (OE) electronic devices” including “at
`
`least a driver information center (DIC) 14, a radio 16[,] an HVAC controller 18,”
`
`and “controls 20, 22, 24, and 26.” Barnea at 2:31–40. The device bus 32 couples
`
`“numerous additional electronic devices such as pager 34, cellular telephone 36
`
`and other electronic devices generally indicated as device 38,” which can “include
`
`navigation systems, infrared transceivers, personal computers, personal digital
`
`assistants, communication/data ports or docking stations, and the like.” Id. at 2:41–
`
`50. The gateway 30 of Barnea is used to enable the controls 20, 22, 24, and 26 to
`
`control the devices connected to the device bus 32. Id. at 2:65–67, 3:14–20. Barnea
`
`does not describe how the gateway 30 is constructed other than that it “may further
`
`include a memory 31 in which the various operating contexts of the electrical
`
`system 10 are stored.” Id. at 3:15–17.
`
`Petitioner then proposes that the gateway 30 of Barnea can be replaced with
`
`emulator unit 110/206/302 of Bhogal. See Petition at 24–25, 33–34; Bhogal at
`
`3:48–50, 3:64–4:2, 5:15–16, 6:11–17. The emulator unit of Bhogal, which is
`
`“preferably embodied in a mobile or portable package,” Bhogal at 3:48–50, 4:8–9,
`
`4:45–48, 6:18–21, is implemented using “central processing unit (CPU) 112,” id. at
`
`10
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`

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`IPR2018-01214
`
`Patent No. 7,489,786
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`2:64–65, and is installed “as an intermediary unit between car stereo unit 202 and
`
`CD-changer unit 204,” id. at 5:34–37, “which is usually a hardwired interface for
`
`providing access to hardcopy digital audio files stored on CDs that are stored
`
`within the CD changer,” id. at 5:1–3. In addition to retaining the existing
`
`functionality of enabling access to and control of the CD changer from the car
`
`stereo unit, the emulator unit stores digital audio files in its own memory and
`
`enables them to “be accessed by a user through car stereo unit 202 … as virtual
`
`CD-ROMs. Id. at 5:39–43.
`
`There are several problems with this combination. First, while the gateway
`
`of Barnea is located within the vehicle electrical system itself, see Barnea at 2:29–
`
`42, the emulator of Bhogal is located within a portable audio device that is external
`
`to the vehicle electrical system, id. at 2:48–59, 4:8–9, 4:45–48, 6:18–21. Petitioner
`
`does not provide any explanation regarding how (or why) one could take a device
`
`from outside of the vehicle electrical system and use it to replace a component that
`
`is part of the system. Second, Barnea does not provide any explanation regarding
`
`how its gateway is constructed. While Petitioner asserts that “[t]he proposed
`
`combination implements Bhogal’s CPU-based interface …., programmed to retain
`
`the functionality described in Bhogal, implemented in the same way as Barnea’s
`
`‘gateway’ interface,” see Petition at 24, it does not provide any explanation
`
`regarding how this could be done. Petitioner does not explain how the CPU-based
`
`11
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`

`IPR2018-01214
`
`Patent No. 7,489,786
`
`interface of Bhogal can be substituted in place of the gateway of unknown
`
`construction of Barnea, does not explain whether (and how) the emulator of
`
`Bhogal would also be programmed to provide the functionality of the gateway of
`
`Barnea, and does not even explain what it means for the Bhogal emulator to be
`
`“implemented in the same way” as Barnea’s gateway.
`
`As if this combination were complicated or problematic enough, Petitioner
`
`then additionally proposes that the Bhogal emulator be additionally programmed
`
`with “Plagge functionality.” See Petition at 24 (callout in annotated figure), 42.
`
`Plagge discloses “an interface for a CD-transformer,” Plagge at ¶ 1, “with the
`
`interface emulator converting control and status signals emitted by the vehicle
`
`radio into a format compatible for [an MP3] player and status signals emitted by
`
`the player into a format compatible to the CD-converter,” id. at ¶ 8. The audio
`
`“output of the player … is directly connected to an input of the vehicle audio
`
`device.” Id. at ¶ 9. The player itself converts the digital audio signals into analog
`
`audio signals “prior to forwarding to the vehicle audio device.” Id. Separately, an
`
`interface emulator is used to “convert[] … the control and status signals” between
`
`the vehicle audio system and the player. Id. at ¶ 18. The interface emulator is
`
`connected to the vehicle audio system via a wired interface (2) and to the player
`
`via a wireless interface (5). Id. at 15.
`
`12
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`IPR2018-01214
`Patent No. 7,489,786
`Petitioner does not describe which functionality of Plagge it proposes should
`
`be programmed into the Bhogal microcontroller-based emulator, which it proposes
`
`should be implemented in place of the Barnea gateway. Petitioner does not
`
`describe how the interface emulator of Plagge functions, nor how that functionality
`
`could be incorporated into the Bhogal microcontroller-based emulator. Petitioner
`
`further does not explain how one could co-mingle the functionality of the Plagge
`
`interface emulator with the functionality of the Bhogal microcontroller (and
`
`possibly the Barnea gateway). Moreover, Petitioner does not describe why one
`
`would choose to import functionality from the interface emulator of Plagge, which
`
`is located between the vehicle audio system of a car and an MP3 player into the
`
`emulator of Bhogal, which is located within a portable audio device.
`
`On top of this, Petitioner further proposes to use the CAN Specification for
`
`its disclosure regarding the operation of a particular type of bus used by car
`
`manufacturers, see Petition at 58, despite the fact that none of Barnea, Bhogal, or
`
`Plagge disclose the use of a CAN bus, and despite the fact that Bhogal, whose
`
`emulator is designated by Petitioner as providing the microcontroller that runs the
`
`combination system, does not disclose the use of any buses whatsoever (and thus
`
`would not know how to control or operate a bus, let alone a CAN bus specifically).
`
`13
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`

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`
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`IPR2018-01214
`Patent No. 7,489,786
`C. The Cited References Do Not Teach or Disclose an Interface for
`Channeling/Transmitting Audio/Video to a Car Stereo from a
`Portable Device/After-Market Audio Device As Required By Each
`of the Independent Claims
`
`Each of the independent claims requires an interface that channels or
`
`transmits audio or video to a car stereo from a portable or after-market audio
`
`device. Claim element 1[e] recites, “an interface … for channeling audio signals to
`
`the car stereo from the after-market audio device.” ’786 Patent at 21:38-41. Claim
`
`element 44[e], recites “an interface … channeling audio from the portable device
`
`to the car stereo.” Id. at 25:10–12. Claim element 57[d], recites “an interface … for
`
`transmitting audio from a portable MP3 player to a car stereo.” Id. at 26:17–19.
`
`Claim element 86[d], recites “an interface … for transmitting video information
`
`from the after-market video device to the car stereo.” Id. at 28:45–47. Claim
`
`elements 92[d] and [j] recite, “an interface …” and “means for transmitting audio
`
`from the portable device to the car stereo.”9 Id. at 29:14–31.
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`9 Although claim 92 lists the “means for transmitting audio from the portable
`device to the car stereo” as a separate limitation from the “interface,” Petitioner
`relies on its analysis of “an interface” with respect to claim element 1[e] to show
`how it contends the “means for transmitting audio from the portable device to the
`car stereo” of claim element 92[j] is allegedly disclosed by its obviousness
`combination. See Petition at 65.
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`Petitioner provides the same arguments with respect to each of these
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`limitations. See Petition at 57 (for claim element 44[e], referring back to its
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`analysis of claim element 1[e]), 63 (for claim element 57[d], referring back to its
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`analysis of claim element 1[e] and claim 4, which does not relate to the subpart of
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`this limitation discussed here), 80 (for claim element 86[d], referring back to its
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`analysis of claim element 1[e] and claim 10, which does not relate to the subpart of
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`this limitation discussed here), 65 (for claim elements 92[j], referring back to its
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`analysis of claim element 1[e]).
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`Petitioner’s argument that its obvious combination discloses this limitation
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`is quite limited. See Petition at 43–44.
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`First, Petitioner asserts that “Barnea expressly discloses the use of audio
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`devices, such as the MP3 player disclosed by Bhogal, or CD changer disclosed by
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`Plagge.” Petition at 43. But Petitioner does not assert that Barnea discloses the
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`channeling or transmission of audio from any audio devices to a car stereo; in fact,
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`Barnea does not.
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`Instead, Petitioner asserts that “Bhogal’s microcontroller-based emulator …
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`channels audio signals from an after-market device as required by the claims.” See
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`Petition at 44. Petitioner’s analysis is flawed. Petitioner relies on Bhogal’s
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`disclosure that in “end-unit” and “combination” modes, “MP3 audio is streamed
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`from the emulator to the car stereo.” Id. But in Petitioner’s obvious combination,
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`the emulator of Bhogal is not a portable or aftermarket audio device. Rather,
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`Petitioner asserts that Bhogal’s emulator is the claimed “interface.” See Petition at
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`39–42. Petitioner therefore cannot also rely on the emulator to serve as the portable
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`or after-market audio device because, as previously construed by the Board, an
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`interface “is a physical unit that connects one device to another and that has a
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`functional and structural identity separate from that of both connected devices.”
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`See Section I.E supra. As the emulator of Bhogal does not have separate functional
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`and physical identity from itself, it cannot serve as both the portable or aftermarket
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`audio device and the interface. This makes sense in the context of this limitation as
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`one would not ordinarily speak of a device that “channels” (i.e., serves as a conduit
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`between) itself and another system component.
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`Moreover, Petitioner cannot (and does not attempt to) rely on any
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`channeling or transmission of audio by Bhogal’s emulator from the CD changer, as
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`the CD changer of Bhogal is neither a portable nor aftermarket audio device. See
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`Bhogal at 2:64–65 (describing “augment[ing] an existing system containing a CD-
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`changer unit”), 5:1–2 (describing the “CD-changer interface” as “usually a
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`hardwired interface”). As the CD changer is part of an existing system, it is not
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`“aftermarket.” As it is hardwired, it is not portable (which the Board has previously
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`construed to mean “capable of being carried by a user, see Section I.E supra).
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`Additionally, Petitioner cannot (and does not) rely on the interface emulator
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`of Plagge as channeling audio, as the audio in the Plagge system is not routed
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`through the interface emulator. Rather, “the output of the player for the digital
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`audio signals saved in a compressed form is directly connected to an input of the
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`vehicle audio device, with the digital audio signals then being converted in the
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`player, prior to forwarding to the vehicle audio device, into audio signals.” Plagge
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`at ¶ 9; see also id. at ¶ 17 (“The output signals of the MP3-player 7, which are
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`usually issued in a mobile device via the headphones, can directly be issued to the
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`audio input 3 of the motor vehicle-radio 1 ….”).
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`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
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`Cited References teach an interface that channels or transmits audio or video to a
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`car stereo from a portable or after-market audio device.
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`D. The Cited References Do Not Teach or Disclose a “Third
`Connector Electrically Connectable to One or More
`Auxiliary Input Source External to the Car Stereo and the
`After-Market Audio Device” As Required By Independent
`Claim 1
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`Claim element 1[d] recites, “a third connector electrically connectable to one
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`or more auxiliary input sources external to the car stereo and the after-market audio
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`device.” ’786 Patent at 21:35–38.
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`Petitioner asserts that this limitation is disclosed by Barnea. See Petition at
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`37–39. In particular, Petitioner alleges that Barnea’s “other electronic devices
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`generally indicated as device 38” corresponds to the claimed “auxiliary input.” Id.
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`at 37–38. Petitioner’s contention fails for two reasons.
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`First, the Barnea’s other device 38 is not connected to its gateway (or
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`interface) via a separate third connector as is clearly required by the claim. Rather,
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`Barnea’s other device 38 is connected to the gateway 30 by the same device bus 32
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`as the pager 34 and cell phone 36. See Barnea at 2:43–46. This data consolidates
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`all signals from each of pager 34, cell phone 36, and other device 38 and passes
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`them along device bus 52 to gateway 30. See id. at 3:37–53. Petitioner identifies
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`this bus as the claimed “second connector.” See Petition at 34–35. It cannot also
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`serve as the claimed separate third connector. Perhaps recognizing this, Petitioner
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`asserts that Bhogal also teaches that “each device may be connected ‘directly to the
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`gateway,’ i.e., using separate connectors.” See Petition at 38 (citing Bhogal at
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`2:65–67). But Bhogal does not teach how the devices can be coupled directly
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`through the gateway if not through the bus. In particular, it does not teach that any
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`separate electrical connectors are used to do so.
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`Second, Petitioner has not even attempted to assert or show that the other
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`device 38 is “a device that outputs audio by headphone jack or other connector,” as
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`it has agreed this term should be construed, see Section I.E supra. As discussed
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`above in Section II.C, Barnea does not teach that any of the connected devices
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`transmit (or output) audio to the interface, and Petitioner does not even assert here
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`that they do. And even to the extent that other device 38 were to output audio,
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`Petitioner does not assert or show that it does so by headphone jack or other
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`connector. Indeed, any assertion to effect would be undermined by Petitioner’s
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`assertion that other device 38 is connected via the device bus 32.
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`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
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`Cited References teach an “auxiliary input source external to the car stereo,” as it
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`asserts.
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`E.
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`The Cited References Do Not Teach or Disclose a “Code ….
`for Remotely Controlling” a Portable/Aftermarke