IPR2021-01267
`U.S. Patent No. 8,166,081
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`PATENT OWNER’S SUPPLEMENTAL BRIEF PURSUANT TO
`AUTHORIZATION BY THE BOARD
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`1
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`U.S. Patent No. 8,166,081
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`
`IPR2021-01267
`U.S. Patent No. 8,166,081
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`PATENT OWNER’S SUPPLEMENTAL BRIEF PURSUANT TO
`AUTHORIZATION BY THE BOARD
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`1
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Pursuant to the Board’s authorization granted on September 16, 2022, Patent
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`Owner StratosAudio, Inc. (“Patent Owner”) hereby submits this supplemental brief
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`and accompanying exhibits which relate to arguments raised in IPR2021-01267
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`and the patentability of claims 9-11, 15, and 23 of U.S. Patent No. 8,166,081 (the
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`“’081 patent”).
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`Patent Owner asserted the ’081 patent against Subaru of America Inc.
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`(“Subaru”) in a district court litigation. See StratosAudio, Inc. v. Subaru of
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`America, Inc., Case No. 6:20-cv-01128-ADA (W.D. Texas). On August 1, 2022,
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`Subaru filed a motion to strike certain of Patent Owner’s expert opinions relating
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`to the validity of the ’081 patent, claiming Patent Owner adopted incorrect claim
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`construction positions. See generally EX2018. Specifically, the briefing raised the
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`same claim construction dispute that is also at issue in this proceeding regarding
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`the proper construction of the term “an output system configured to present
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`concurrently the first media content and the second media content on an output of
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`the first receiver module or the second receiver module” in claim element 9[c] of
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`the ’081 patent.
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`Subaru asserted that the district court apply the same claim construction
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`Petitioner Hyundai made in these proceedings (and the same constructions
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`petitioner Volkswagen made in IPR2021-00721, which also relates to the ’081
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`patent). See EX2018, 8-9. Specifically, Subaru argued that the word “or” in the
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`portion of the limitation reciting “an output of the first receiver module or the
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`second receiver module” should be changed to “and/or.” See EX2018, 8.
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`Alternatively, Subaru argued only one “output” was required. See EX2018, 8.
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`In opposing Subaru’s motion, Patent Owner explained that the plain and
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`ordinary meaning of the claim limitation as understood by a person of ordinary
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`skill in the art requires two separate receiver modules each with separate outputs—
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`the same interpretation Patent Owner has argued here and in IPR2021-00721. See
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`EX2019, 5. Patent Owner pointed the district court to case law demonstrating it
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`was improper to change the word “or” to “and/or.” See EX2019, 6 (citing various
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`cases including Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326
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`(Fed. Cir. 2001)); Kustom Signals, Inc., 264 F.3d at 1331 (“there is no basis
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`whatsoever for believing [patentee] intended its usage of ‘or’ somehow to embrace
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`‘and.’”). This same case law also demonstrates why it is inappropriate to read out
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`one of the two outputs; because claim 9 is a system claim, the “output system”
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`must have the capability to utilize either recited output. See Kustom Signals, Inc.,
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`264 F.3d at 1331 (noting the claim requires the capacity for operator selection
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`between two recited modes of operation). Patent Owner also pointed out that
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`Subaru had presumptively adopted the admission of its Co-Petitioner Volkswagen
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`in the IPR2021-00721 proceeding that the “output” limitation requires two outputs.
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`See EX2019, 6; see also Volkswagen Group of America, Inc., et al. v.
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`StratosAudio, Inc., IPR2021-00721, Record of Oral Hearing (Paper 52), at 14:20-
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`15:1 (“Judge Arbes: But why does the claim not require that two outputs exist? I –
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`I can see your point about not making the determination, but it – it does seem to be
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`that the claim requires that two outputs exist in order to have an output system that
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`is configured to present the information on one or the other. They both have to
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`exist, right? Mr. Richardson: Absolutely. Yes.”).
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`At the end of oral argument, the district court denied Subaru’s motion to
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`strike, finding Patent Owner’s construction was “permissible explanation of how a
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`person of ordinary skill in the art would understand the plain and ordinary meaning
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`of [the output] term[].” See EX2021, at 21:1-16.1 Patent Owner respectfully
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`requests that the Board adopt the same understanding as the district court when it
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`interprets claim 9 of the ’081 patent in this proceeding.
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`Dated: September 23, 2022
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`Respectfully submitted,
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`/John Scheibeler/(electronically signed)
`John Scheibeler
`Reg. No. 35,346
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`1 As of the time of this submission, the district court has not yet issued a written
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`order.
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`WHITE & CASE LLP
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`John Scheibeler, Reg. No. 35,346
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`Phone: 212-819-8200
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`Jonathan Lamberson, Reg. No. 57,352
`Back-Up Counsel
`White & Case LLP
`2 Palo Alto Square, Suite 900
`3000 El Camino Real
`Palo Alto, California 94306-2109
`Phone: 650-213-0384
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`Hallie Kiernan (pro hac vice)
`Back-Up Counsel
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`Phone: 212-819-8200
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Supplemental Brief Pursuant to Authorization by the Board was served on
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`September 23, 2022, by filing this document through the PTAB E2E System, as
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`well as delivering a copy via electronic mail upon the following attorneys of record
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`for Petitioner:
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`Ryan Yagura (Reg. No. 47,191)
`Nicholas J. Whilt (Reg. No. 72,081)
`Caitlin P. Hogan (Reg. No. 61,515)
`Clarence A. Rowland (Reg. No. 73,775)
`Benjamin Haber (Reg. No. 67,129)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`(213) 430-6000
`Bradley Berg (admitted pro hac vice)
`O’Melveny & Myers LLP
`610 Newport Center Dr., 17th Floor
`Newport Beach, CA 92660
`(949) 823-6900
`William W. Fink (Reg. No. 72,332)
`O’Melveny & Myers LLP
`1625 I Street, NW
`Washington, D.C. 20006
`(202) 383-5300
`ryagura@omm.com
`nwhilt@omm.com
`chogan@omm.com
`crowland@omm.com
`bmberg@omm.com
`bhaber@omm.com
`tfink@omm.com
`StratosAudioHyundaiOMM@omm.com
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Respectfully submitted,
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`/John Scheibeler/ (electronically signed)
`John Scheibeler
`Reg. No. 35,346
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