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`EXHIBIT B
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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 2 of 94 PageID #:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC
`
`Patent Owner
`
`Patent No. 8,155,342
`Issued: Apr. 10, 2012
`Filed: Jun. 27, 2006
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`
`
`Inter Partes Review No.: Unassigned
`
`
`
`DECLARATION OF THOMAS G. MATHESON, Ph.D.
`
`IN SUPPORT OF PETITIONER’S REQUEST FOR INTER PARTES
`REVIEW
`
`TOYOTA Ex. 1016
`
`

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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 3 of 94 PageID #:
` 3057
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1
`I.
`II. BACKGROUND AND QUALIFICATIONS .................................................... 1
`A.
`Educational Background .............................................................................. 1
`B.
`Relevant Professional Experience ................................................................ 1
`III. SUMMARY OF MY OPINIONS ....................................................................... 4
`A.
`Instructions ................................................................................................... 5
`1. Claim Interpretation ..................................................................................... 6
`2. Anticipation .................................................................................................. 7
`3. Obviousness ................................................................................................. 7
`4. “means-plus-function” claims ....................................................................11
`B.
`Effective Filing Dates and Prior Art Patents and Printed Publications .....13
`IV. OVERVIEW OF THE TECHNOLOGY ..........................................................17
`A.
`Summary of the ‘342 Patent Disclosure ....................................................17
`B.
`Summary of the Challenged Claims ..........................................................20
`C.
`Summary of the Prosecution History of the ‘342 Patent ...........................23
`D.
`The “Problem” the ‘342 Patent Claims to Solve .......................................25
`V. CLAIM CONSTRUCTION ..............................................................................30
`VI. ALL CHALLENGED CLAIMS OF THE ‘342 PATENT ARE
`UNPATENTABLE ..................................................................................................39
`A. Grounds 1-3: Clayton .................................................................................39
`1. Ground 1: Claims 49-55, 57, 62-64, 71, 73-80, 95, 97, 99-103, 109-111,
`and 120 are obvious under 35 U.S.C. §103(a) by Clayton in view of Berry ....39
`2. Ground 2: Claims 49-57, 62-64, 66, 70, 71, 73-80, 94, 95, 97, 99-103, 106,
`109-111, 113, and 120 are obvious under 35 U.S.C. §103(a) by Clayton in
`view of Berry and Marlowe ..............................................................................72
`3. Ground 3: Claims 68 and 115 are obvious under 35 U.S.C. §103(a) by
`Clayton in view of Berry, Marlowe, and Gioscia .............................................83
`VII. CONCLUSION .................................................................................................87
`
`
`
`
`i
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`

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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 4 of 94 PageID #:
` 3058
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`
`EXHIBITS AND ATTACHMENTS
`
`
`
`I may refer to the folowing Exhibits that I understand were submitted by
`
`Petitioner in connection with the Inter Partes Review petition:
`
`Exhibit
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`
`Description
`U.S. Patent No. 8,155,342 (“the ‘342 patent”)
`U.S. Patent Application Publication No. 2006/0181963 ("Clayton")
`U.S. Provisional Application No.
`60/651,963
`("Clayton
`Provisional")
`U.S. Patent No. 6,559,773 ("Berry")
`U.S. Patent Application Publication No. 2003/0215102 ("Marlowe")
`U.S. Patent No. 6,421,305 ("Gioscia")
`Claim Construction Ruling in Marlowe Patent Holdings LLC v.
`DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ) and Marlowe
`Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D.
`NJ)
`U.S. Patent Application No. 11/475,847 ("the '847 application")
`U.S. Patent Application No. 11/071,667 ("the '667 application")
`U.S. Patent Application No. 10/732,909 ("the '909 application")
`U.S. Patent Application No. 10/316,961 ("the '961 application")
`Highlighted ‘342 Patent (Showing the New Matter)
`Infringement
`Plaintiff's Disclosure of Asserted Claims and
`Contentions, served in Blitzsafe Texas, LLC v. Toyota Motor Corp.
`et al., 2-15-cv-01277 (E.D. TX)
`File History of the ‘342 Patent
`1999 ID3v2.3 Metadata Standard (1999)
`Declaration of Dr. Thomas Matheson
`Canadian Patent Application Publication No. CA 2347648
`("Kandler")
`International Publication No. WO 01/67266 A1 ("Lau")
`U.S. Patent Application Publication No. 2001/0028717 ("Ohmura")
`Bluetooth ESDP for UPnP (2001)
`Universal Plug and Play Device Architecture (2000)
`
`1018
`1019
`1020
`1021
`
`ATTACHMENT A: Curriculum Vitae of Thomas G. Matheson, Ph.D.
`
`
`
`ii
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`

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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 5 of 94 PageID #:
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`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel for Toyota Motor Corporation
`
`(“Toyota” or “Petitioner”), and asked to review and provide my opinion on the
`
`patentability of claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106,
`
`109-111, 113, 115, and 120 of U.S. Patent No. 8,155,342 (Ex. 1001, “the ʼ342
`
`Patent”). I am being compensated for my time at my normal consulting rate of
`
`$350 per hour. My compensation is not contingent on the outcome of this
`
`proceeding or the content of my opinions.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`A. Educational Background
`
`2.
`
`In 1974, I received a B.S. in Physics from Abilene Christian
`
`University. In 1976, I received an M.A. in Physics from the University of Oregon.
`
`In 1980, I received a Ph.D. from the University of Oregon in Physics. In 1998, I
`
`received an M.B.A. from The Wharton School of Business at the University of
`
`Pennsylvania.
`
`B. Relevant Professional Experience
`
`3. While working on my technical degrees I taught laboratory courses in
`
`Electronics and Instrumentation and published papers on applications of
`
`microcomputers to signal processing. The experimental apparatus that I developed
`
`as part of my thesis research in experimental Solid State Physics was a highly
`
`automated, multiple-computer instrumentation system capable of controlling
`
`
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`

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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`laboratory equipment (including 100-amp currents through a superconducting
`
`solenoid) while automatically measuring and analyzing low-frequency
`
`electromagnetic signals from Silicon ICs under vacuum, near zero Kelvin, and in a
`
`high magnetic field.
`
`4. While working at AT&T Bell Laboratories most of my work focused
`
`on the design of large digital systems, including investigation of both low-
`
`bandwidth and high-bandwidth networks. As part of that work, I designed
`
`network-interface integrated circuits that were fabricated and used in prototype
`
`network systems. I also researched and built an automated system that
`
`automatically designed fabrication-ready single-chip microcomputers/controllers
`
`starting from a high level specification.
`
`5.
`
`In 1984, I founded Silicon Design Labs (later named Silicon Compiler
`
`Systems), an IC CAD company that commercialized “Silicon Compilation.”
`
`(Silicon Compilation is the application of language compiler and related
`
`programming techniques to IC design and layout.) We also provided custom IC
`
`design services and sold libraries of standardized IC circuit designs and layouts. I
`
`performed marketing and engineering functions, managing groups that developed
`
`IC layout, analysis, extraction, and Silicon Compilation tools. During this period, I
`
`published several technical papers on our IC design tools. Although our tools were
`
`general-purpose electronic- and IC-design tools, most of our customers focused on
`
`
`
`2
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`custom processor and controller design. Among such customers was General
`
`Motors, which was interested in designing custom ICs for automotive use.
`
`6. My consulting over the last dozen years has primarily involved system
`
`design and analysis, including electronic circuit and software design. My clients
`
`have included electronics circuit and parts suppliers, CAD companies, and
`
`automotive electronics and systems companies.
`
`7.
`
`I was previously retained as an expert by Ford Motor Company in the
`
`case of Marlowe Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044
`
`(D. NJ), in which U.S. Patent No. 7,489,786 (“the ‘786 Patent”), a parent to the
`
`‘342 Patent was asserted against Ford. During that proceeding, I presented expert
`
`declarations regarding aspects of claim construction and invalidity of the ‘786
`
`Patent and also presented a tutorial on automotive audio systems and bus
`
`technology to District Court Judge Peter G. Sheridan.
`
`In the past five years, I have been deposed or testified in the following
`
`8.
`
`matters:
`
`• I.E.E. International Electronics & Engineering, S.A. and IEE Sensing,
`
`Inc. v. TK Holdings Inc. and Takata-Petri A.G., in the Eastern District
`
`of Michigan, (Case No. 2:10-CV-13487-GER-MJH). 5-15-2012 and
`
`6-25-2013.
`
`
`
`3
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`

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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 8 of 94 PageID #:
` 3062
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`9.
`
`Lightspeed Aviation Inc. v. Bose Corporation, in a JAMS Arbitration,
`
`(JAMS REF. NO.: 1390000156). 5-13-2014 to 5-15-2014.
`
`10. My complete academic background, professional experience, and
`
`publications are set forth in my Curriculum Vitae, a copy of which is attached
`
`hereto as Attachment A.
`
`III. SUMMARY OF MY OPINIONS
`
`11.
`
`It is my opinion that each of the claims of the ‘342 Patent challenged
`
`by the Petitioner (claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103,
`
`106, 109-111, 113, 115, and 120) are invalid. The invalidity of these claims is
`
`shown by at least the following Grounds of Unpatentability:
`
`Ground
`
`'342 Patent Claim Basis for Rejection
`Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004)
`
`Ground 1 Claims 49-55, 57,
`62-64, 71, 73-80,
`95, 97, 99-103, 109-
`111, and 120
`
`Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004) and
`Marlowe (Ex. 1005)
`
`Ground 2 Claims 49-57, 62-
`64, 66, 70, 71, 73-
`80, 94, 95, 97, 99-
`103, 106, 109-111,
`113, and 120
`Ground 3 Claims 68 and 115 Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004),
`
`Marlowe (Ex. 1005) and Gioscia (Ex. 1006)
`
`
`
`
`
`4
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`

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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 9 of 94 PageID #:
` 3063
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`12.
`
` In this Declaration, I provide the explanation and support for my
`
`opinion that each of the challenged claims are invalid based on these grounds.1
`
`Quotations are annotated throughout in bold-italic font. Annotations in graphics
`
`include added color.
`
`A.
`
`13.
`
`Instructions
`
`I am not an attorney. My analysis and opinions are based on my
`
`expertise in this technical field, as well as the instructions I have been given by
`
`counsel for the legal standards relating to patentability.
`
`14. The materials I have reviewed in connection with my analysis include
`
`the '342 Patent, its file history, and the exhibits referenced herein.
`
`15.
`
`I understand that unpatentability in this proceeding must be proven by
`
`a preponderance of the evidence, and this is the standard I have used throughout
`
`my declaration. Further, I understand that each patent claim is considered
`
`separately for purposes of unpatentability.
`
`16. My analysis assumes that a “person having ordinary skill in the art,”
`
`or “PHOSITA” at the time of the alleged invention would have had at least a
`
`Bachelor’s degree in electrical engineering or equivalent science/engineering
`
`degree and at least two years of experience in signal processing and/or electronic
`
`
`
`1 I have provided my opinions regarding additional grounds of unpatentability of
`the challenged claims relying on the Ohmura reference in a separate declaration,
`which I understand Petitioners will submit in connection with a separate Inter
`Partes Review petition.
`
`
`
`5
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`

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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`system design, or would have at least four years of experience in signal processing
`
`and/or electronic system design. Because at the time of the alleged invention I had
`
`several years of experience teaching electrical engineering courses at the university
`
`level and over 25 years of experience in electronic system design, I believe I would
`
`have been a person of ordinary skill in the art in regard to the ’342 patent.
`
`1. Claim Interpretation
`
`17.
`
`I have also been instructed that in an Inter Partes Review, claims are
`
`given their ordinary and customary meaning, as understood by a PHOSITA at the
`
`time of the invention, taking into consideration the language of the claims, the
`
`specification, and the prosecution history of record construed in light of how a
`
`PHOSITA would understand the claims. I have also been informed that the Board
`
`construes claims during Inter Partes Review according to the “broadest reasonable
`
`interpretation” in view of the specification to the PHOSITA. Therefore, it is my
`
`understanding that what is to be considered includes the claims, the patent
`
`specifications and drawings, and the prosecution history, including any art listed by
`
`the Examiner or the Applicant. It is my understanding that information external to
`
`the patent, including expert and inventor testimony and unlisted prior art, are to be
`
`considered in construing the claims only if ambiguities remain. However, expert
`
`testimony may be useful in helping to explain the technology. In my analysis, I
`
`
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`6
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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 11 of 94 PageID #:
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`have considered and applied the proposed claim constructions of the Petitioners,
`
`unless otherwise indicated.
`
`2. Anticipation
`
`18.
`
`I am informed that a patent claim is unpatentable as “anticipated” if
`
`each and every feature of the claim is found in a single prior art reference. Claim
`
`limitations that are not expressly found in a prior art reference are inherent if the
`
`prior art necessarily functions in accordance with, or includes, the claim
`
`limitations. I further understand that inherency requires more than probabilities or
`
`possibilities that the claim element is disclosed in a prior art reference.
`
`3. Obviousness
`
`19.
`
`It is my understanding that a patent cannot be properly granted for
`
`subject matter that would have been obvious to a person of ordinary skill in the art
`
`at the time of the alleged invention, and that a claim directed to such obvious
`
`subject matter is invalid under 35 U.S.C. § 103(a). In assessing the obviousness of
`
`claimed subject matter, it is my understanding that one should evaluate
`
`obviousness over the prior art from the perspective of one of ordinary skill in the
`
`art at the time the application was filed (and not from the perspective of either a
`
`layman or a genius in that art). The question of obviousness is to be determined
`
`based on the following:
`
`• the scope and content of the prior art; 

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`
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`7
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`• the differences between the prior art and the claim under construction;
`
`and
`
`• the level of ordinary skill in the art.
`
`20.
`
`It is my further understanding that in developing an opinion as to
`
`whether certain claimed subject matter would have been obvious, one should
`
`consider any differences between the prior art and the claimed subject matter.
`
`When doing so, each claim should be considered in its entirety and separately from
`
`any other claims. While one should consider any differences between the claimed
`
`invention and the prior art, he or she should also assess the obviousness or non-
`
`obviousness of the entirety of a claim covering an alleged invention, not merely
`
`some portion of it. One way to decide whether one of ordinary skill in the art
`
`would combine what is described in various references is to determine whether it
`
`was obvious to try such a combination. In this determination, it is important to
`
`analyze the inferences and creative steps that a person of ordinary skill in the art
`
`would take.
`
`21.
`
`It is my further understanding that when there is a design need or
`
`market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, a person of ordinary skill would have good reason to pursue
`
`the known options within his or her technical grasp. If that pursuit likely leads to
`
`the anticipated success, it is likely that the alleged invention is a product, not of
`
`
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`8
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`innovation, but of ordinary skill and common sense. In that case, the fact that a
`
`combination was obvious to try might show that the alleged invention was obvious.
`
`Further, when a combination of familiar features or elements does no more than
`
`yield predictable results, it is likely to be obvious.
`
`22.
`
`It is my further understanding that when a work is available in one
`
`field of endeavor, design incentives and other market forces can prompt variations
`
`of it in the same field or in a different field. If there is a known problem and a
`
`person of ordinary skill in the art can implement a predictable variation that
`
`matches the claim, it is likely that the claim is invalid for being obvious. For the
`
`same reason, if a technique has been used to improve one device and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using that technique is obvious unless its actual application is
`
`reasonably considered to be beyond his level of ordinary skill.
`
`23.
`
`I am informed that, while not absolute, the principles relating to a
`
`“motivation,” “suggestion,” or “teaching” in the prior art to combine references are
`
`useful in analyzing whether an invention is obvious. I am informed that the
`
`suggestion or motivation may be either explicit or implicit, and may come from
`
`knowledge generally available to a PHOSITA, from the nature of the problem to
`
`be solved, or from a combination of these factors. The test for an implicit
`
`motivation, suggestion, or teaching is what the combined teachings, knowledge of
`
`
`
`9
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`a PHOSITA, and the nature of the problem to be solved as a whole would have
`
`suggested to those of ordinary skill in the art. The problem examined is not the
`
`specific problem solved by the invention, but the general problem that confronted
`
`the inventor before the invention was made.
`
`24.
`
`I am also informed that evidence of a “motivation,” “suggestion,” or
`
`“teaching” is not always required in determining whether an invention is obvious.
`
`Neither a particular motivation nor the alleged purpose of the patentee controls the
`
`investigation of obviousness. One of ordinary skill in the art is not confined only to
`
`prior art that attempts to solve the same problem as the patent claim. Common
`
`sense discloses that familiar items may have obvious uses beyond their primary
`
`purposes.
`
`25.
`
`I understand that multiple references can be combined to show that a
`
`claim is obvious. Any need or problem known in the field and addressed by a
`
`claim can provide a reason for combining multiple references in the manner
`
`claimed. To determine whether there was an apparent reason to combine those
`
`references in the way a patent claims, I may look to interrelated teachings of
`
`multiple patents, to the effects of demands known to the design community or
`
`present in the marketplace, and to the background knowledge possessed by a
`
`person of ordinary skill in the art.
`
`
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`10
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`

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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 15 of 94 PageID #:
` 3069
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`26.
`
`In an obviousness analysis, it is my understanding that there are
`
`“secondary considerations” that should be analyzed if they apply. I am told that
`
`these considerations include (a) whether the prior art teaches away from the
`
`claimed invention, (b) whether there was a long felt but unresolved need for the
`
`claimed invention, (c) whether others tried but failed to make the claimed
`
`invention, (d) skepticism of experts, (e) whether the claimed invention was
`
`commercially successful, (f) whether the claimed invention was praised by others,
`
`and (g) whether the claimed invention was copied by others.
`
`4. “means-plus-function” claims
`27. A means plus function limitation is a way of writing a limitation of a
`
`claim that generally follows the format of using the word “means” followed by
`
`stating a “function” that the claimed “means” is to perform, as claiming “a means
`
`for digging a hole.” In my understanding, such limitations only cover the structure
`
`disclosed in the specification and clearly linked to performing the function stated
`
`in the means-plus-function limitation, that being the so-called “corresponding
`
`structure” for the claimed function.
`
`28.
`
`It is my further understanding that to evaluate the scope of a means-
`
`plus-function limitation you first look for the stated function. You then look to the
`
`specification to see what structure, if any, is disclosed in the specification that
`
`
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`11
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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 16 of 94 PageID #:
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`might perform the designating function. Thereafter, you must see if such structure
`
`is clearly linked to performing the function.
`
`29. As a special case, if the corresponding structure for a means-plus-
`
`function limitation includes something like a programmable computer, then it is
`
`my understanding that the supporting specification must disclose some form of
`
`algorithm corresponding to the performance of the claimed function, and failure to
`
`provide disclosure of such an algorithm renders the claim invalid for being
`
`indefinite, as the claimed “means” has no definite corresponding structure.
`
`30.
`
`It is my further understanding that construction of a means-plus-
`
`function claim requires two steps: (1) identifying the claimed function and (2)
`
`determining what corresponding structure in the specification performs the claimed
`
`function, where when the corresponding structure is a programmable computer
`
`processor, the specification must disclose an algorithm that is clearly linked to the
`
`claimed function by the specification or prosecution history.
`
`31.
`
`It is my further understanding that once the function and
`
`corresponding structure of a means-plus-function limitation have been identified,
`
`that limitation will be invalidated if the prior art discloses the identical structure or
`
`an equivalent structure performing the same function. I further understand that a
`
`structure disclosed by the prior art will invalidate a means-plus-function limitation
`
`if the disclosed function performs the same function, in the same way, to yield the
`
`
`
`12
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`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 17 of 94 PageID #:
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`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
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`same result, and where the differences between the structure found in the prior art
`
`and any disclosed in the specification are insubstantial. I have used that
`
`methodology in forming the opinions set forth in this declaration.
`
`B.
`
`32.
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`Effective Filing Dates and Prior Art Patents and Printed
`Publications
`
`I am informed that the claims of the ‘342 Patent (Ex. 1001) have an
`
`effective filing date no earlier than June 27, 2006, which is the date the application
`
`for the ‘342 Patent was filed.
`
`33.
`
`I understand that the application that issued as the '342 Patent, U.S.
`
`App. No. 11/475,847 ("the '847 application"), was a continuation-in-part (CIP) of
`
`Ser. No. 11/071,667 ("the '667 application"), filed March 3, 2005 (abandoned);
`
`which was a CIP of Ser. No. 10/732,909 ("the '909 application") filed December
`
`10, 2003 (abandoned); which was a CIP of Ser. No. 10/316,961 ("the '961
`
`application") filed December 11, 2002, now U.S. Pat. No. 7,489,786. See Ex.
`
`1001. Ex. 1002 is a copy of the '342 Patent highlighted to show the new matter
`
`added by each of the above applications.
`
`34.
`
`I have reviewed Ex. 1008-Ex. 1012, and I confirm that portions which
`
`are not highlighted in Ex. 1012 were included in all of the ‘961 application (Ex.
`
`1011), the ‘909 application (Ex. 1010), the ‘667 application (Ex. 1009), and the
`
`‘847 application (Ex. 1008). Additionally, I confirm that portions highlighted in
`
`pink in Ex. 1012 were added in the '909 application, portions highlighted in blue in
`
`
`
`13
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`

`
`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 18 of 94 PageID #:
` 3072
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`Ex. 1012 were added in the '667 application, and portions highlighted in yellow in
`
`Ex. 1012 were added in the '847 application.
`
`35.
`
`I have reviewed claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97,
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`99-103, 106, 109-111, 113, 115, and 120 and the file history of the ‘342 Patent,
`
`and I understand that these claims are directed to wireless integration between a car
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`audio/video system and a portable device, and that all of the claims require a
`
`wireless link.
`
`36.
`
`I have reviewed the subject matter included in the '961 application,
`
`and have found no disclosure of a wireless link or wireless functionality. See Ex.
`
`1011; see also Ex. 1012. This application does not convey that the inventor had
`
`possessed, at the time of its filing, the idea of wirelessly integrating an external
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`device with a car head unit and does not enable a PHOSITA to make and use a car
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`multimedia system with wireless integration between a car head unit and a portable
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`device.
`
`37.
`
`I have reviewed the subject matter included in the ‘909 application.
`
`With respect to wireless communication, the '909 application filed on December
`
`10, 2003 discloses: "Alternatively, the integration system could wirelessly
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`communicate with the car stereo. A transmitter could be used at the integration
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`system to communicate with a receiver at the car stereo. Where automobiles
`
`include Bluetooth systems, such systems can be used to communicate with the
`
`
`
`14
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 19 of 94 PageID #:
` 3073
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`integration system." See Ex. 1012 at 27:39-45 (emphasis added). This disclosure
`
`only conveys: (1) a wireless connection between the car stereo and a standalone
`
`integration system; and (2) a wired link between a portable device and the
`
`standalone integration system. See id. at 27:30-45. This disclosure does not
`
`convey that the inventor possessed the idea of integration between a car head unit
`
`and a portable device utilizing a wireless communication link to the portable
`
`device, let alone a portable device having a wireless interface. Additionally, the
`
`'909 application does not describe "an integration subsystem" or indicate what is
`
`meant by this term. See Ex. 1010; see also Ex. 1012.
`
`38. Further, like the '961 application, the '909 application also makes no
`
`suggestion of any integration subsystem or components being positioned within a
`
`portable device or within a car audio/video system. Rather, these applications only
`
`disclose an interface that is outside of and between a car audio/video system and a
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`portable device, in order to connect an existing car stereo with an incompatible
`
`portable device. See Ex. 1012 at 27:30-45 and FIGS. 8A and 8B.
`
`39.
`
`I have reviewed the subject matter included in the ‘667 application.
`
`With respect to wireless communication, the '667 application filed on March 3,
`
`2005 discloses, "Further, in all embodiments of the present invention,
`
`communication between the after-market device and a car stereo or video system
`
`can be accomplished using known wireless technologies, such as Bluetooth." See
`
`
`
`15
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 20 of 94 PageID #:
` 3074
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`Ex. 1012 at 28:3-6. However, the ‘667 application does not describe "an
`
`integration subsystem" or indicate what is meant by this term.
`
`40. The term "integration subsystem" is only first used in the ‘847
`
`application (filed on June 27, 2006) from which the '342 patent issued. See id. at
`
`5:13-15.
`
`41. Furthermore, an audio file being received by a portable device and a
`
`portable device as a cellular telephone are not conveyed until the '667 application.
`
`See id. at 28:43-67.
`
`42. An integration subsystem with voice recognition functionality is not
`
`conveyed until the '847 application. See id. at 36:19-27. A video file comprising a
`
`picture (to the extent that a video itself does not include a picture) is also not
`
`conveyed until the '847 application. See id. at 38:49-56.
`
`43. Petitioner relies on the following patents and publications, all of
`
`which I understand are prior art to all claims of the ‘342 Patent.
`
`44.
`
`I understand the following references qualify as prior art under 35
`
`U.S.C. § 102(b) because they were published more than one year prior to the filing
`
`date of the ‘342 application:
`
`• Ex. 1007 - U.S. Patent No. 6,559,773 ("Berry") (Ex. 1007) published
`
`on May 6, 2003, and was filed on December 21, 1999.
`
`
`
`16
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 130-3 Filed 08/08/16 Page 21 of 94 PageID #:
` 3075
`Declaration of Thomas G. Matheson, Ph.D.
`U.S. Patent No. 8,155,342
`
`• Ex. 1008 -U.S. Patent Application Publication No. 2003/0215102
`
`("Marlowe") (Ex. 1008) published on November 20, 2003.
`
`• Ex. 1009 -U.S. Patent No. 6,421,305 ("Gioscia") (Ex. 1009) was filed
`
`on November 13, 1998 and published on July 16, 2002.
`
`45.
`
`I understand that the following reference qualifies as prior art under
`
`35 U.S.C. § 102(e) because it has a filing date prior to the filing date of the ‘342
`
`Patent and is thus available as prior art as of the filing date of the reference:
`
`• Ex. 1005 – U.S. Patent Application Publication No. 2006/0181963
`
`("Clayton") (Ex. 1005) claims the benefit of U.S. Provisional
`
`Application Nos. 60/651,959, 60/651,958, 60/651,960, 60/651,961,
`
`and 60/651,963, all filed on February 11, 2005.
`
`IV. OVERVIEW OF THE TECHNOLOGY
`
`A.
`
`Summary of the ‘342 Patent Disclosure
`
`46. The '342 Patent is directed to a multimedia device integration system
`
`that provides wireless integration between a car audio/video system and a portable
`
`device (e.g., an MP3 player or cellular phone) using an integration subsystem. See
`
`Ex. 1001 at Abstract and 5:7-10. The integration subsystem is positioned within
`
`the por