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`EXHIBIT A
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`IPR2016-00118 Petition
`Patent 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`v.
`
`BLITZSAFE TEXAS, LLC
`Patent Owner
`
`
`
`
` IPR2016-00118
`Patent 8,155,342
`Multimedia Device Integration System
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT 8,155,342
`
`

`

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`TABLE OF CONTENTS
`
`INTRODUCTION ...................................................................................... - 1 -
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ........................ - 1 -
`
`REAL PARTIES IN INTEREST ..................................................... - 1 -
`A.
`RELATED MATTERS .................................................................... - 1 -
`B.
`PAYMENT OF FEES ...................................................................... - 2 -
`C.
`D. DESIGNATION OF LEAD COUNSEL ......................................... - 2 -
`E.
`SERVICE INFORMATION ............................................................ - 3 -
`F.
`POWER OF ATTORNEY ............................................................... - 3 -
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................. - 3 -
`
`A. GROUND FOR STANDING ........................................................... - 3 -
`B.
`IDENTIFICATION OF THE PRIOR ART REFERENCES ........... - 3 -
`
`1.
`2.
`3.
`4.
`
`U.S. Pub. No. 2001/0028717 to Ohmura (“Ohmura”). ......... - 3 -
`U.S. Pub. No. 2002/0084910 to Owens (“Owens”). .............. - 4 -
`Pub. No. WO 02/096137 to Ahn (“Ahn”). ............................. - 4 -
`Other references for standard features in dependent
`claims. .................................................................................... - 5 -
`
`C.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ........... - 6 -
`
`IV. OVERVIEW OF THE ’342 PATENT ....................................................... - 9 -
`
`A.
`B.
`C.
`
`D.
`E.
`
`PRIORITY DATE OF THE ’342 PATENT .................................... - 9 -
`SUMMARY OF THE ’342 PATENT ............................................ - 10 -
`SUMMARY OF RELEVANT PROSECUTION FILE
`HISTORY ....................................................................................... - 12 -
`PERSON OF ORDINARY SKILL IN THE ART ......................... - 13 -
`PROPOSED CLAIM CONSTRUCTION ...................................... - 13 -
`
`1.
`2.
`
`“integration subsystem” ....................................................... - 15 -
`“multimedia device integration system” .............................. - 15 -
`
`V.
`
`PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING ............................... - 16 -
`
`i
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`C.
`
`E.
`
`F.
`
`B.
`
`A. GROUND 1: INDEPENDENT CLAIMS 1 AND 49 AND
`DEPENDENT CLAIMS 2-4 ARE ANTICIPATED BY
`OHMURA ....................................................................................... - 17 -
`GROUND 2: INDEPENDENT CLAIMS 1 AND 49, AND
`DEPENDENT CLAIMS 2-4 ARE OBVIOUS OVER OWENS
`IN VIEW OF AHN ......................................................................... - 24 -
`GROUND 3: INDEPENDENT CLAIMS 25 AND 73 ARE
`OBVIOUS OVER OHMURA IN VIEW OF AHN ........................ - 34 -
`D. GROUND 4: INDEPENDENT CLAIM 97 AND
`DEPENDENT CLAIM 5 ARE OBVIOUS OVER OHMURA
`IN VIEW OF FLICK ...................................................................... - 35 -
`GROUND 5: INDEPENDENT CLAIM 97 AND
`DEPENDENT CLAIM 5 ARE OBVIOUS OVER OWENS
`AND AHN IN VIEW OF FLICK .................................................... - 37 -
`GROUND 6: INDEPENDENT CLAIM 120 AND
`DEPENDENT CLAIM 6 ARE OBVIOUS OVER OHMURA
`IN VIEW OF TRANCHINA ........................................................... - 37 -
`G. GROUND 7: INDEPENDENT CLAIM 120 AND
`DEPENDENT CLAIM 6 ARE OBVIOUS OVER OWENS
`AND AHN IN VIEW OF TRANCHINA ......................................... - 40 -
`H. GROUND 8: DEPENDENT CLAIMS 7-10 ARE OBVIOUS
`OVER OHMURA IN VIEW OF COON ........................................ - 40 -
`GROUND 9: DEPENDENT CLAIMS 7-10 ARE OBVIOUS
`OVER OWENS AND AHN IN VIEW OF COON ......................... - 43 -
`GROUND 10: DEPENDENT CLAIM 11 IS OBVIOUS OVER
`OHMURA IN VIEW OF LUTTER ................................................. - 44 -
`K. GROUND 11: DEPENDENT CLAIM 11 IS OBVIOUS OVER
`OWENS AND AHN IN VIEW OF LUTTER.................................. - 45 -
`GROUND 12: DEPENDENT CLAIMS 12-18, 20-21 AND 23-
`24 ARE OBVIOUS OVER OHMURA IN VIEW OF
`MCCONNELL ................................................................................ - 46 -
`M. GROUND 13: DEPENDENT CLAIMS 12-18, 20-21 AND 23-
`24 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF
`MCCONNELL ................................................................................ - 50 -
`N. GROUND 14: DEPENDENT CLAIM 19 IS OBVIOUS OVER
`OHMURA IN VIEW OF BECKERT .............................................. - 52 -
`O. GROUND 15: DEPENDENT CLAIM 19 IS OBVIOUS OVER
`OWENS AND AHN ........................................................................ - 53 -
`
`I.
`
`J.
`
`L.
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`P.
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`GROUND 16: DEPENDENT CLAIM 22 IS OBVIOUS OVER
`OHMURA IN VIEW OF MCCONNELL AND FURTHER IN
`VIEW OF TRANCHINA ................................................................. - 53 -
`Q. GROUND 17: DEPENDENT CLAIM 22 IS OBVIOUS OVER
`OWENS AND AHN IN VIEW OF MCCONNELL AND
`FURTHER IN VIEW OF TRANCHINA ........................................ - 54 -
`GROUND 18: INDEPENDENT CLAIM 121 IS OBVIOUS
`OVER OHMURA IN VIEW OF EICHE ....................................... - 55 -
`GROUND 19: INDEPENDENT CLAIM 121 IS OBVIOUS
`OVER OWENS AND AHN IN VIEW OF EICHE ........................ - 56 -
`
`R.
`
`S.
`
`IV. CONCLUSION ............................................................................................ - 57 -
`
`
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`EXHIBIT LIST
`
`
`
`iv
`
`1006
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,155,342 to Marlowe
`1002
`Declaration of Prasant Mohapatra (“Mohapatra Declaration”)
`1003
`Resume of Prasant Mohapatra
`1004
`Ohmura U.S. Pub. No. 2001/0028717, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Owens U.S. Pub. No. 2002/0084910, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Ahn Pub. No. WO 02/096137, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Coon US 6,539,358, Prior Art under 35 U.S.C. § 102(a) and
`§ 102(e)
`Beckert Pat. 6,175,789, Prior Art under 35 U.S.C. § 102(b) and
`§ 102(e)
`Article, “Blitzsafe Designs “Smart” Integration Device,”
`Automedia (Feb. 1998) (“Blitzsafe Integration Device”) Prior Art
`under 35 U.S.C. § 102(b)
`Perry Pub. App. 20030025830, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Flick US Pub. 20010029415, Prior Art under 35 U.S.C. § 102(a)
`and § 102(e)
`Tranchina US 7,493,645, Prior Art under 35 U.S.C. § 102(a) and
`§ 102(e)
`Lutter U.S. Pub. No. 20020196134, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`McConnell 6,608,399, Prior Art under 35 U.S.C. § 102(a) and
`§ 102(e)
`Eiche [US Pub. No. 20020137505, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Sony JP Pat. 2001-128280, Prior Art under 35 U.S.C. § 102(b),
`and machine translation to English
`Trauner U.S. Pub. App. 20020070852, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Lovin Pub. App. 20030053378, Prior Art under 35 U.S.C.
`§ 102(a) and § 102(e)
`Unified Patents Inc.’s Voluntary Interrogatories
`
`1005
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`

`

`Case 2:15-cv-01274-JRG-RSP Document 142-2 Filed 09/01/16 Page 7 of 64 PageID #:
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`I.
`
`INTRODUCTION
`
`Petitioner Unified Patents Inc. (“Unified” or “Petitioner”) respectfully
`
`petitions for initiation of inter partes review of Claims 1-25, 49, 73, 97, 120, 121
`
`of U.S. Patent No. 8,155,342 (the “’342 Patent”) in accordance with 35 U.S.C.
`
`§§ 311–319 and 37 C.F.R. § 42.100 et seq. (“Petition”).
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`
`A. REAL PARTIES IN INTEREST
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real
`
`party-in-interest, and further certifies that no other party exercised control or could
`
`exercise control over Unified’s participation in this proceeding, the filing of this
`
`petition, or the conduct of any ensuing trial. See EX1019 (Unified Patents Inc.’s
`
`Voluntary Interrogatories).
`
`B. RELATED MATTERS
`
`Litigation
`
`• Blitzsafe Texas, LLC v. Nissan Motor Co., Ltd. et al., 2-15-cv-01276, TXED,
`
`July 16, 2015
`
`• Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277, TXED,
`
`July 16, 2015
`
` - 1 -
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`• Blitzsafe Texas, LLC v. Volkswagen Group of Am., Inc. et al., 2-15-cv-
`
`01278, TXED, July 16, 2015
`
`• Blitzsafe Texas, LLC v. Hyundai Motor Co. et al., 2-15-cv-01275, TXED,
`
`July 16, 2015
`
`• Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et al., 2-15-cv-01274, TXED,
`
`July 16, 2015
`
`• Marlowe Patent Holdings LLC v. Dice Elects., LLC, et al., 3-10-cv-01199,
`
`NJD, March 5, 2010
`
`• Card Verification Solutions, LLC v. JP Morgan Chase & Co., 1-13-cv-
`
`006338, ILND, September 4, 2013
`
`C.
`
`PAYMENT OF FEES
`
`This Petition is accompanied by a payment of $31,000 and requests review
`
`of Claims 1-25, 49, 73, 97, 120, 121 of the ’342 Patent. 37 C.F.R. § 42.15. Thus,
`
`this Petition meets the fee requirements under 35 U.S.C. § 312(a)(1).
`
`D. DESIGNATION OF LEAD COUNSEL
`
`Lead Counsel for Petitioner is Paul C. Haughey (Reg. No. 31,836), of
`
`Kilpatrick Townsend & Stockton LLP. Back-up Counsel are Jonathan Stroud
`
`(Reg. No. 72,518), of Unified and Scott E. Kolassa (Reg. No. 55,337) of Kilpatrick
`
`Townsend & Stockton LLP.
`
` - 2 -
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`E.
`
`SERVICE INFORMATION
`
`As identified in the attached Certificate of Service, a copy of this Petition, in
`
`its entirety, is being served to the address of the attorney or agent of record in the
`
`Patent Office for the ’342 Patent. Petitioner may be served at the offices of their
`
`counsel, Kilpatrick Townsend & Stockton LLP.
`
`F.
`
`POWER OF ATTORNEY
`
`Powers of attorney are being filed with the designation of counsel in
`
`accordance with 37 C.F.R. § 42.10(b).
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A. GROUND FOR STANDING
`
`The ’342 Patent is currently asserted in multiple litigations. Petitioner has
`
`not been sued or served. Petitioner is not the owner of the ’342 Patent and
`
`Petitioner is not barred or estopped from requesting IPR. Thus, the ’342 Patent is
`
`eligible for inter partes review.
`
`B.
`
`IDENTIFICATION OF THE PRIOR ART REFERENCES
`
`1.
`
`U.S. Pub. No. 2001/0028717 to Ohmura (“Ohmura”)
`(EX1004).
`
`Ohmura is a published US application with priority to an April 11, 2000,
`
`Japanese application and an April 9, 2001, U.S. filing date. It is directed to an
`
`automobile audio apparatus 100 with a display 24 that communicates wirelessly
`
` - 3 -
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`with various portable devices. It shows controlling the portable devices with the
`
`car stereo display, and displaying a playlist and other information from the portable
`
`device on the car stereo display. Ohmura was not cited, and was published on
`
`October 11, 2001, more than 1 year before the earliest cited ’342 priority date and
`
`more than 2 years before the earliest claimable priority date of December 3, 2003,
`
`of the ’342 Patent.
`
`2.
`U.S. Pub. No. 2002/0084910 to Owens (“Owens”) (EX1005).
`Owens was filed December 29, 2000, and published July 4, 2004. It
`
`describes a wired add-on to a car stereo which is controlled by the car stereo
`
`controls and provides data to the car stereo for display. It was cited against the
`
`great grandparent U.S. Patent 7,489,786, and the claims were amended to add “pre-
`
`programmed code” to distinguish it.
`
`3.
`Pub. No. WO 02/096137 to Ahn (“Ahn”) (EX1006).
`Ahn was published Nov. 28, 2002, over a year before the earliest claimable
`
`priority date of Dec. 3, 2003 of the ’342 Patent. The international filing was
`
`Oct. 26, 2001, based on a May 23, 2001 Korean priority. Ahn describes a mobile
`
`device which receives streaming music and transmits it via Bluetooth to a car
`
`stereo (“car kit”).
`
`
`
` - 4 -
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`
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`4. Other references for standard features in dependent claims.
`The other references relied on are directed to standard features which Patent
`
`Owner incorporated into the dependent claims and later independent claims.
`
`U.S. Pat. 6,539,358 to Coon (“Coon”) (EX1007), filed May 24, 2000 and
`
`published March 25, 2003, describes a car docking station for a portable device
`
`with speech recognition and text to speech synthesizing.
`
`U.S. Pat. 6,175,789 to Beckert (“Beckert”) (EX1008), which has
`
`continuation priority to June 24, 1996, and issued January 16, 2001, describes an
`
`open platform with a USB hub for adding devices to a vehicle, and describes voice
`
`commands, video, and a movie as a video example.
`
`U.S. Pub. No. 20010029415 to Flick (“Flick”) (EX1011), filed February 9,
`
`2001, and issued October 11, 2001, is directed to a remote vehicle function control
`
`system and describes converting between different command protocols.
`
`U.S. Pat. 7,493,645 to Tranchina (“Tranchina”) (EX1012), filed October
`
`27, 2000, describes a vehicle console with a wireless receiver and a video
`
`converter for converting between different video formats.
`
`U.S. Pub. No. 20020196134 to Lutter (“Lutter”) (EX1013), filed June 26,
`
`2002, and published December 26, 2002, describes a vehicle audio system that
`
`detects portable devices for communication.
`
` - 5 -
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`U.S. Pat. 6,608,399 to McConnell (“McConnell”) (EX1014), discloses
`
`various types of audio portable devices, wired and wireless connections, various
`
`video portable devices
`
`U.S. Pub. No. 20020137505 to Eiche (“Eiche”) (EX1015), continuation
`
`priority to February 18, 2000, published September 26, 2002, and describes an in-
`
`vehicle docking system that connects both wired and wireless devices to a car
`
`stereo system.
`
`C.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 311, this Petition requests cancellation of Claims
`
`1-25, 49, 73, 97, 120, 121 of the ’342 Patent in accordance with one or more of the
`
`following grounds, as indicated in the discussion below. The first two grounds are
`
`provided for the main independent claims. The rest of the grounds, while
`
`numerous, are directed to a variety of standard features added in the dependent
`
`claims and later independent claims incorporating various dependent claim
`
`features.
`
`• GROUND 1: INDEPENDENT CLAIMS 1 AND 49 AND DEPENDENT
`
`CLAIMS 2-4 ARE ANTICIPATED BY OHMURA.
`
`
`
`• GROUND 2: INDEPENDENT CLAIMS 1 AND 49 AND DEPENDENT
`
`CLAIMS 2-4 ARE OBVIOUS OVER OWENS IN VIEW OF AHN.
`
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`• GROUND 3: INDEPENDENT CLAIMS 25 AND 73 ARE OBVIOUS
`
`OVER OHMURA IN VIEW OF AHN.
`
`• GROUND 4: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM
`
`5 ARE OBVIOUS OVER OHMURA IN VIEW OF FLICK.
`
`• GROUND 5: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM
`
`5 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF FLICK.
`
`• GROUND 6: INDEPENDENT CLAIM 120 AND DEPENDENT
`
`CLAIM 6 ARE OBVIOUS OVER OHMURA IN VIEW OF
`
`TRANCHINA.
`
`• GROUND 7: INDEPENDENT CLAIM 120 AND DEPENDENT
`
`CLAIM 6 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF
`
`TRANCHINA.
`
`• GROUND 8: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER
`
`OHMURA IN VIEW OF COON.
`
`• GROUND 9: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER
`
`OWENS AND AHN IN VIEW OF COON.
`
`• GROUND 10: DEPENDENT CLAIM 11 IS OBVIOUS OVER
`
`OHMURA IN VIEW OF LUTTER.
`
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`• GROUND 11: DEPENDENT CLAIM 11 IS OBVIOUS OVER OWENS
`
`AND AHN IN VIEW OF LUTTER.
`
`• GROUND 12: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE
`
`OBVIOUS OVER OHMURA IN VIEW OF MCCONNELL.
`
`• GROUND 13: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE
`
`OBVIOUS OVER OWENS AND AHN IN VIEW OF MCCONNELL.
`
`• GROUND 14: DEPENDENT CLAIM 19 IS OBVIOUS OVER
`
`OHMURA IN VIEW OF BECKERT.
`
`• GROUND 15: DEPENDENT CLAIM 19 IS OBVIOUS OVER OWENS
`
`AND AHN.
`
`• GROUND 16: DEPENDENT CLAIM 22 IS OBVIOUS OVER
`
`OHMURA IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF
`
`TRANCHINA.
`
`• GROUND 17: DEPENDENT CLAIM 22 IS OBVIOUS OVER OWENS
`
`AND AHN IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF
`
`TRANCHINA.
`
`• GROUND 18: INDEPENDENT CLAIM 121 IS OBVIOUS OVER
`
`OHMURA IN VIEW OF EICHE.
`
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`• GROUND 19: INDEPENDENT CLAIM 121 IS OBVIOUS OVER
`
`OWENS AND AHN IN VIEW OF EICHE.
`
`IV. OVERVIEW OF THE ’342 PATENT
`
`A.
`
`PRIORITY DATE OF THE ’342 PATENT
`
`The ’342 Patent was filed June 26, 2006. It was a continuation-in-part (CIP)
`
`of Ser. No. 11/071,667, filed March 3, 2005 (abandoned); which was a CIP of Ser.
`
`No. 10/732,909 filed December 10, 2003 (abandoned); which was a CIP of Ser.
`
`No. 10/316,961 filed December 11, 2002, now U.S. Pat. No. 7,489,786. The
`
`original U.S. Pat. No. 7,489,786 was directed to wired connections to a car stereo,
`
`with no mention of wireless, and included only Figs. 1-7 of the ’342 patent. CIP
`
`Ser. No. 10/732,909 (Pub. No. 20040151327, filed Dec. 10, 2003) had claims
`
`directed to a docking station with wired connections, with figures 8-9 added. The
`
`specification mentions in paragraph 107 that if the car has Bluetooth, it can be used
`
`to communicate with the integration system. CIP Serial No. 11/071,667, filed
`
`March 3, 2005 added figures 10-17 and the June 27, 2006 filing of the ’342 patent
`
`added Figs. 18-24. Thus, at best, the December 10, 2003 CIP is the earliest priority
`
` - 9 -
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`
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`date.
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`B.
`
`SUMMARY OF THE ’342 PATENT
`
`The ’342 patent claims are directed to displaying audio files from a
`
`wirelessly connected portable device on a car stereo display, and selecting the file
`
`using the car stereo controls. The independent claims are 1, 25, 49, 73, 97, 120
`
`and 121.
`
`Claim 1 is directed to an “integration subsystem” between a “portable
`
`device” [e.g., smart phone or music player] and a “car audio/video system.” A first
`
`wireless interface, “in communication with said integration subsystem” has a
`
`wireless link with a second wireless interface “in communication with the car
`
`audio/video system. Information about an audio file [e.g., song list] stored on the
`
`portable device is displayed on the “display of the car audio/video system,” and the
`
`user selects the audio file “using controls of the car audio/video system.” Claim 1
`
`is silent on where the integration subsystem is (in the portable device, car stereo or
`
`an adapter), but it clearly has a wireless connection to the car audio/video system.
`
`The claimed “car audio/video system” is sometimes described as a “car stereo,”
`
`and that term is used in the claims of great-grandparent U.S. Patent No. 7,489,786.
`
`We thus use the term “car stereo” interchangeably.
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`Independent claim 49 is similar, directed to the integration subsystem being
`
`electrically connected to the car stereo and wirelessly connecting with the portable
`
`device.
`
`Independent claims 25 and 73 are the same as claims 1 and 49, respectively,
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`except the audio file is streamed to the portable device (“received by”) instead of
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`stored.
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`Incompatible formats. Independent claims 97 and 120 are similar to claim
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`1, but add incompatible format commands and data, respectively, between the
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`portable device and the car stereo. The only description of data conversion for
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`display in the ’342 Patent is reformatting of RGB to composite signals and vice-
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`versa. EX1001 (’342 Patent) at 26:21-34. Standard chips are described as doing
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`this. Id. at 29:51-59. The conversion of commands is described as between
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`devices of different manufacturers, with code examples in Tables 1-4, id. at 22:18-
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`24:36, and Figs. 13-15 describing a protocol conversion.
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`Independent claim 121 is similar to claim 1, but requires the integration
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`subsystem have separate wireless links with both the portable device and the car
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`stereo.
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`Dependent Claims. The dependent claims add a variety of features that
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`were standard for car stereo systems and add-on devices before the earliest priority
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`date of the ‘342 patent, such as: listing various types of portable add-on devices,
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`including video devices as well as audio devices, voice recognition and speech
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`synthesizing for hands free operation, device detection, and wired and wireless
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`devices.
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`C.
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`SUMMARY OF RELEVANT PROSECUTION FILE HISTORY
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`As described under “Priority Date of the ’342 Patent” above, the patent was
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`built in stages with multiple CIPs adding description and figures.
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`Great grandparent U.S. Patent 7,489,786 originally had similar claims, but
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`without mentioning wireless. Those were rejected over various grounds, finally
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`over Owens (EX1005) and U.S. Patent 6,175,789 to Beckert (EX1008) (for
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`incompatible formats). The claims were amended to add the “pre-programmed
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`code” feature, and allowed.
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`The intervening CIPs pursued different claims. The 12-10-2003 CIP added
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`Figs. 8-9 and had claims on the docketing station. This also added the first
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`mention of wireless, with a brief reference to Bluetooth. This was assigned to a
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`different examiner, Xu Mei, who examined the rest of the CIPs as well.
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`The 3-3-2005 CIP of 10/732,909 added figures 10-17 with claims directed to
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`an interface for exchanging data and audio signals between a car stereo and an
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`external “after-market device.” The claims were rejected mainly over U.S. Patent
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`6,052,603 to Kinzalow, which was distinguished as just teaching a hands-free
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`interface to transmit audio to a car stereo system. The application was abandoned.
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`The 6-27-2006 CIP added Figs. 18-24, with claims similar to issued claims.
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`The pertinent claims were first rejected over U.S. Patent 6,539,358 to Coon
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`(EX1007), a “[v]oice-interactive docking station for a portable computing device”
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`and then U.S. Patent 7,493,645 to Tranchina (EX1012), a “[c]onsole with monitor
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`and wireless receiver.” It was argued that Tranchina didn’t describe using the car
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`stereo controls to select an audio file on the portable device, it merely described
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`wireless communications for control purposes.
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`D.
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`PERSON OF ORDINARY SKILL IN THE ART
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`One of ordinary skill in the art at time of the earliest claimed effective filing
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`date of the ’342 Patent (March 20, 1995) would have an undergraduate degree in
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`computer science or computer engineering, or equivalent work experience,
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`including familiarity with wireless transmission of audio and video. See ¶¶ 15-17.
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`E.
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`PROPOSED CLAIM CONSTRUCTION
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`Pursuant to 37 C.F.R. § 42.100(b), the claim terms of an unexpired patent
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`subject to inter partes review shall receive the “broadest reasonable construction in
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`light of the specification of the patent in which [they] appear[].” See also In re
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`Swanson, No. 07-1534 (Fed. Cir. 2008); In re Trans Texas Holding Corp., 498
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`F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571
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`(Fed. Cir. 1984).) In compliance with 37 C.F.R. § 42.104(b)(4), Petitioner states
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`that, in general, the “claim terms are presumed to take on their ordinary and
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`customary meaning.”
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` See Changes
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`to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, 77 Fed. Reg. 48699 (2012) (Response to
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`Comment 35). However, where a definition is provided by a patent applicant for a
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`specific claim term, that definition will control interpretation of the term as it is
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`used in the claim. See, e.g., Toro Co. v. White Consolidated Indus., Inc., 199 F.3d
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`1295, 1301 (Fed. Cir. 1999).
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`All claim terms not specifically addressed below have been accorded their
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`broadest reasonable interpretation in light of the patent specification, including
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`their plain and ordinary meaning, to the extent such a meaning could be
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`determined by a skilled artisan.
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`There have been no claim construction briefs or orders yet in the related
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`District Court litigations.
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`Petitioner proposes to adopt the following constructions based on the
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`reasons below and as set forth in EX1002 (Mohapatra Decl.) at ¶¶ 18-19.
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`Claim Terms.
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`1.
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`“integration subsystem”
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`The ’342 Patent simply shows a box labelled “Integration subsystem” in the
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`portable device or the car stereo in Figs. 18-23. “Integration” is defined as it is
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`used in the claims as obtaining information about the audio file, transmitting a
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`control command to select a file, and instructing the audio device to transmit the
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`file. EX1001 (’342 Patent) at 8:64-9:19. These functions are described being
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`handled by a microcontroller in the car stereo. Id. at 13:9-19. Figs. 18, 20 & 22
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`show the integration subsystem as a box in the portable device. Thus, this would
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`be understood by one of skill in the art to be a processor in the car stereo or the
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`portable device along with software and memory.
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`Accordingly, Petitioner submits that the broadest reasonable interpretation of
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`a “integration subsystem” is a processor and associated software and memory.
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`2.
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`“multimedia device integration system”
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`The ’342 Patent describes a multimedia system as “The present invention
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`further provides a multimedia device integration system that allows for the wireless
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`integration of a portable audio and/or video device with a car audio and/or video
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`system.” Id. at 5:46-49. It also describes a stereo display for information about the
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`audio or video files. Since the portable device could be audio or video, audio alone
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`is clearly intended to be covered, with the “multi” in multimedia either indicating it
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`is one of many media, or it include the further described and claimed display of
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`information about the audio (or video) files. Accordingly, Petitioner submits that
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`the broadest reasonable interpretation of a “multimedia device integration system”
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`is a system that provide audio or video and a display.
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`V.
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`PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
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`Background.
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`The claims of the ’342 patent are directed to standard features of after-
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`market audio and video systems that are described in a myriad of references. To
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`give a sense of the prior art, a few examples are listed below, in addition to the
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`specific prior art relied on herein for the various grounds:
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`Japanese Patent 2001-128280 to Sony (EX1016), published May 11, 2001 in
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`Japan, describes portable audio equipment added to a car stereo, using the car
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`stereo controls and display.
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`U.S. Patent Application Publication 2002/0070852 to Trauner (EX1017),
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`filed Dec. 12, 2000 and published June 13, 2002, is another of many examples
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`showing the use of voice recognition and a voice synthesizer in a car and Bluetooth
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`connected add-on devices.
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`U.S. Patent Application 2003/0053378 to Lovin (EX1018), priority to July
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`31, 2001 provisional, published March 20, 2003, describes Bluetooth used to
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`provide music received from an MP3 player, and converted to FM format to play
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`on a car stereo.
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`Summary of the grounds of rejection.
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`The ’342 Patent claims are directed to an “integration subsystem” between a
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`“portable device” [e.g., smart phone or music player] and a “car audio/video
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`system.” Information about an audio file [e.g., song list] from the portable device
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`is displayed on the “display of the car audio/video system,” and the user selects the
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`audio file “using controls of the car audio/video system.” This is clearly shown in
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`Ohmura, and also in the combination of Owens and Ahn. The dependent claims
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`and later independent claims add a variety of standard features that are shown in
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`the other references as described below.
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`A. GROUND 1: INDEPENDENT CLAIMS 1 AND 49 AND
`DEPENDENT CLAIMS 2-4 ARE ANTICIPATED BY OHMURA
`Ohmura was filed one year and eight months before the earliest claimed
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`priority date of the ’342 Patent, and was published two months before that earliest
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`date. Figure 2 of Ohmura shows a car audio apparatus 100 with a display 24 that
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`communicates wirelessly with various portable devices.
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`Figure 7 of Ohmura shows the external play list D12 displayed on the car audio
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`display:
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`Claim 1.
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`Claim 1 requires a portable device be wirelessly interfaced with a car stereo,
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`and that the user select audio files on the portable device using the car stereo
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`controls, and that information about the audio file be displayed on the car stereo
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`display. As supported in the claim chart below, Ohmura shows portable audio
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`apparatuses 200a and 200b which wirelessly communicate (in-car radio
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`communication) with the car stereo. The user selects music on the portable
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`apparatus using the car stereo controls. See, e.g., EX1004 (Ohmura) at 108 in Fig.
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`2. The play list from the portable device is displayed on the car stereo display. Id.
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`at D12, Fig. 7.
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`The elements of the claim have been labelled with letters (e.g., [A]) in the
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`chart below for ease of understanding. The preamble recites a “multimedia device
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`integration system” which comprises the claimed element [A] “integration
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`subsystem” and [B] first and second wireless interfaces. Such an integration
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`system is shown in Ohmura, which has both components. The claimed [A]
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`“integration subsystem” is shown by the operating system 106 and CPU 101 of the
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`car stereo in Fig. 2, or the