Case 2:15-cv-01274-JRG-RSP Document 90 Filed 04/08/16 Page 1 of 30 PageID #: 1260
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2: 15-cv-01274-JRG-RSP
`LEAD CASE
`
`JURY TRIAL DEMANDED
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`§§
`
`§
`§
`§
`§
`§
`§
`
`BLITZSAFE TEXAS, LLC,
`
`v.
`
`Plaintiff,
`
`HONDA MOTOR CO, LTD. ET AL.,
`
`Defendants.
`
`HYUNDAI MOTOR AMERICA, HYUNDAI MOTOR MANUFACTURING ALABAMA,
`LLC, KIA MOTORS AMERICA, INC., AND KIA MOTORS MANUFACTURING
`GEORGIA, INC.’S FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT
`INFRINGEMENT
`
`Defendants Hyundai Motor America (“HMA”), Hyundai Motor Manufacturing Alabama,
`
`LLC (“HMMA”), Kia Motors America, Inc. (“KMA”), and Kia Motors Manufacturing Georgia,
`
`Inc. (“KMMG”) (collectively, “Hyundai and Kia”), by and through the undersigned counsel,
`
`respond to Plaintiff Blitzsafe Texas, LLC’s (“Blitzsafe” or “Plaintiff”) Original Complaint for
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`Patent Infringement (“Complaint”) as follows, denying Plaintiff’s allegations and averments
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`except that which is expressly admitted herein:
`
`THE PARTIES1
`
`1.
`
`Hyundai and Kia lack sufficient information or knowledge to admit or deny the
`
`allegations in Paragraph 1, and on that basis, denies them.
`
`2.
`
`Hyundai and Kia are informed and believe that Hyundai Motor Company
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`(“HMC”) is a Korean company with a place of business at 12, Heolleung-ro, Seocho-gu, Seoul,
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`South Korea 06797.
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`1 Hyundai and Kia’s replication of the headings in the Complaint are merely for convenience and are not to be
`considered an admission of their accuracy.
`
`1
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`

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`Case 2:15-cv-01274-JRG-RSP Document 90 Filed 04/08/16 Page 2 of 30 PageID #: 1261
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`3.
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`HMA admits that it is a California corporation with a place of business at 10550
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`Talbert Ave., Fountain Valley, CA 92708. HMA admits it is a wholly-owned subsidiary of
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`HMC.
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`4.
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`HMMA admits that it is a Delaware limited liability company with its principal
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`place of business at 700 Hyundai Blvd., Montgomery, AL 36105. HMMA admits that it is a
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`wholly-owned subsidiary of HMA.
`
`5.
`
`Hyundai and Kia are informed and believe that Kia Motors Corporation (“KMC”)
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`is a Korean company with a place of business at 12, Heolleung-ro, Seocho-gu, Seoul, South
`
`Korea 06797. Hyundai and Kia are informed and believe that HMC owns 10% or more of
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`KMC’s stock.
`
`6.
`
`KMA admits it is a California corporation with a place of business at 111 Peters
`
`Canyon Road, Irvine, CA 92606. KMA admits that it is a wholly-owned subsidiary of KMC.
`
`7.
`
`KMMG admits that it is a Delaware corporation with its principal place of
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`business at 7777 Kia Parkway, West Point, GA 31833. KMMG admits that it is a wholly-owned
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`subsidiary of KMA.
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`JURISDICTION
`
`8.
`
`Hyundai and Kia admit that the Complaint purports to assert claims of patent
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`infringement that arise under the patent laws of the United States, but Hyundai and Kia expressly
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`deny that either of them has committed any acts of patent infringement. Hyundai and Kia admit
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`that this Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and
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`1338(a) for the purpose of this action only. Hyundai and Kia deny all other express or implied
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`allegations contained in Paragraph 8.
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`2
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`

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`9.
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`Hyundai and Kia admit that each of them has done business in this district.
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`Hyundai and Kia deny all other express or implied allegations contained in Paragraph 9,
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`including that either of them has committed acts of patent infringement and/or induced acts of
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`patent infringement by others in this district and/or contributed to patent infringement by others
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`in this judicial district, the State of Texas or in any other jurisdiction.
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`10.
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`Paragraph 10 contains a legal conclusion to which no response is required by
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`Hyundai and Kia. Hyundai and Kia admit that each of them has done business in this district but
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`deny all other express or implied allegations in this Paragraph. Hyundai and Kia deny that venue
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`is convenient under 28 U.S.C. § 1404.
`
`PATENTS-IN-SUIT
`
`11.
`
`Hyundai and Kia admit that U.S. Patent No. 7,489,786 (the “’786 Patent”) entitled
`
`“Audio Device Integration System,” bears a date of February 10, 2009 and a copy was attached
`
`to the Complaint as Exhibit A. Hyundai and Kia lack knowledge or information sufficient to
`
`form a belief as to the truth of the remaining allegations set forth in Paragraph 11, and on that
`
`basis deny the same.
`
`12.
`
`Hyundai and Kia admit that U.S. Patent No. 8,155,342 (the “’342 Patent”) entitled
`
`“Multimedia Device Integration System,” bears a date of April 10, 2012 and a copy was attached
`
`to the Complaint as Exhibit B. Hyundai and Kia lack knowledge or information sufficient to
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`form a belief as to the truth of the remaining allegations set forth in Paragraph 12, and on that
`
`basis denies the same.
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`FACTUAL ALLEGATIONS
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`13.
`
`Hyundai and Kia lack sufficient information or knowledge to admit or deny the
`
`allegations in Paragraph 13, and on that basis, deny them.
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`3
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`

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`14.
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`HMA and HMMA admit that certain Hyundai vehicles made in or imported into
`
`the United States include a feature known as Blue Link. To the extent the allegations of
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`Paragraph 14 are directed to HMC, which has not yet been served with the Complaint, Hyundai
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`and Kia lack specific information sufficient to form a belief as to the truth of the allegations
`
`therein as applied to HMC, and therefore deny them. Hyundai and Kia deny all other express or
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`implied allegations contained in Paragraph 14.
`
`15.
`
`KMA and KMMG admit certain Kia vehicles made in or imported into the United
`
`States include a feature known as UVO. To the extent the allegations of Paragraph 15 are
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`directed to KMC, which has not yet been served with the Complaint, Hyundai and Kia lack
`
`specific information sufficient to form a belief as to the truth of the allegations therein as applied
`
`to KMC, and therefore deny them. Hyundai and Kia deny all other express or implied allegations
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`contained in Paragraph 15.
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`16.
`
`Hyundai and Kia admit that certain versions of Blue Link and UVO may be used
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`with some third-party devices. Hyundai and Kia deny all other express or implied allegations
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`contained in Paragraph 16.
`
`COUNT I
`
`(Infringement of the ’786 Patent by the Hyundai Defendants)
`
`17.
`
`HMA and HMMA incorporate their responses to Paragraphs 1 through 16 as if
`
`fully set forth herein.
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`18.
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`HMA and HMMA lack sufficient information or knowledge to admit or deny the
`
`allegations in Paragraph 18, and on that basis, deny them.
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`19.
`
`20.
`
`Denied.
`
`Denied.
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`4
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`

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`Case 2:15-cv-01274-JRG-RSP Document 90 Filed 04/08/16 Page 5 of 30 PageID #: 1264
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`21.
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`22.
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`23.
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`24.
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`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT II
`
`(Infringement of the ’786 Patent by the Kia Defendants)
`
`25.
`
`KMA and KMMG incorporate their responses to Paragraphs 1 through 16 as if
`
`fully set forth herein.
`
`26.
`
`KMA and KMMG lack sufficient information or knowledge to admit or deny the
`
`allegations in Paragraph 26, and on that basis, deny them.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT III
`
`(Infringement of the ’342 Patent by the Hyundai Defendants)
`
`33.
`
`HMA and HMMA incorporate their responses to Paragraphs 1 through 16 as if
`
`fully set forth herein.
`
`34.
`
`HMA and HMMA lack sufficient information or knowledge to admit or deny the
`
`allegations in Paragraph 34, and on that basis, deny them.
`
`35.
`
`Denied.
`
`5
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`

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`Case 2:15-cv-01274-JRG-RSP Document 90 Filed 04/08/16 Page 6 of 30 PageID #: 1265
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`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied
`
`Denied.
`
`COUNT IV
`
`(Infringement of the ’342 Patent by the Kia Defendants)
`
`41.
`
`KMA and KMMG incorporate their responses to Paragraphs 1 through 16 as if
`
`fully set forth herein.
`
`42.
`
`KMA and KMMG lack sufficient information or knowledge to admit or deny the
`
`allegations in Paragraph 42, and on that basis, deny them
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`48.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff’s demand for a jury trial does not require a response from Hyundai and Kia.
`
`Hyundai and Kia also demand a jury trial on all issues so triable.
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`PRAYER FOR RELIEF
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`Hyundai and Kia deny that Plaintiff is entitled to any of the relief it requests in its Prayer
`
`for Relief or any other relief in this action. Hyundai and Kia request entry of judgment in its
`
`6
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`

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`Case 2:15-cv-01274-JRG-RSP Document 90 Filed 04/08/16 Page 7 of 30 PageID #: 1266
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`favor and against Plaintiff. Hyundai and Kia also request that the Court award it such other and
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`further relief as the Court may deem just and proper, including its reasonable attorney’s fees.
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`AFFIRMATIVE DEFENSES
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`Hyundai and Kia assert the following defenses without prejudice to the denials in this
`
`Answer, without admitting any allegations of the Complaint not otherwise admitted, and without
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`admitting or denying it bears the burden of proof as to any of them. These additional defenses are
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`based on the facts and information currently known to Hyundai and Kia. Hyundai and Kia
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`reserve the right to amend or add additional defenses, including instances of inequitable conduct,
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`based on the facts later discovered, pled or offered.
`
`First Affirmative Defense
`(Failure to State a Claim)
`
`The Complaint fails to state a claim upon which relief can be granted and/or sufficient to
`
`constitute a cause of action against Hyundai and Kia.
`
`Second Affirmative Defense
`(Invalidity)
`
`The claims of U.S. Patent Nos. 7,489,786 and/or 8,155,342 do not meet the requirements
`
`of 35 U.S.C. § 101 et seq., including but not limited to 35 U.S.C. §§ 101, 102, 103, 112 and/or
`
`116, and are therefore invalid, void, or unenforceable.
`
`Third Affirmative Defense
`(Non-Infringement)
`
`Hyundai and Kia have not and do not infringe any valid claim of U.S. Patent Nos.
`
`7,489,786 and 8,155,342, either literally, directly, indirectly, individually, jointly, contributorily,
`
`under the doctrine of equivalents, and/or by inducement.
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`7
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`

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`Fourth Affirmative Defense
`(35 U.S.C. § 286)
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`Plaintiff’s recovery for alleged infringement of U.S. Patent Nos. 7,489,786 and
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`8,155,342, if any, is limited by 35 U.S.C. § 286 to any alleged infringement committed no more
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`than six years prior to the filing of its Complaint.
`
`Fifth Affirmative Defense
`(35 U.S.C. § 287)
`
`Any claim for damages for patent infringement by Plaintiff is limited by 35 U.S.C. § 287
`
`to those damages occurring only after the notice of infringement.
`
`Sixth Affirmative Defense
`(Equitable Defenses)
`
`Plaintiff’s claims are barred and unenforceable, in whole or in part, under the principles
`
`of equity, including laches, waiver, unclean hands, and/or estoppel.
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`Seventh Affirmative Defense
`(Reservation of Additional Defenses)
`
`Hyundai and Kia reserve all affirmative defenses under Rule 8(c) of the Federal Rules of
`
`Civil Procedure, the Patent Laws of the United States, and any other defenses that may now or in
`
`the future be available based on discovery in this case or any related action.
`
`Eighth Affirmative Defense
`(Unenforceability of the ’786 patent and the ’342 patent)
`
`The ’786 patent and the ’342 patent are unenforceable for inequitable conduct committed
`
`by at least Mr. Ira Marlowe during prosecution of at least the U.S. Patent Application No.
`
`10/316,961 from which the ’786 Patent issued. For this affirmative defense, the substance of the
`
`Third Counterclaim and the Fourth Counterclaim, set forth below, are incorporated by reference.
`
`Hyundai and Kia reserve the right to supplement this showing based on fact discovery to be
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`conducted.
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`8
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`

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`PRAYER FOR RELIEF
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`WHEREFORE, Hyundai and Kia pray for judgment in their favor and against Plaintiff as
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`follows:
`
`A.
`
`B.
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`That Plaintiff take nothing by its Complaint;
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`That the Court enter judgment against Plaintiff and in favor of Hyundai and Kia
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`and that the Complaint be dismissed with prejudice;
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`C.
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`Order and adjudge that Hyundai and Kia have not infringed any valid and
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`enforceable claims of the ’786 and ’342 patents;
`
`D.
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`Order and adjudge that the claims of the ’786 and ’342 patents are invalid and/or
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`unenforceable;
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`E.
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`That the Court deem this an exceptional case under 35 U.S.C. § 285 and award
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`Hyundai and Kia their costs, expenses, and attorneys’ fees, together with interest; and
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`F.
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`That the Court grant and/or award to Hyundai and Kia any and all further relief
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`that the Court deems just and proper.
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`9
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`

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`Case 2:15-cv-01274-JRG-RSP Document 90 Filed 04/08/16 Page 10 of 30 PageID #: 1269
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`COUNTERCLAIMS
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`Defendants/Counterclaim-Plaintiffs Defendants Hyundai Motor America (“HMA”),
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`Hyundai Motor Manufacturing Alabama, LLC (“HMMA”), Kia Motors America, Inc. (“KMA”),
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`and Kia Motors Manufacturing Georgia, Inc. (“KMMG”) (collectively, “Hyundai and Kia”) by
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`and through the undersigned attorneys, for their Counterclaims against Plaintiff Blitzsafe Texas,
`
`LLC (“Blitzsafe“ or “Plaintiff”), respectfully allege and say:
`
`I.
`
`THE PARTIES
`
`1.
`
`HMA is a California corporation with a place of business at 10550 Talbert Ave.,
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`Fountain Valley, CA 92708. HMA is a wholly-owned subsidiary of HMC.
`
`2.
`
`HMMA is a Delaware limited liability company with its principal place of
`
`business at 700 Hyundai Blvd., Montgomery, AL 36105. HMMA is a wholly-owned subsidiary
`
`of HMA.
`
`3.
`
`KMA is a California corporation with a place of business at 111 Peters Canyon
`
`Road, Irvine, CA 92606. KMA is a wholly-owned subsidiary of KMC.
`
`4.
`
`KMMG is a Delaware corporation with its principal place of business at 7777 Kia
`
`Parkway, West Point, GA 31833. KMMG is a wholly-owned subsidiary of KMA.
`
`5.
`
`Based on Blitzsafe's assertion in its Complaint, Hyundai and Kia allege on
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`information and belief that Blitzsafe is a limited liability company organized and existing under
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`the laws of the State of Texas, and maintains its principal place of business at 100 W. Houston
`
`Street, Marshall, Texas 75670.
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`II. JURISDICTION AND VENUE
`
`6.
`
`Based on Blitzsafe's filing of this action and Hyundai and Kia’s affirmative
`
`defenses, an actual controversy has arisen and now exists between Blitzsafe and Hyundai and Kia
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`10
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`

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`as to whether Hyundai and Kia have infringed or are infringing one or more valid and enforceable
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`claims of U.S. Patent No. 7,489,786 (the ’786 patent) and/or U.S. Patent No. 8,155,342 (the ’342
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`Patent).
`
`7.
`
`Hyundai and Kia’s counterclaims arise under the patent laws of the United States
`
`as enacted under Title 35 of the United States Code and the provisions of the Federal Declaratory
`
`Judgment Act. The jurisdiction of this Court is proper under 28 U.S.C. §§ 1331, 1338, 2201 and
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`2202.
`
`8.
`
`Hyundai and Kia deny that venue for Blitzsafe's patent infringement claims against
`
`Hyundai and Kia are proper in this District. However, to the extent Blitzsafe's infringement claims
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`against Hyundai and Kia are litigated in this District, venue for Hyundai and Kia's counterclaims
`
`is proper in this District.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement)
`
`9.
`
`Hyundai and Kia re-allege and incorporate by reference the allegations set forth in
`
`the preceding paragraphs of the counterclaims.
`
`10.
`
`Hyundai and Kia do not infringe and have not infringed, either directly or
`
`indirectly, nor have Hyundai and Kia contributed to or induced the infringement of, any asserted
`
`claim of the ’786 patent and/or the ’342 Patent under any legally valid theory, including literal
`
`infringement or infringement under the doctrine of equivalents.
`
`11.
`
`Hyundai and Kia pray, pursuant to 28 U.S.C. §2201, for declaratory judgment
`
`they do not infringe the patents-in-suit.
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`11
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`SECOND COUNTERCLAIM
`(Declaratory Judgment of Invalidity)
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`12.
`
`Hyundai and Kia re-allege and incorporate by reference the allegations
`
`set forth in the preceding paragraphs of the counterclaims.
`
`13.
`
`Each asserted claim of all of the patents-in-suit are invalid under one
`
`or more grounds specified in 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`14.
`
`Hyundai and Kia pray, pursuant to 28 U.S.C. §2201, for declaratory judgment that
`
`one or more claims of the patents-in-suit are invalid under one or more grounds specified in 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`THIRD COUNTERCLAIM
`(Declaratory Judgment of Unenforceability Due to Inequitable Conduct by Failing
`to Disclose Prior Art Patented Products)
`
`15.
`
`Hyundai and Kia re-allege and incorporate by reference the allegations set forth in
`
`the preceding paragraphs of the counterclaims.
`
`16.
`
`The ’786 patent, and the ’342 patent in its patent family, are unenforceable for
`
`inequitable conduct committed at least by Ira Marlowe during prosecution of at least the U.S.
`
`Patent Application No. 10/316,961 from which the '786 Patent issued.
`
`17.
`
`The ’786 Patent issued on February 10, 2009, from U.S. Patent Application No.
`
`10/316,961, filed on December 11, 2002 ("the ’961 Application"). The ’342 Patent issued on
`
`April 10, 2012, from U.S. Patent Application No. 11/475,847, filed on June 27, 2006 ("the ’847
`
`Application"). The application that issued as the '342 patent was a continuation-in-part (CIP)
`
`application in the ’786 patent family. A finding of inequitable conduct of the senior ’786 patent
`
`renders the entire patent family unenforceable.
`
`18.
`
`Ira Marlowe is named as the sole inventor of the ’961 Application and the ’847
`
`Application.
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`12
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`19.
`
`Ira Marlowe withheld material information from the U.S. Patent and Trademark
`
`Office ("PTO") with an intent to deceive the PTO, and knowingly pursued claims that covered
`
`known prior art devices without revealing to the PTO Examiner that the particular structure and
`
`functions omitted by his disclosures were the same features he was pursuing in the Patent Office.
`
`But for Mr. Marlowe’s omissions, at least one of the claims of the ’786 would not have been
`
`allowed.
`
`20.
`
`Each individual associated with filing and prosecuting of a patent application has a
`
`duty of candor and good faith in dealing with the Patent Office, which includes a duty to disclose
`
`to the Patent Office all information known to that individual to be material to patentability as
`
`defined in 37 C.F.R. §1.56. This duty applied to Ira Marlowe, as well as any other persons
`
`associated with the filing and prosecution of the ’961 and ’847 applications.
`
`21. Mr. Marlowe violated his duty to disclose information to the PTO that but for Mr.
`
`Marlowe’s withholding of this critical information, one or more claims of the claims of the ’786
`
`patent would not have issued. As set forth below, Mr. Marlowe failed to disclose material
`
`information regarding his prior art devices which were offered for sale and/or sold and/or publicly
`
`disclosed in the United States more than one year prior to the filing date of the ’961 Application.
`
`More specifically, Marlowe failed to disclose that the prior art devices included the same structure
`
`and functionality recited in the patent claims he was seeking, making those claims ineligible for
`
`patent protection. As set forth below, Mr. Marlowe knew of that material nature of his
`
`withholding, yet deliberately withheld this information from the PTO. Mr. Marlowe’s omission
`
`resulted in the improper issuance of the ’786 patent and the ’342 patent, and but for Mr.
`
`Marlowe’s withholding of this critical information, one or more claims of the ’786 patent would
`
`not have issued.
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`13
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`

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`22.
`
`Upon information and belief, Mr. Marlowe owns and controls Blitzsafe of
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`America, Inc. (“Blitzsafe”). As early as 1998, Blitzsafe marketed audio device integration
`
`products designed to interface between Toyota OEM car stereos and after-market audio devices,
`
`such as Panasonic CD changers. Specifically, the Blitzsafe 1998 TOY/PAN V.2 interface, was
`
`offered for sale no later than September 1998. In addition, Blitzsafe interfaces TOY/PAN DMX
`
`V.1B (single audio device input) and TOY/PAN DMX V.2B (dual CD changer inputs) were
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`likely offered for sale to users of Blitzsafe's public website by February 2001, and in no event
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`later than March 4, 2001. The '961 application was filed on December 11, 2002, thus, any sales
`
`(or offers for sale) of Toyota/Panasonic interfaces before December 11, 2001 constitute prior art
`
`to the ’786 patent.
`
`23.
`
`The 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B
`
`(collectively “Blitzsafe's Toyota/Panasonic interfaces”), as offered for sale and/or sold in 2001
`
`invalidate at least one claim of the '786 patent. Specifically, Blitzsafe’s Toyota/Panasonic
`
`interfaces anticipate or render obvious at least claims 1, 2, 4, 5, 6, 7, 8, 10, 13, 14, 23, 24, 44, 47,
`
`57, 58, 60, 61, 62, 63, 64, 65, 86, 88, 89, 90, 91, 92, 94, 97, and 98 of the ’786 patent. As
`
`discussed below, Blitzsafe’s Toyota/Panasonic interfaces are highly relevant to the claims of the
`
`’786 patent, and but for Marlowe’s withholding this critical information, one or more claims of
`
`the claims of the ’786 patent would not have issued.
`
`24.
`
`The ’786 patent is directed to an “audio device integration system” that integrates
`
`a car stereo (also referred to as “car radio”) and one or more external or “after-market” devices,
`
`such as a CD changer or an MP3 player. See the ’786 patent at abstract and FIG. 1. In the context
`
`of the ’786 patent, this integration is provided by an “interface,” which is separate from the car
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`stereo and the external device. Id. The interface converts control signals from the car stereo into
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`a format that is compatible with an external device, thus allowing commands input at the car
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`stereo to control the external device. With reference to Figure 2B of the ’786 Patent below, the
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`control panel buttons 14 of the car radio 10 may be used to control the operation of an external
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`device (MP3 player 30) as a result of interface 20 converting the control signals from the car
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`radio 10 into a format compatible with the MP player. ’786 Patent at 6:1-19. Similarly, the
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`interface receives data from the external device and converts the data into a format compatible
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`with car radio 10 to allow information, such as artist, song title, and track and time information,
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`to be displayed on display 13 of car radio 10. ’786 Patent at 6:19-24. The interface includes a
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`microcontroller programmed to perform the format conversion for signals sent by the car stereo
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`to the external device and signals sent by the external device to the car stereo. ’786 Patent at
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`8:31-9:7. The ’786 Patent also describes the interface generating a “device presence signal” that
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`it transmits to the car stereo to maintain the car stereo in an operational state, such as
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`“prevent[ing] the car stereo from shutting off, entering a sleep mode, or otherwise being
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`unresponsive to signals and/or data from an external source.” ’786 Patent at 12:29-35; 13:15-19;
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`FIGs. 4A and 4B. The device presence signal is sent during the condition where radio is
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`determined to be in CD player mode. ’786 Patent at 12:22-24 and 13:7-10.
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`25.
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`During the prosecution of the ’961 application, the Examiner issued a Non-Final
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`Office Action date June 5, 2006, in which all of the pending claims were rejected on prior art
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`grounds. The Examiner relied primarily on U.S. Patent No. 6,993,615 (Falcon). In traversing the
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`rejections, Mr. Marlowe’s representative argued that the claims were distinguishable over
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`Falcon because, inter alia, the only “interface” in Falcon is a graphical user interface that is “an
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`entirely different concept than the interface of the present invention, which includes a physical
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`interface device connected between a car stereo system and an external audio source (e.g., a
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`plurality of auxiliary input sources).” See ’786 patent file history, Amendment filed September
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`11, 2006 at p. 23.
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`26. While Mr. Marlowe’s representatives made these arguments to distinguish over
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`Falcon, Mr. Marlowe failed to mention that Blitzsafe’s prior art Toyota/Panasonic interfaces each
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`constituted a “physical interface device connected between a car stereo system and an external
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`audio source,” the very feature that Mr. Marlowe used to distinguish the claims from the Falcon
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`prior art. For example, each of Blitzsafe's prior art 1998 TOY/PAN V.2, TOY/PAN DMX V.1B,
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`and TOY/PAN DMX V.2B interfaces was a physical interface sold separate from the OEM car
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`stereo or external audio source by Blitzsafe. These interfaces were designed to interface between
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`Toyota OEM car stereos and after-market audio devices (i.e. Panasonic CD changers). Despite
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`having knowledge of these prior art interfaces, Mr. Marlowe’s representatives argued that the
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`prior art did not disclose such physical interfaces and knowingly pursued claims that covered
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`Blitzsafe’s Toyota/Panasonic interfaces without revealing to the PTO Examiner that Blitzsafe’s
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`Toyota/Panasonic interfaces had the same features he was pursuing in the Patent Office, or that
`
`they were on sale more than one year before the pending application had been filed. But for Mr.
`
`Marlowe’s withholding of this critical information, one or more claims of the claims of the ’786
`
`patent would not have issued.
`
`27.
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`Later during prosecution, the Examiner issued another Non-Final Office Action
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`on November 14, 2006 rejecting all of the claims on new grounds, relying primarily on U.S.
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`Patent No. 6,163,079 (Miyazaki), and subsequently issued a final rejection on April 19, 2007,
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`again relying primarily on Miyazaki See ’786 patent file history, Non-Final Office Action dated
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`November 14, 2006; and Final Office Action dated April 19, 2007.
`
`28.
`
`Following the November 14, 2006 Non-Final Rejection, Mr. Marlowe’s
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`representative amended the independent claims to specify that the interface performed “format”
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`conversion of control commands from the car stereo to the external device. See ‘786 file history,
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`Amendment filed Feb. 14, 2007. Mr. Marlowe’s representative argued that “the system of
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`Miyazaki, et al. has nothing to do with processing incompatible control commands at an interface
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`using a programmed microcontroller because the devices of Miyazaki, et al. are already
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`compatible with each other.” ’786 patent file history, Amendment filed February 16, 2007 at p.
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`30; Amendment filed September 6, 2007 at p. 31.
`
`29. While Mr. Marlowe’s representatives made these arguments to distinguish over
`
`Miyazaki, Mr. Marlowe failed to mention that the prior art Blitzsafe Toyota/Panasonic interfaces
`
`performed the format conversion of control commands from the OEM car stereo to the after-
`
`market external audio device. For example, the prior art Blitzsafe devices were specifically
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`designed to process incompatible control commands at an interface using a programmed
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`microcontroller and connect a Toyota OEM car stereo with an after-market Panasonic CD
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`changer. As discussed in more detail below, the Toyota/Panasonic interfaces were designed with a
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`pre-programmed microcontroller that allowed for the communication of incompatible audio
`
`devices. Thus, the very feature that Mr. Marlowe used to distinguish the claims from the
`
`Miyazaki prior art was present in the Blitzsafe Toyota/Panasonic interfaces. Mr. Marlowe’s
`
`representatives submitted these arguments and Mr. Marlowe knowingly pursued claims that
`
`covered the prior art Toyota/Panasonic interfaces without revealing to the PTO Examiner that
`
`Blitzsafe’s Toyota/Panasonic interfaces had the same features he was pursuing in the Patent
`
`Office, or that they had been on sale in the United States more than one year before the pending
`
`application had been filed. But for Mr. Marlowe’s withholding of this critical information, one or
`
`more claims of the claims of the ’786 patent would not have issued.
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`30.
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`In the Notice of Allowance for the ’786 patent issued on July 31, 2008, the
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`Examiner stated that although interfacing auxiliary after-market devices with a car stereo was
`
`known, “the Examiner has not found prior art that teaches or suggests an interface unit
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`containing a pre-programmed microcontroller that allows for the communication of incompatible
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`audio devices as presented in the independent claims 1, 24, 30, 42, 55, 63 and 72” or “to execute
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`a code portion for generating and transmitting a device presence signal to a car stereo to maintain
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`the stereo in an operational state responsive to signals from an after-market device as presented
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`in the independent claims 47, 81, 83, 104.”
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`31. Mr. Marlowe, and/or his representatives, accepted these reasons for allowance
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`knowing that they covered Blitzsafe’s prior art Toyota/Panasonic interfaces without revealing to
`
`the PTO Examiner that Blitzsafe’s prior art Toyota/Panasonic interfaces had these same features
`
`(i.e. “an interface unit containing a pre-programmed microcontroller that allows for the
`
`communication of incompatible audio devices” and an interface “to execute a code portion for
`
`generating and transmitting a device presence signal to a car stereo to maintain the stereo in an
`
`operational state responsive to signals from an after-market device”).
`
`32.
`
`That is, as set forth in the Invalidity Contentions served by Toyota et al.,
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`Blitzsafe's 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B interfaces
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`are each an interface unit containing a pre-programmed microcontroller that allows for the
`
`communication of incompatible audio devices.
`
`33.
`
`For example, the 1998 TOY/PAN V.2 had a microcontroller pre-programmed to
`
`execute a first pre-programmed code portion for (a) remotely controlling first after-market
`
`Panasonic CD changer using the Toyota OEM car stereo by receiving a control command from
`
`the Toyota OEM car stereo through said first connector in a format incompatible with the first
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`after-market Panasonic CD changer, (b) processing the received control command into a
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`formatted command compatible with the first after-market Panasonic CD changer, and (c)
`
`transmitting the formatted command to the first after-market Panasonic CD changer through said
`
`second connector for execution by the first after-market Panasonic CD changer. Further, the 1998
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`TOY/PAN V.2 had a second pre-programmed code portion for receiving data from the first after-
`
`market Panasonic CD changer through said second connector in a format incompatible with the
`
`Toyota OEM car stereo, processing the received data into formatted data compatible with the
`
`Toyota OEM car stereo, and transmitting the formatted data to the Toyota OEM car stereo
`
`through said first connector for display by the Toyota OEM car stereo. In addition, the 1998
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`TOY/PAN V.2 interface had a third pre-programmed code portion for switching to the second
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`Panasonic CD changer connected to said third electrical connector.
`
`34.
`
`Similarly, the TOY/PAN DMX V.1B had a microcontroller pre-programmed to
`
`execute a first pre-programmed code portion for remotely controlling the after-market Panasonic
`
`CD changer using the Toyota car stereo by receiving a control command through said first
`
`connector in a format incompatible with the CD changer. The TOY/PAN DMX V.1B
`
`microcontroller is also pre-programmed to process the received control command into a formatted
`
`command compatible with the CD changer, and transmit the formatted command to the CD
`
`changer through said second connector for execution by the CD changer. The TOY/PAN DMX
`
`V.1B had a microcontroller preprogrammed to execute a second pre-programmed code portion for
`
`receiving data from the after-market Panasonic CD changer in a format incompatible with the
`
`Toyota OEM car stereo, processing the received data into formatted data compatible with the
`
`Toyota OEM car stereo, and transmitting the formatted data to the Toyota OEM c