Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 1 of 29 PageID #: 1290
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`JURY TRIAL
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`CIVIL ACTION NO. 2:15-CV-01274
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`BLITZSAFE TEXAS, LLC,
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`Plaintiff,
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`v.
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`HONDA MOTOR CO., LTD.; AMERICAN
`HONDA MOTOR CO., INC.; HONDA OF
`AMERICA MFG., INC.; HONDA
`MANUFACTURING OF ALABAMA, LLC;
`AND HONDA MANUFACTURING OF
`INDIANA, LLC,
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`Defendants.
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`
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`DEFENDANTS AMERICAN HONDA MOTOR CO., INC.; HONDA OF AMERICA
`MFG., INC.; HONDA MANUFACTURING OF ALABAMA, LLC; AND HONDA
`MANUFACTURING OF INDIANA, LLC’S AMENDED ANSWER AND
`COUNTERCLAIMS TO PLAINTIFF’S ORIGINAL COMPLAINT
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`Defendants American Honda Motor Co., Inc., Honda of America Mfg., Inc., Honda
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`Manufacturing of Alabama, LLC, and Honda Manufacturing of Indiana, LLC (collectively “U.S.
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`Honda Defendants”) hereby file this Amended Answer and Counterclaims to Plaintiff Blitzsafe
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`Texas, LLC’s (“Blitzsafe”) Original Complaint filed on July 16, 2015 (“Complaint”), as follows:
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`THE PARTIES
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`1.
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`U.S. Honda Defendants are without sufficient knowledge or information to form a
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`belief as to the truth of the allegations in paragraph 1 of the Complaint and therefore, deny these
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`allegations.
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`2.
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`Upon information and belief, Defendant Honda Motor Co., Ltd. has not been
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`served with the Complaint. U.S. Honda Defendants are without sufficient knowledge or
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 2 of 29 PageID #: 1291
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`information to form a belief as to the truth of the allegations in paragraph 2 of the Complaint and
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`therefore, deny these allegations.
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`3.
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`U.S. Honda Defendants admit that American Honda Motor Co., Inc. is a
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`California corporation with a place of business at 1919 Torrance Boulevard, Torrance, California
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`90501.
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`4.
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`The correct corporate name is Honda of America Mfg., Inc. and not Honda of
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`America Manufacturing, Inc. U.S. Honda Defendants admit that Honda of America Mfg., Inc. is
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`a Ohio corporation with a place of business at 24000 Honda Parkway, Marysville, Ohio 43040.
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`5.
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`U.S. Honda Defendants admit that Honda Manufacturing of Alabama, LLC is an
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`Alabama limited liability company with a place of business at 1800 Honda Drive, Lincoln,
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`Alabama 35096.
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`6.
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`U.S. Honda Defendants admit that Honda Manufacturing of Indiana, LLC is an
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`Indiana limited liability company with a place of business at 2755 N. Michigan Ave.,
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`Greensburg, Indiana 47240.
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`JURISDICTION
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`7.
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`U.S. Honda Defendants admit that the Complaint purports to state a claim for
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`patent infringement pursuant to Title 35 of the United States Code but expressly denies that they
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`infringe or have infringed U.S. Patent No. 7,489,786 (“the ’786 Patent”) or U.S. Patent No.
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`8,155,342 (“the ’342 Patent”). U.S. Honda Defendants admit that 28 U.S.C. §§ 1331 and 1338(a)
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`confer this Court with “original jurisdiction of any civil action arising under an Act of Congress
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`relating to patents.” U.S. Honda Defendants deny all other allegations in paragraph 7 of the
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`Complaint.
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`8.
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`U.S. Honda Defendants admit that this Court has personal jurisdiction over U.S.
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`Honda Defendants. U.S. Honda Defendants admit that American Honda Motor Co., Inc.,
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 3 of 29 PageID #: 1292
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`directly or through intermediaries, sells vehicles in this judicial district. U.S. Honda Defendants
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`further admit that Honda of America Mfg., Inc., Honda Manufacturing of Alabama, LLC, and
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`Honda Manufacturing of Indiana, LLC manufacture vehicles that are sold within this judicial
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`district. U.S. Honda Defendants expressly deny that they have committed acts of patent
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`infringement and/or have induced acts of patent infringement by others in this district and/or
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`have contributed to patent infringement by others in this judicial district, the State of Texas, or
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`elsewhere in the United States. U.S. Honda Defendants deny all other allegations in paragraph 8
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`of the Complaint.
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`9.
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`U.S. Honda Defendants admit that venue is permitted in this district pursuant to
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`28 U.S.C. § 1400(b), but U.S. Honda Defendants deny that venue is “proper” in this district, and
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`also denies that venue is convenient in this forum pursuant to 28 U.S.C. § 1404.
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`PATENTS-IN-SUIT
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`10.
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`U.S. Honda Defendants admit that on its face, the ’786 Patent is entitled “Audio
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`Device Integration System” and bears an issue date of February 10, 2009. U.S. Honda
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`Defendants are without sufficient knowledge or information to form a belief as to the truth of the
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`remaining allegations in paragraph 10 of the Complaint and therefore, deny these allegations.
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`11.
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`U.S. Honda Defendants admit that on its face, the ’342 Patent is entitled
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`“Multimedia Device Integration System” and bears an issue date of April 10, 2012. U.S. Honda
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`Defendants are without sufficient knowledge or information to form a belief as to the truth of the
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`remaining allegations in paragraph 11 of the Complaint and therefore, deny these allegations.
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`FACTUAL ALLEGATIONS
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`12.
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`U.S. Honda Defendants deny that the ’786 Patent and the ’342 Patent are valid
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`and enforceable and thus believe that the ’786 Patent and the ’342 Patent do not lawfully cover
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 4 of 29 PageID #: 1293
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`any subject matter. U.S. Honda Defendants deny all other allegations in paragraph 12 of the
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`Complaint.
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`13.
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`U.S. Honda Defendants admit that American Honda Motor Co., Inc., directly or
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`through intermediaries, sells Honda-branded vehicles in the United States. U.S. Honda
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`Defendants further admit that Honda of America Mfg., Inc., Honda Manufacturing of Alabama,
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`LLC, and Honda Manufacturing of Indiana, LLC manufacture Honda-branded vehicles that are
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`sold within the United States. U.S. Honda Defendants admit that certain Honda-branded
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`vehicles sold in 2013 or later contain the HondaLink system. U.S. Honda Defendants deny all
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`other allegations in paragraph 13 of the Complaint.
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`14.
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`U.S. Honda Defendants admit that American Honda Motor Co., Inc., directly or
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`through intermediaries, sells Acura-branded vehicles in the United States. U.S. Honda
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`Defendants further admit that Honda of America Mfg., Inc. and Honda Manufacturing of
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`Alabama, LLC manufacture Acura-branded vehicles that are sold within the United States. U.S.
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`Honda Defendants admit that certain Acura-branded vehicles sold in 2013 or later contain the
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`AcuraLink system. U.S. Honda Defendants deny all other allegations in paragraph 14 of the
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`Complaint.
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`15.
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`U.S. Honda Defendants admit that certain of the vehicles it manufactures and sells
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`have functionality permitting external devices to be connected to the vehicles via wired and
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`wireless connections. U.S. Honda Defendants deny all other allegations in paragraph 15 of the
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`Complaint.
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`COUNT I
`(Infringement of the ’786 Patent)
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`16.
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`U.S. Honda Defendants reassert their responses to paragraphs 1 through 15 of this
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`Answer as though fully set forth herein.
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 5 of 29 PageID #: 1294
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`17.
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`U.S. Honda Defendants are without sufficient knowledge or information to form a
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`belief as to the truth of the allegations in paragraph 17 of the Complaint and therefore, deny these
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`allegations.
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`18.
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`U.S. Honda Defendants deny each and every allegation in paragraph 18 of the
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`Complaint.
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`19.
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`U.S. Honda Defendants deny each and every allegation in paragraph 19 of the
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`Complaint.
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`20.
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`U.S. Honda Defendants deny each and every allegation in paragraph 20 of the
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`Complaint.
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`21.
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`U.S. Honda Defendants deny each and every allegation in paragraph 21 of the
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`Complaint.
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`22.
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`U.S. Honda Defendants deny each and every allegation in paragraph 22 of the
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`Complaint.
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`23.
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`U.S. Honda Defendants deny each and every allegation in paragraph 23 of the
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`Complaint.
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`COUNT II
`(Infringement of the ’342 Patent)
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`24.
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`U.S. Honda Defendants reassert their responses to paragraphs 1 through 15 of this
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`Answer as though fully set forth herein.
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`25.
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`U.S. Honda Defendants are without sufficient knowledge or information to form a
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`belief as to the truth of the allegations in paragraph 25 of the Complaint and therefore, deny these
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`allegations.
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`26.
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`U.S. Honda Defendants deny each and every allegation in paragraph 26 of the
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`Complaint.
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 6 of 29 PageID #: 1295
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`27.
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`U.S. Honda Defendants deny each and every allegation in paragraph 27 of the
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`Complaint.
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`28.
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`U.S. Honda Defendants deny each and every allegation in paragraph 28 of the
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`Complaint.
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`29.
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`U.S. Honda Defendants deny each and every allegation in paragraph 29 of the
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`Complaint.
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`30.
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`U.S. Honda Defendants deny each and every allegation in paragraph 30 of the
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`Complaint.
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`31.
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`U.S. Honda Defendants deny each and every allegation in paragraph 31 of the
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`Complaint.
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`DEMAND FOR JURY TRIAL
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`32.
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`Blitzsafe’s demand for a jury trial requires no response.
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`PRAYER FOR RELIEF
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`33.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in the
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`Prayer for Relief in the Complaint or any relief whatsoever.
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`34.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “a” of the Complaint or any relief whatsoever.
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`35.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “b” of the Complaint or any relief whatsoever.
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`36.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “c” of the Complaint or any relief whatsoever.
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`37.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “d” of the Complaint or any relief whatsoever.
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`38.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “e” of the Complaint or any relief whatsoever.
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`39.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “f” of the Complaint or any relief whatsoever.
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`40.
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`U.S. Honda Defendants deny that Blitzsafe is entitled to the relief sought in
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`paragraph “g” of the Complaint or any relief whatsoever.
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`DEFENSES
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`Subject to the responses above, U.S. Honda Defendants allege and assert the following
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`defenses in response to the allegations, undertaking the burden of proof only as to those defenses
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`deemed affirmative defenses by law, regardless of how such defenses are denominated herein.
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`In addition to the defenses described below, subject to the responses above, U.S. Honda
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`Defendants specifically reserve all rights to allege additional defenses that become known
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`through the course of discovery:
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`DEFENSE 1: FAILURE TO STATE A CLAIM
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`41.
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`The Complaint fails to state a claim against U.S. Honda Defendants upon which
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`relief may be granted because U.S. Honda Defendants have not performed any act or thing, and
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`are not proposing to perform any act or thing, in violation of any rights validly belonging to
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`Blitzsafe under the ’786 Patent or the ’342 Patent.
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`DEFENSE 2: NONINFRINGEMENT
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`42.
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`U.S. Honda Defendants do not and have not infringed, either directly or indirectly,
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`any valid and enforceable claim of the ’786 Patent or the ’342 Patent, either literally, under the
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`doctrine of equivalents, willfully, or in any other manner.
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`DEFENSE 3: INVALIDITY
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`43.
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`The ’786 Patent and the ’342 Patent are invalid and void for failure to satisfy one
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`or more of the requirements of patentability set forth in Title 35 of the United States Code,
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`including but not limited to, 35 U.S.C. §§ 101, 102, 103 and/or 112.
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`DEFENSE 4: PROSECUTION HISTORY ESTOPPEL/DISCLAIMER
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`44.
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`Blitzsafe is estopped from construing any valid claim of the ’786 Patent or
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`the ’342 Patent to cover or include, either literally or by application of the doctrine of equivalents,
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`any of the accused products because of admissions and/or statements made to the United States
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`Patent and Trademark Office during prosecution of the applications leading to the issuance of
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`the ’786 Patent and the ’342 Patent.
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`DEFENSE 5: OTHER EQUITABLE DEFENSES
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`45.
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`Upon information and belief, Blitzsafe is barred, in whole or in part, from
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`asserting infringement of one or more claims of the ’786 Patent and/or the ’342 Patent based on
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`the doctrines of waiver, estoppel, acquiescence, laches, implied license, unclean hands,
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`prosecution laches and/or any other equitable remedy.
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`DEFENSE 6: GOOD FAITH
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`46.
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`U.S. Honda Defendants have engaged in all relevant activities in good faith, thus
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`precluding Blitzsafe, even if it prevails, from recovering attorneys’ fees and/or costs under 35
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`U.S.C. § 285.
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`DEFENSE 7: LIMITATIONS ON DAMAGES AND COSTS
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`47.
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`Upon information and belief, Blitzsafe’s claims for damages and costs are limited
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`by 35 U.S.C. §§ 286, 287, and/or 288.
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`DEFENSE 8: ADEQUATE REMEDY AT LAW
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`48.
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`Blitzsafe is not entitled to injunctive relief because any alleged injury to Blitzsafe
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`is not immediate and/or irreparable, and Blitzsafe has an adequate remedy at law.
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`DEFENSE 9: EXHAUSTION
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`49.
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`Upon information and belief, Blitzsafe is barred from recovery by the doctrines of
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`exhaustion and/or first sale.
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 10 of 29 PageID #: 1299
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`COUNTERCLAIMS
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`Defendants and Counterclaim Plaintiffs American Honda Motor Co., Inc., Honda of
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`America Mfg., Inc., Honda Manufacturing of Alabama, LLC, and Honda Manufacturing of
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`Indiana, LLC (collectively “U.S. Honda Defendants”) bring the following counterclaims against
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`Plaintiff and Counterclaim Defendant Blitzsafe Texas, LLC’s (“Blitzsafe”).
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`THE PARTIES
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`1.
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`American Honda Motor Co., Inc. is a California corporation with a place of
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`business at 1919 Torrance Boulevard, Torrance, California 90501.
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`2.
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`Honda of America Mfg., Inc. is a Ohio corporation with a place of business at
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`24000 Honda Parkway, Marysville, Ohio 43040.
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`3.
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`Honda Manufacturing of Alabama, LLC is an Alabama limited liability company
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`with a place of business at 1800 Honda Drive, Lincoln, Alabama 35096.
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`4.
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`Honda Manufacturing of Indiana, LLC is an Indiana limited liability company
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`with a place of business at 2755 N. Michigan Ave., Greensburg, Indiana 47240.
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`5.
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`Based on Blitzsafe’s assertion in its Complaint, upon information and belief,
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`Blitzsafe is a limited liability company organized and existing under the laws of the State of
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`Texas, and maintains its principal place of business at 100 W. Houston Street, Marshall, Texas
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`75670.
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`JURISDICTION AND VENUE
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`6.
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`Based on Blitzsafe’s filing of this action and the U.S. Honda Defendants’
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`affirmative defenses, an actual controversy has arisen and now exists between Blitzsafe and the
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`U.S. Honda Defendants as to whether the U.S. Honda Defendants have infringed or are
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`infringing one or more valid and enforceable claims of U.S. Patent No. 7,489,786 (the '786
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`patent) and/or U.S. Patent No. 8,155,342 (the '342 Patent).
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`7.
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`The U.S. Honda Defendants’ counterclaims arise under the patent laws of the
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`United States as enacted under Title 35 of the United States Code and the provisions of the
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`Federal Declaratory Judgment Act. The jurisdiction of this Court is proper under 28 U.S.C. §§
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`1331, 1338, 2201 and 2202.
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`8.
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`The U.S. Honda Defendants deny that venue for Blitzsafe’s patent infringement
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`claims against the U.S. Honda Defendants is proper in this District. However, to the extent
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`Blitzsafe’s infringement claims against the U.S. Honda Defendants are litigated in this District,
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`venue for the U.S. Honda Defendants’ counterclaims is proper in this District.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Unenforceability Due to Inequitable Conduct by Failing to
`Disclose Prior Art Patented Products)
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`9.
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`The U.S. Honda Defendants re-allege and incorporate by reference the allegations
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`set forth in the preceding paragraphs of the counterclaims.
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`10.
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`The '786 patent, and the '342 patent in its family, are unenforceable for
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`inequitable conduct committed at least by Ira Marlowe during prosecution of at least the U.S.
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`Patent Application No. 10/316,961 from which the '786 Patent issued.
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`11.
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`The '786 Patent issued on February 10, 2009, from U.S. Patent Application No.
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`10/316,961, filed on December 11, 2002 ("the '961 Application"). The '342 Patent issued on
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`April 10, 2012, from U.S. Patent Application No. 11/475,847, filed on June 27, 2006 ("the '847
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`Application"). The application that issued as the '342 patent was a continuation-in-part (CIP)
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`application in the '786 patent family. A finding of inequitable conduct renders the entire patent
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`family unenforceable.
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`12.
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`Ira Marlowe is named as the sole inventor of the '961 Application and the '847
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`Application.
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`13.
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`Ira Marlowe withheld material information from the U.S. Patent and Trademark
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`Office ("PTO") with an intent to deceive the PTO, and knowingly pursued claims that covered
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`known prior art devices without revealing to the PTO Examiner that the particular structure and
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`functions omitted by his disclosures were the same features he was pursuing in the Patent Office.
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`But-for Mr. Marlowe’s omissions, at least one of the claims of the ‘786 would not have been
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`allowed.
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`14.
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`Each individual associated with filing and prosecuting of a patent application has
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`a duty of candor and good faith in dealing with the Patent Office, which includes a duty to
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`disclose to the Patent Office all information known to that individual to be material to
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`patentability as defined in 37 C.F.R. §1.56. This duty applied to Ira Marlowe, as well as any
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`other persons associated with the filing and prosecution of the '961 and '847 Applications.
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`15. Mr. Marlowe violated his duty to disclose information to the PTO that but for Mr.
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`Marlowe’s withholding of this critical information, one or more claims of the claims of the ’786
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`patent would not have issued. As set forth below, Mr. Marlowe failed to disclose material
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`information regarding his prior art devices which were sold more than one-year prior to the filing
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`date of the ‘961 Application. More specifically, Marlowe failed to disclose that the prior art
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`devices included the same structure and functionality recited in the patent claims he was seeking,
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`making those claims ineligible for patent protection. As set forth below, Mr. Marlowe knew of
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`that material nature of his withholding, yet deliberately withheld this information from the PTO.
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`Mr. Marlowe’s omission resulted in the improper issuance of the '786 patent and the ‘342 patent,
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`and but-for Mr. Marlowe’s withholding of this critical information, one or more claims of
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`the ’786 patent would not have issued.
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`16.
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`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
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`products designed to interface between Toyota OEM car stereos and aftermarket audio devices,
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`such as Panasonic CD changers. Specifically, the Blitzsafe 1998 TOY/PAN V.2 interface, was
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`made available for sale no later than September 1998. In addition, Blitzsafe interfaces TOY/PAN
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`DMX V.1B (single audio device input) and TOY/PAN DMX V.2B (dual CD changer inputs)
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`were made available for sale to users of Blitzsafe's public website by February 2001 and no later
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`than March 4, 2001. The '961 application was filed on December 11, 2002, thus, any sales of
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`Toyota/Panasonic interfaces before December 11, 2001 constitute prior art to the '786 patent.
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`17.
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`The 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B
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`(collectively “Blitzsafe's Toyota/Panasonic interfaces”) invalidate at least one claim of the '786
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`patent. Specifically, Blitzsafe’s Toyota/Panasonic interfaces anticipate or render obvious at least
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`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,
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`91, 92, 94, 97, and 98 of the '786 patent. As discussed below, Blitzsafe’s Toyota/Panasonic
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`interfaces are highly relevant to the claims of the ‘786 patent, and but-for Marlowe’s withholding
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`this critical information, one or more claims of the claims of the ’786 patent would not have
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`issued.
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`18.
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`The '786 patent is directed to an “audio device integration system” that integrates
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`a car stereo (also referred to as “car radio”) and one or more external or “aftermarket” devices,
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`such as a CD changer or an MP3 player. See the ‘786 patent at abstract and FIG. 1. In the context
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`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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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 14 of 29 PageID #: 1303
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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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`19.
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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 Falcon
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`because, inter alia, the only “interface” in Falcon is a graphical user interface that is “an entirely
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`different concept than the interface of the present invention, which includes a physical interface
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`device connected between a car stereo system and an external audio source (e.g., a plurality of
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`14
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 15 of 29 PageID #: 1304
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`auxiliary input sources).” See ‘786 patent file history, Amendment filed September 11, 2006 at p.
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`23.
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`20. While Mr. Marlowe’s representatives made these arguments to distinguish over
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`Falcon, Mr. Marlowe failed to mention that Blitzsafe’s 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 prior
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`art. For example, each of Blitzsafe's 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and
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`TOY/PAN DMX V.2B interfaces was a physical interface sold separate from the OEM car stereo
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`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. But-for
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`Mr. Marlowe’s withholding of this critical information, one or more claims of the claims of the
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`’786 patent would not have issued.
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`21.
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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.
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`22.
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`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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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 16 of 29 PageID #: 1305
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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.
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`23. While Mr. Marlowe’s representatives made these arguments to distinguish over
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`Miyazaki, Mr. Marlowe failed to mention that the Blitzsafe Toyota/Panasonic interfaces
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`performed the format conversion of control commands from the OEM car stereo to the after-
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`market external audio device. For example, the Blitzsafe devices were specifically designed to
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`process incompatible control commands at an interface using a programmed microcontroller and
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`connect a Toyota OEM car stereo with an after-market Panasonic CD changer. As discussed in
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`more detail below, the Toyota/Panasonic interfaces were designed with a pre-programmed
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`microcontroller that allowed for the communication of incompatible audio devices. Thus, the
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`very feature that Mr. Marlowe used to distinguish the claims from the prior art was present in the
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`Blitzsafe Toyota/Panasonic interfaces. Mr. Marlowe’s representatives submitted these arguments
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`and Mr. Marlowe knowingly pursued claims that covered Toyota/Panasonic interfaces without
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`revealing to the PTO Examiner that Blitzsafe’s Toyota/Panasonic interfaces had the same
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`features he was pursuing in the Patent Office. But-for Mr. Marlowe’s withholding of this critical
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`information, one or more claims of the claims of the ’786 patent would not have issued.
`
`24.
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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
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`known, “the Examiner has not found prior art that teaches or suggests an interface unit
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`16
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 17 of 29 PageID #: 1306
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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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`25. Mr. Marlowe, and/or his representatives, accepted these reasons for allowance
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`knowing that they covered Blitzsafe’s Toyota/Panasonic interfaces without revealing to the PTO
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`Examiner that Blitzsafe’s Toyota/Panasonic interfaces had these same features (i.e. “an interface
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`unit containing a pre-programmed microcontroller that allows for the communication of
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`incompatible audio devices” and an interface “to execute a code portion for generating and
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`transmitting a device presence signal to a car stereo to maintain the stereo in an operational state
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`responsive to signals from an aftermarket device”).
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`26.
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`That is, as set forth in the Invalidity Contentions served on Blitzsafe by the U.S.
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`Honda Defendants et al., Blitzsafe's 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and
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`TOY/PAN DMX V.2B interfaces are each an interface unit containing a pre-programmed
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`microcontroller that allows for the communication of incompatible audio devices.
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`27.
`
`For example, the 1998 TOY/PAN V.2 had a microcontroller preprogrammed to
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`execute a first pre-programmed code portion for (a) remotely controlling first after market
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`Panasonic CD changer using the Toyota OEM car stereo by receiving a control command from
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`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)
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`transmitting the formatted command to the first after market Panasonic CD changer through said
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`17
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 18 of 29 PageID #: 1307
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`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
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`market Panasonic CD changer through said second connector in a format incompatible with the
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`Toyota OEM car stereo, processing the received data into formatted data compatible with the
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`Toyota OEM car stereo, and transmitting the formatted data to the Toyota OEM car stereo
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`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.
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`28.
`
`Similarly, the TOY/PAN DMX V.1B had a microcontroller preprogrammed to
`
`execute a first pre-programmed code portion for remotely controlling the after market Panasonic
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`CD changer using the Toyota car stereo by receiving a control command through said first
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`connector in a format incompatible with the CD changer. The TOY/PAN DMX V.1B
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`microcontroller is also pre-programmed to process the received control command into a
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`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
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`DMX V.1B had a microcontroller preprogrammed to execute a second pre-programmed code
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`portion for receiving data from the after market Panasonic CD changer in a format incompatible
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`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
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`stereo for display thereby.
`
`29.
`
`Also, the TOY/PAN DMX V.2B had a microcontroller pre-programmed for
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`processing the received control command into a formatted command compatible with the first
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`Panasonic CD changer, and transmitting the formatted command to the first Panasonic CD
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`
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`18
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`Case 2:15-cv-01274-JRG-RSP Document 91 Filed 04/08/16 Page 19 of 29 PageID #: 1308
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`changer through said second connector for executi