Case 2:15-cv-01274-JRG-RSP Document 93 Filed 04/22/16 Page 1 of 25 PageID #: 1346
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`Case No. 2:15-CV-1274-JRG-RSP
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`(LEAD CASE)
`
`JURY TRIAL DEMANDED
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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., ET AL.,
`
`
`
`
`
`
` Defendants.
`
`COUNTERCLAIM DEFENDANT BLITZSAFE TEXAS, LLC’S
`ANSWER TO COUNTERCLAIMS OF COUNTERCLAIM PLAINTIFFS
`HYUNDAI MOTOR AMERICA, HYUNDAI MOTOR MANUFACTURING
`ALABAMA, LLC, KIA MOTORS AMERICA, INC., AND KIA MOTORS
`MANUFACTURING GEORGIA, INC.
`
`
`Plaintiff/Counterclaim Defendant Blitzsafe Texas, LLC (hereinafter “Blitzsafe” or
`
`“Counterclaim Defendant”), as and for its Answer to Counterclaims (the “Counterclaims”) of
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`Defendants/Counterclaim Plaintiffs Hyundai Motor America (“HMA”), Hyundai Motor
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`Manufacturing Alabama, LLC (“HMMA”), Kia Motors America, Inc. (“KMA”), and Kia Motors
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`Manufacturing Georgia, Inc. (“KMMG”) (hereinafter collectively referred to as “Hyundai and
`
`Kia” or “Counterclaim Plaintiffs”), states as follows:
`
`ANSWER TO COUNTERCLAIMS
`
`Blitzsafe denies all allegations contained in headings preceding individually numbered
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`paragraphs of Counterclaim Plaintiffs’ Counterclaims. Blitzsafe denies all allegations to the
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`Case 2:15-cv-01274-JRG-RSP Document 93 Filed 04/22/16 Page 2 of 25 PageID #: 1347
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`extent not expressly admitted. Blitzsafe hereby responds to the individually numbered
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`paragraphs of Counterclaim Plaintiffs’ Counterclaims as follows:
`
`I. THE PARTIES
`
`1.
`HMA is a California corporation with a place of business at 10550 Talbert Ave.,
`Fountain Valley, CA 92708. HMA is a wholly-owned subsidiary of HMC.
`
`RESPONSE TO ¶ 1
`
`Blitzsafe admits the allegations contained in paragraph 1 of the Counterclaims.
`
`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.
`
`RESPONSE TO ¶ 2
`
`Blitzsafe admits the allegations contained in paragraph 2 of the Counterclaims.
`
`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.
`
`RESPONSE TO ¶ 3
`
`Blitzsafe admits the allegations contained in paragraph 3 of the Counterclaims.
`
`4.
`KMGG 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-.
`
`RESPONSE TO ¶ 4
`
`Blitzsafe admits the allegations contained in paragraph 4 of the Counterclaims.
`
`5.
`Based on Blitzsafe’s assertion in its Complaint, Hyundai and Kia allege on
`information and belief that Blitzsafe, is a limited liability company organized and existing under
`the laws of the State of Texas, and maintains its principal place of business at 100 W. Houston
`Street, Marshall, Texas 75670.
`
`RESPONSE TO ¶ 5
`
`Blitzsafe admits the allegations contained in paragraph 5 of the Counterclaims.
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`II.
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`JURISDICTION AND VENUE
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`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 as to whether Hyundai and Kia have infringed or are infringing one or more valid and
`enforceable claims of U.S. Patent No. 7,489,786 (the ‘786 Patent) and/or U.S. Patent No.
`8,155,342 (the ‘342 Patent).
`
`RESPONSE TO ¶ 6
`
`Blitzsafe admits that an actual controversy exists between Blitzsafe and Hyundai and Kia
`
`as to whether Hyundai and Kia have infringed or are infringing one or more valid and
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`enforceable claims of the ’786 Patent and/or the ’342 Patent and denies the remaining allegations
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`contained in paragraph 6 of the Counterclaims.
`
`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
`2202.
`
`
`RESPONSE TO ¶ 7
`
`Blitzsafe admits that Hyundai and Kia’s counterclaims purport to arise under Title 35 of
`
`the United States Code and the provisions of the Federal Declaratory Judgment Act and that
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`jurisdiction is proper under 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
`
`8.
`Hyundai and Kia deny that venue for Blitzsafe’s patent infringement claims
`against the Hyundai and Kia is proper in this District. However, to the extent Blitzsafe’s
`infringement claims against are litigated in this District, venue for Hyundai and Kia’s
`counterclaims is proper in this District.
`
`RESPONSE TO ¶ 8
`
`Blitzsafe admits that venue for Hyundai and Kia’s Counterclaims is proper in this District
`
`and denies the remaining allegations contained in paragraph 8 of the Counterclaims.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement)
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`9.
`Hyundai and Kia re-allege and incorporate by reference the allegations set forth in
`the preceding paragraphs of the counterclaims.
`
`RESPONSE TO ¶ 9
`
`Answering paragraph 9 of the Counterclaims, Blitzsafe repeats and realleges its responses
`
`to paragraphs 1 through 8 above as if fully set forth at length herein.
`
`10.
`Hyundai and Kia do not infringe and have not infringed, either directly or
`indirectly, no 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.
`
`RESPONSE TO ¶ 10
`
`Blitzsafe denies the allegations contained in paragraph 10 of the Counterclaims.
`
`11.
`Hyundai and Kia pray, pursuant to 28 U.S.C. § 2201, for declaratory judgment
`they do not infringe the patents-in-suit.
`
`RESPONSE TO ¶ 11
`
`Blitzsafe denies the allegations contained in paragraph 11 of the Counterclaims.
`
`SECOND COUNTERCLAIM
`(Declaratory Judgment of Invalidity)
`
`12.
`Hyundai and Kia re-allege and incorporate by reference the allegations set forth in
`the preceding paragraphs of the counterclaims.
`
`RESPONSE TO ¶ 12
`
`Answering paragraph 12 of the Counterclaims, Blitzsafe repeats and realleges its
`
`responses to paragraphs 1–8 and 10–11 above as if fully set forth at length herein.
`
`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.
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`RESPONSE TO ¶ 13
`
`Blitzsafe denies the allegations contained in paragraph 13 of the Counterclaims.
`
`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.
`
`RESPONSE TO ¶ 14
`
`Blitzsafe denies the allegations contained in paragraph 14 of the Counterclaims.
`
`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.
`
`RESPONSE TO ¶ 15
`
`Answering paragraph 15 of the Counterclaim, Blitzsafe repeats and realleges its
`
`responses to paragraphs 1–8, 10–11, 13 and 14 above as if fully set forth at length herein.
`
`16.
`The ’786 patent, and the ’342 patent in its 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.
`
`RESPONSE TO ¶ 16
`
`Blitzsafe denies the allegations contained in paragraph 16 of the Counterclaims.
`
`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 renders the entire patent
`family unenforceable.
`
`RESPONSE TO ¶ 17
`
`Blitzsafe admits that the ’786 Patent issued on February 10, 2009 from the ’961
`
`Application, filed on December 11, 2002. Blitzsafe admits that the ’342 Patent issued on April
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`10, 2012 from the ’847 Application, filed on June 27, 2006, and that the ’342 Patent is a
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`continuation-in-part application in the ’786 Patent family. Blitzsafe denies the remaining
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`allegations contained in paragraph 17 of the Counterclaims.
`
`Ira Marlowe is named as the sole inventor of the ’961 Application and the ’847
`
`18.
`Application.
`
`RESPONSE TO ¶ 18
`
`Blitzsafe admits the allegations contained in paragraph 18 of the Counterclaims.
`
`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 patent [sic.] would not
`have been allowed.
`
`RESPONSE TO ¶ 19
`
`Blitzsafe denies the allegations contained in paragraph 19 of the Counterclaims.
`
`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.
`
`RESPONSE TO ¶ 20
`
`Blitzsafe admits the allegations contained in paragraph 20 of the Counterclaims.
`
`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 ‘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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`RESPONSE TO ¶ 21
`
`Blitzsafe denies the allegations contained in paragraph 21 of the Counterclaims.
`
`22.
`Upon information and belief, Mr. Marlowe owns and controls Blitzsafe of
`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
`likely offered for sale to users of Blitzsafe’s public website by February 2001 and in no event
`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.
`
`RESPONSE TO ¶ 22
`
`Blitzsafe states that Mr. Marlowe is the President of Blitzsafe of America, Inc. Blitzsafe
`
`admits that in November 1998, an advertisement appeared in Automedia magazine announcing
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`the introduction of the release of the first product using Blitzsafe of America’s Digital Multiplex
`
`technology in a changer protocol converter. Blitzsafe admits that Blitzsafe of America was
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`selling a Toyota/Panasonic interface as of November 1998. Blitzsafe admits that the ’961
`
`Application was filed on December 11, 2001. Blitzsafe is presently without sufficient
`
`information to admit or deny that the TOY/PAN DMX V.1B and TOY/PAN DMX V.2B
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`interfaces were made available for sale to users of Blitzsafe of America’s public website by
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`February 2001 and no later than March 4, 2001, and therefore denies the same. Blitzsafe denies
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`the remaining allegations contained in paragraph 22 of the Counterclaims.
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`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.
`
`RESPONSE TO ¶ 23
`
`Blitzsafe denies the allegations contained in paragraph 23 of the Counterclaims.
`
`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 stereo and the external device. Id. The interface converts control signals from the car
`stereo into a format that is compatible with an external device, thus allowing commands input at
`the car stereo to control the external device. With reference to Figure 2B of the ’786 Patent
`below, the control panel buttons 14 of the car radio 10 may be used to control the operation of an
`external device (MP3 player 30) as a result of interface 20 converting the control signals from
`the car radio 10 into a format compatible with the MP player. ‘786 patent at 6:1-19. Similarly,
`the interface receives data from the external device and converts the data into a format
`compatible with car radio 10 to allow information, such as artist, song title, and track and time
`information, to be displayed on display 13 of car radio 10. ’786 Patent at 6:19-24. The interface
`includes a microcontroller programmed to perform the format conversion for signals sent by the
`car stereo to the external device and signals sent by the external device to the car stereo. ’786
`Patent at 8:31-9:7. The ’786 Patent also describes the interface generating a “device presence
`signal” that it transmits to the car stereo to maintain the car stereo in an operational state, such as
`“prevent[ing] the car stereo from shutting off, entering a sleep mode, or otherwise being
`unresponsive to signals and/or data from an external source.” ’786 Patent at 12:29-35; 13:15-19;
`FIGs. 4A and 4B. The device presence signal is sent during the condition where radio is
`determined to be in CD player mode. ’786 Patent at 12:22-24 and 13:7-10.
`
`RESPONSE TO ¶ 24
`
`Blitzsafe states that the ’786 Patent speaks for itself. Blitzsafe denies any remaining
`
`allegations contained in paragraph 24 of the Counterclaims.
`
`25.
`During the prosecution of the ’961 application, the Examiner issued a Non-Final
`Office Action date June 5, 2006, in which all of the pending claims were rejected on prior art
`grounds. The Examiner relied primarily on U.S. Patent No. 6,993,615 (Falcon). In traversing the
`rejections, Mr. Marlowe’s representative argued that the claims were distinguishable over Falcon
`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
`device connected between a car stereo system and an external audio source (e.g., a plurality of
`auxiliary input sources).” See ’786 patent file history, Amendment filed September 11, 2006 at p.
`23.
`
`
`RESPONSE TO ¶ 25
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 25 of the Counterclaims.
`
`26. While Mr. Marlowe’s representatives made these arguments to distinguish over
`Falcon, Mr. Marlowe failed to mention that Blitzsafe’s Toyota/Panasonic interfaces each
`constituted a “physical interface device connected between a car stereo system and an external
`audio source,” the very feature that Mr. Marlowe used to distinguish the claims from the Falcon
`prior art. For example, each of Blitzsafe's 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and
`TOY/PAN DMX V.2B interfaces was a physical interface sold separate from the OEM car stereo
`or external audio source by Blitzsafe. These interfaces were designed to interface between
`Toyota OEM car stereos and after-market audio devices (i.e. Panasonic CD changers). Despite
`having knowledge of these prior art interfaces, Mr. Marlowe’s representatives argued that the
`prior art did not disclose such physical interfaces and knowingly pursued claims that covered
`Blitzsafe’s 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. 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.
`
`RESPONSE TO ¶ 26
`
`Blitzsafe states that the prosecution history of the ’786 Patent and the design and
`
`capabilities of the TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B interfaces
`
`speak for themselves. Blitzsafe denies any remaining allegations contained in paragraph 26 of
`
`the Counterclaims.
`
`27.
`Later during prosecution, the Examiner issued another Non-Final Office Action
`on November 14, 2006 rejecting all of the claims on new grounds, relying primarily on U.S.
`Patent No. 6,163,079 (Miyazaki), and subsequently issued a final rejection on April 19, 2007,
`again relying primarily on Miyazaki See ’786 patent file history, Non-Final Office Action dated
`November 14, 2006; and Final Office Action dated April 19, 2007.
`
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`RESPONSE TO ¶ 27
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`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 27 of the Counterclaims.
`
`28.
`Following the November 14, 2006 Non-Final Rejection, Mr. Marlowe’s
`representative amended the independent claims to specify that the interface performed “format”
`conversion of control commands from the car stereo to the external device. See ’786 file history,
`Amendment filed Feb. 14, 2007. Mr. Marlowe’s representative argued that the system of
`Miyazaki, et al. has nothing to do with processing incompatible control commands at an interface
`using a programmed microcontroller because the devices of Miyazaki, et al. are already
`compatible with each other. ’786 patent file history, Amendment filed February 16, 2007 at p.
`30; Amendment filed September 6, 2007 at p. 31.
`
`RESPONSE TO ¶ 28
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 28 of the Counterclaims.
`
`29. While Mr. Marlowe’s representatives made these arguments to distinguish over
`Miyazaki, Mr. Marlowe failed to mention that the 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
`designed to process incompatible control commands at an interface using a programmed
`microcontroller and connect a Toyota OEM car stereo with an after-market Panasonic CD
`changer. As discussed in more detail below, the Toyota/Panasonic interfaces were designed with
`a 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.
`
`RESPONSE TO ¶ 29
`
`Blitzsafe denies the allegations contained in paragraph 29 of the Counterclaims.
`
`30.
`In the Notice of Allowance for the ’786 patent issued on July 31, 2008, the
`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
`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
`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 as presented
`in the independent claims 47, 81, 83, 104.”
`
`RESPONSE TO ¶ 30
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 30 of the Counterclaims.
`
`31. Mr. Marlowe, and/or his representatives, accepted these reasons for allowance
`knowing that they covered Blitzsafe’s 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 aftermarket device”).
`
`RESPONSE TO ¶ 31
`
`Blitzsafe denies the allegations contained in paragraph 31 of the Counterclaims.
`
`32.
`That is, as set forth in the Invalidity Contentions served by Toyota et al., on
`Blitzsafe’s by U.S. Honda Defendants et al., Blitzsafe’s 1998 TOY/PAN V.2, TOY/PAN DMX
`V.1B, and TOY/PAN DMX V.2B interfaces are each an interface unit containing a pre-
`programmed microcontroller that allows for the communication of incompatible audio devices.
`
`RESPONSE TO ¶ 32
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2, TOY/PAN DMX
`
`V.1B, and TOY/PAN DMX V.2B speak for themselves, and denies any remaining allegations
`
`contained in paragraph 32 of the Counterclaims.
`
`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
`after-market Panasonic CD changer, (b) processing the received control command into a
`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 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
`
`
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`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
`TOY/PAN V.2 interface had a third pre-programmed code portion for switching to the second
`Panasonic CD changer connected to said third electrical connector.
`
`RESPONSE TO ¶ 33
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2 speak for
`
`themselves, and denies any remaining allegations contained in paragraph 33 of the
`
`Counterclaims.
`
`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 pre-programmed 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 car
`stereo for display thereby.
`
`RESPONSE TO ¶ 34
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.1B speak for
`
`themselves, and denies any remaining allegations contained in paragraph 34 of the
`
`Counterclaims.
`
`35.
`Also, the TOY/PAN DMX V.2B had a microcontroller pre-programmed for
`processing the received control command into a formatted command compatible with the first
`Panasonic CD changer, and transmitting the formatted command to the first Panasonic CD
`changer through said second connector for execution by the first Panasonic CD changer. The
`TOY/PAN DMX V.2B had a second pre-programmed code portion for receiving data from the
`first Panasonic CD changer through said second connector in a format incompatible with the
`Toyota car stereo, processing the received data into formatted data compatible with the Toyota
`car stereo, and transmitting the formatted data to the Toyota car stereo through said first
`connector for display by the Toyota car stereo.
`
`
`
`
`-12-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 93 Filed 04/22/16 Page 13 of 25 PageID #: 1358
`
`RESPONSE TO ¶ 35
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.2B speak for
`
`themselves, and denies any remaining allegations contained in paragraph 35 of the
`
`Counterclaims.
`
`36.
`In other words, the 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN
`DMX V.2B interfaces are designed to interface between Toyota OEM car stereos and after-
`market Panasonic CD changers. Around 1998, Panasonic marketed at least two CD changers
`designed for use in automobiles, the DP601 and DP801. Both the DP601 and DP801 were
`designed to be connected to a Panasonic car stereo by an extension cord that ended in a pair of
`RCA connectors for right- and left channel line-level audio and an eight-pin DIN CD Changer
`Control Connector. Commands were sent into the CD changer from the car stereo using a single
`data line on pin 5. The signal was nominally 5V, referenced to ground, active-high, and pulse-
`width modulated. The commands were encoded on this line using standard IR remote-control
`formats and were sent least-significant-byte first. Data was sent from the CD changer to the car
`stereo using a three-wire serial protocol consisting of a single data line on pin 1, a clock line on
`pin 2, and a sync (or strobe) on pin 4. The data from the CD changer was packed into frames; the
`disc information was accompanied by track and time information, so any interface processing
`disc information necessarily also processed track and time information by receiving and
`unpacking the data packet.
`
`RESPONSE TO ¶ 36
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2, TOY/PAN DMX
`
`V.1B, and TOY/PAN DMX V.2B speak for themselves, and denies any remaining allegations
`
`contained in paragraph 36 of the Counterclaims.
`
`37.
`Thus, any device (i.e. the 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and
`TOY/PAN DMX V.2B interfaces) connected to a Panasonic CD Changer Control Connector unit
`would have communicated using the two different Panasonic serial bus formats (one for input
`and one for output), transmitting commands and receiving data formatted as defined by
`Panasonic, as there is no other way to interface to a Panasonic DP601 or DP801 CD Changer via
`the CD Changer Control Connector. Thus, the Toyota/Panasonic interfaces are each an interface
`unit containing a pre-programmed microcontroller that allows for the communication of
`incompatible audio devices, and but for Mr. Marlowe’s withholding of the structure and circuitry
`of the Toyota/Panasonic interfaces, one or more claims of the claims of the ’786 patent would
`not have issued.
`
`
`
`
`-13-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 93 Filed 04/22/16 Page 14 of 25 PageID #: 1359
`
`RESPONSE TO ¶ 37
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2, TOY/PAN DMX
`
`V.1B, and TOY/PAN DMX V.2B speak for themselves, and denies the remaining allegations
`
`contained in paragraph 37 of the Counterclaims.
`
`38.
`In addition, the Blitzsafe's prior art 1998 TOY/PAN V.2, TOY/PAN DMX V.1B,
`and TOY/PAN DMX V.2B interfaces each 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.
`
`RESPONSE TO ¶ 38
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2, TOY/PAN DMX
`
`V.1B, and TOY/PAN DMX V.2B speak for themselves, and denies any remaining allegations
`
`contained in paragraph 38 of the Counterclaims.
`
`39.
`That is, Blitzsafe’s prior art 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and
`TOY/PAN DMX V.2B interfaces transmitted an AVC-LAN registration signal and “Play
`acknowledge” signals as device presence signals for maintaining the Toyota OEM car stereo in a
`state responsive to processed data and audio signals. Additionally (or alternatively), Blitzsafe’s
`prior art 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B generated and
`transmitted a response to a periodic heartbeat signal (connection check processing according to
`AVC-LAN protocol) from the Toyota OEM car stereo to maintain the Toyota car stereo in a state
`responsive to processed data and audio signals.
`
`RESPONSE TO ¶ 39
`
`Blitzsafe states that th