Case 2:15-cv-01274-JRG-RSP Document 94 Filed 04/22/16 Page 1 of 23 PageID #: 1371
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`Case No. 2:15-CV-1274-JRG-RSP
`
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
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`BLITZSAFE TEXAS, LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`HONDA MOTOR CO., LTD., ET AL.,
`
`
`
`
`
`
` Defendants.
`
`COUNTERCLAIM DEFENDANT BLITZSAFE TEXAS, LLC’S
`ANSWER TO COUNTERCLAIMS OF COUNTERCLAIM PLAINTIFFS
`AMERICAN HONDA MOTOR CO., INC., HONDA OF AMERICA MFG., INC.,
`HONDA MANUFACTURING OF ALABAMA, LLC,
`AND HONDA MANUFACTURING OF INDIANA, LLC
`
`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 American Honda Motor Co., Inc., Honda of America Mfg.,
`
`Inc., Honda Manufacturing of Alabama, LLC, and Honda Manufacturing of Indiana, LLC
`
`(hereinafter collectively referred to as “U.S. Honda Defendants” or “Counterclaim Plaintiffs”),
`
`states as follows:
`
`ANSWER TO COUNTERCLAIMS
`
`Blitzsafe denies all allegations contained in headings preceding individually numbered
`
`paragraphs of Counterclaim Plaintiffs’ Counterclaims. Blitzsafe denies all allegations to the
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`Case 2:15-cv-01274-JRG-RSP Document 94 Filed 04/22/16 Page 2 of 23 PageID #: 1372
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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.
`American Honda Motor Co., Inc. is a California corporation with a place of
`business at 1919 Torrance Boulevard, Torrance, California 90501.
`
`RESPONSE TO ¶ 1
`
`Blitzsafe admits the allegations contained in paragraph 1 of the Counterclaims.
`
`2.
`Honda of America Mfg., Inc. is an Ohio corporation with a place of business at
`24000 Honda Parkway, Marysville, Ohio 43040.
`
`RESPONSE TO ¶ 2
`
`Blitzsafe admits the allegations contained in paragraph 2 of the Counterclaims.
`
`3.
`Honda Manufacturing of Alabama, LLC is an Alabama corporation with a place
`of business at 1800 Honda Drive, Lincoln, Alabama 35096.
`
`RESPONSE TO ¶ 3
`
`Blitzsafe admits the allegations contained in paragraph 3 of the Counterclaims.
`
`4.
`Honda Manufacturing of Indiana, LLC is an Indiana corporation with a place of
`business at 2755 N. Michigan Avenue, Greenburg, Indiana 47240.
`
`RESPONSE TO ¶ 4
`
`Blitzsafe admits the allegations contained in paragraph 4 of the Counterclaims.
`
`5.
`Based on Blitzsafe’s assertion in its Complaint, upon information and belief,
`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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`-2-
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`Case 2:15-cv-01274-JRG-RSP Document 94 Filed 04/22/16 Page 3 of 23 PageID #: 1373
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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 the U.S. Honda Defendants affirmative
`defenses, an actual controversy has arisen and now exists between Blitzsafe and the U.S. Honda
`Defendants as to whether the U.S. Honda Defendants 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 U.S. Honda
`
`Defendants as to whether U.S. Honda Defendants have infringed or are infringing one or more
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`valid and enforceable claims of the ’786 Patent and/or the ’342 Patent and denies the remaining
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`allegations contained in paragraph 6 of the Counterclaims.
`
`7.
`The U.S. Honda Defendants’ 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 U.S. Honda Defendants’ counterclaims purport to arise under Title
`
`35 of the United States Code and the provisions of the Federal Declaratory Judgment Act, and
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`admits that jurisdiction of this Court is proper under 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
`
`8.
`The U.S. Honda Defendants deny that venue for Blitzsafe’s patent infringement
`claims against the U.S. Honda Defendants is proper in this District. However, to the extent
`Blitzsafe’s infringement claims against U.S. Honda Defendants are litigated in this District,
`venue for the U.S. Honda Defendants’ counterclaims is proper in this District.
`
`RESPONSE TO ¶ 8
`
`Blitzsafe admits that venue for the U.S. Honda Defendants’ Counterclaims is proper in
`
`this District and denies the remaining allegations contained in paragraph 8 of the Counterclaims.
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`
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`-3-
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`

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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Unenforceability Due to Inequitable Conduct by
`Failing to Disclose Prior Art Patented Products)
`
`9.
`The U.S. Honda Defendants 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 Counterclaim, Blitzsafe repeats and realleges its responses
`
`to paragraphs 1 through 8 above as if fully set forth at length herein.
`
`10.
`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 ¶ 10
`
`Blitzsafe denies the allegations contained in paragraph 10 of the Counterclaims.
`
`11.
`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 ¶ 11
`
`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
`
`10, 2012 from the ’847 Application, filed on June 27, 2006, and that the ’342 Patent is a
`
`continuation-in-part application in the ’786 Patent family. Blitzsafe denies the remaining
`
`allegations contained in paragraph 11 of the Counterclaims.
`
`Ira Marlowe is named as the sole inventor of the ’961 Application and the ’847
`
`12.
`Application.
`
`RESPONSE TO ¶ 12
`
`Blitzsafe admits the allegations contained in paragraph 12 of the Counterclaims.
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`-4-
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`13.
`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 [sic] would not have
`been allowed.
`
`RESPONSE TO ¶ 13
`
`Blitzsafe denies the allegations contained in paragraph 13 of the Counterclaims.
`
`14.
`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 ¶ 14
`
`Blitzsafe admits the allegations contained in paragraph 14 of the Counterclaims.
`
`15. 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 sold 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.
`
`RESPONSE TO ¶ 15
`
`Blitzsafe denies the allegations contained in paragraph 15 of the Counterclaims.
`
`16.
`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 aftermarket audio devices,
`such as Panasonic CD changers. Specifically, the Blitzsafe 1998 TOY/PAN V.2 interface, was
`made available 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 made available for sale to users of Blitzsafe’s public website by February 2001 and no later
`than March 4, 2001. The ‘961 application was filed on December 11, 2002, thus, any sales of
`Toyota/Panasonic interfaces before December 11, 2001 constitute prior art to the ‘786 Patent.
`
`
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`RESPONSE TO ¶ 16
`
`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
`
`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
`
`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
`
`the remaining allegations contained in paragraph 16 of the Counterclaims.
`
`17.
`The 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B
`(collectively “Blitzsafe’s Toyota/Panasonic interfaces”) 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 ¶ 17
`
`Blitzsafe denies the allegations contained in paragraph 17 of the Counterclaims.
`
`18.
`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 “aftermarket” 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,
`
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`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 ¶ 18
`
`Blitzsafe states that the ’786 Patent speaks for itself. Blitzsafe denies any remaining
`
`allegations contained in paragraph 18 of the Counterclaims.
`
`19.
`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
`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 ¶ 19
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 19 of the Counterclaims.
`
`20. 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 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
`
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`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 ¶ 20
`
`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 the remaining allegations contained in paragraph 20 of
`
`the Counterclaims.
`
`21.
`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.
`
`RESPONSE TO ¶ 21
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 21 of the Counterclaims.
`
`22.
`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 ¶ 22
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 22 of the Counterclaims.
`
`23. 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 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
`
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`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 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 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 ¶ 23
`
`Blitzsafe denies the allegations contained in paragraph 23 of the Counterclaims.
`
`24.
`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
`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 ¶ 24
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 24 of the Counterclaims.
`
`25. 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 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 ¶ 25
`
`Blitzsafe denies the allegations contained in paragraph 25 of the Counterclaims.
`
`26.
`That is, as set forth in the Invalidity Contentions served on Blitzsafe 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.
`
`
`
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`RESPONSE TO ¶ 26
`
`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 26 of the Counterclaims.
`
`27.
`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
`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 ¶ 27
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2 speak for
`
`themselves, and denies any remaining allegations contained in paragraph 27 of the
`
`Counterclaims.
`
`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
`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 aftermarket 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.
`
`
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`RESPONSE TO ¶ 28
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.1B speaks for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 28 of
`
`the
`
`Counterclaims.
`
`29.
`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.
`
`RESPONSE TO ¶ 29
`
`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 29 of the
`
`Counterclaims.
`
`30.
`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 DP 801. 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 linelevel 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.
`
`
`
`
`-11-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 94 Filed 04/22/16 Page 12 of 23 PageID #: 1382
`
`RESPONSE TO ¶ 30
`
`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 30 of the Counterclaims.
`
`31.
`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.
`
`RESPONSE TO ¶ 31
`
`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 31 of the Counterclaims.
`
`32.
`In addition, the Blitzsafe's 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 ¶ 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.
`That is, Blitzsafe’s 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 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
`
`
`
`-12-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 94 Filed 04/22/16 Page 13 of 23 PageID #: 1383
`
`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 ¶ 33
`
`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 33 of the Counterclaims.
`
`34.
`For example, at least in 1998, the Toyota OEM car stereo communicated with the
`CD changer by exchanging commands and data via the AVC-LAN. Audio input through the CD-
`changer connector to the Toyota OEM car stereo was disabled by default and was enabled only
`when information was sent over the AVC-LAN to the OEM car stereo telling the car stereo that
`a[n sic.] compatible CD changer was present and ready. Thus, in order for the 1998 TOY/PAN
`V.2,TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B interfaces to connect to the CD-changer,
`these interfaces must have transmitted a “device presence signal” over the AVC-LAN before the
`car stereo enabled its line-level inputs and activated its CD controls. That is, any device
`connecting an after-market CD changer to a Toyota stereo must follow the AVC-LAN protocol,
`responding to commands and formatting data as defined by Toyota. In 1998, there was no other
`way to interface an aftermarket audio device to a Toyota OEM car stereo via its CD Changer
`connector. Thus, the 1998 TOY/PAN V.2, TOY/PAN DMX V.1B, and TOY/PAN DMX V.2B
`interfaces generated a “device presence signal,” 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.
`
`RESPONSE TO ¶ 34
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2, TOY/PAN DMX
`
`V.1B, and TOY/PAN DMX V2B speak for themselves, and denies the remaining allegations
`
`contained in paragraph 34 of the Counterclaims.
`
`35.
`Given the above, Mr. Marlowe knowingly pursued claims that covered Blitzsafe’s
`Toyota/Panasonic devices without revealing to the PTO Examiner that the particular structure
`and functions omitted by his disclosure were the same features he was pursuing in the Patent
`Office, and “but-for” Marlowe’s withholding of this critical information, one or more of the
`claims of the ‘786 patent would not have issued. In other words, had Ira Marlowe informed the
`PTO that the prior art devices were believed to be of particular relevance to the claims of the
`‘961 application and had he not omitted the structure and functions of the Toyota/Panasonic
`interfaces, the PTO would not have allowed at least one of the claims of the ’786 pa