Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 1 of 27 PageID #: 1394
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` IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
`
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`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.,
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`
`
`
`
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` Defendants.
`
`COUNTERCLAIM DEFENDANT BLITZSAFE TEXAS, LLC’S
`ANSWER TO AMENDED COUNTERCLAIMS OF COUNTERCLAIM PLAINTIFFS
`NISSAN NORTH AMERICA, INC. AND NISSAN MOTOR CO., LTD.
`
`Plaintiff/Counterclaim Defendant Blitzsafe Texas, LLC (hereinafter “Blitzsafe” or
`
`“Counterclaim Defendant”), as and for
`
`its Answer
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`to Amended Counterclaims (the
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`“Counterclaims”) of Defendants/Counterclaim Plaintiffs Nissan North America, Inc. (“NNA”)
`
`and Nissan Motor Co., Ltd. (“NML”) (hereinafter NNA and NML collectively referred to as
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`“Defendant,” “Nissan,” or “Counterclaim Plaintiffs”), states as follows:
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`ANSWER TO COUNTERCLAIMS
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`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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`extent not expressly admitted. Blitzsafe hereby responds to the individually numbered
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`paragraphs of Counterclaim Plaintiffs’ Counterclaims as follows:
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`

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`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 2 of 27 PageID #: 1395
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`I. THE PARTIES
`
`1.
`NNA states that Nissan North America, Inc. is a limited liability company
`organized under the laws of California and has a principal place of business in Franklin,
`Tennessee.
`
`RESPONSE TO ¶ 1
`
`Blitzsafe admits the allegations contained in paragraph 1 of the Counterclaims.
`
`2.
`On information and belief, Plaintiff and Counterclaim Defendant, Blitzsafe Texas
`LLC, is a corporation formed under the laws of the State of Texas, with a principal place of
`business at 100 W. Houston Street, Marshall, Texas 75670.
`
`RESPONSE TO ¶ 2
`
`Blitzsafe admits the allegations contained in paragraph 2 of the Counterclaims.
`
`II.
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`JURISDICTION AND VENUE
`
`3.
`In its Counterclaims, NNA seeks Declaratory Judgment of non-infringement,
`invalidity, and unenforceability under 28 U.S.C. §§ 2201 and 2202 arising from a controversy
`between Blitzsafe and NNA concerning the Asserted Patents, which are the subject of the
`Complaint for Patent Infringement.
`
`RESPONSE TO ¶ 3
`
`Blitzsafe admits that an actual controversy exists between Blitzsafe and Nissan as to
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`whether Nissan has infringed or is infringing one or more valid and enforceable claims of the
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`Asserted Patents and denies the remaining allegations contained in paragraph 3 of the
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`Counterclaims.
`
`4.
`This Court has subject matter jurisdiction to hear and decide this counterclaim
`pursuant to 28 U.S.C. §§ 2201 and 2202 and 28 U.S.C. § 1338(a).
`
`RESPONSE TO ¶ 4
`
`Blitzsafe admits that Nissan’s Counterclaims purport to arise under 28 U.S.C. §§ 1338(a),
`
`2201, and 2202.
`
`5.
`Blitzsafe has submitted itself to the jurisdiction of this Court by the filing of its
`Complaint for Patent Infringement herein.
`
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`RESPONSE TO ¶ 5
`
`Blitzsafe admits the allegations contained in paragraph 5 of the Counterclaims.
`
`6.
`Subject to and without waiving NNA’s above affirmative defense that venue is
`improper, venue is proper in this Court with respect to the following counterclaims pursuant to
`28 U.S.C. §§ 1391(b) and 1391(c) where, Blitzsafe has brought this civil action.
`
`RESPONSE TO ¶ 6
`
`Blitzsafe admits that venue for NNA’s Counterclaims is proper in this District and denies
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`any remaining allegations contained in paragraph 6 of the Counterclaims.
`
`7.
`An actual controversy pursuant to 28 U.S.C. §§ 2201 and 2202 exists between
`NNA and Blitzsafe concerning the Asserted Patents in that Blitzsafe has filed a Complaint in this
`Court alleging infringement of the Asserted Patents by NNA.
`
`RESPONSE TO ¶ 7
`
`Blitzsafe admits that it has filed a Complaint in this Court alleging infringement of the
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`Asserted Patents by Nissan, and that an actual controversy exists between Blitzsafe and Nissan
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`as to whether Nissan has infringed or is infringing one or more valid and enforceable claims of
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`the ’786 Patent and/or the ’342 Patent. Blitzsafe denies any remaining allegations contained in
`
`paragraph 7 of the Counterclaims.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Invalidity)
`
`NNA realleges and incorporates paragraphs 1-7 as if fully set forth herein.
`
`8.
`
`RESPONSE TO ¶ 8
`
`Answering paragraph 8 of the Counterclaims, Blitzsafe repeats and realleges its responses
`
`to paragraphs 1 through 7 above as if fully set forth at length herein.
`
`9.
`The Asserted Patents are invalid and/or unenforceable for failure to satisfy one or
`more of the requirements for patentability set forth in the patent laws of the United States Code,
`including without limitation 35 U.S.C. §§ 102, 103, and 112 and the Rules of the United States
`Patent and Trademark Office, Title 37, Code of Federal Regulations.
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`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 4 of 27 PageID #: 1397
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`RESPONSE TO ¶ 9
`
`Blitzsafe denies the allegations contained in paragraph 9 of the Counterclaims.
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`SECOND COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement)
`
`NNA realleges and incorporates paragraphs 1-9 as if fully set forth herein.
`
`10.
`
`RESPONSE TO ¶ 10
`
`Answering paragraph 10 of the Counterclaims, Blitzsafe repeats and realleges its
`
`responses to paragraphs 1 through 7 and 9 above as if fully set forth at length herein.
`
`
`11.
`NNA does not infringe and has not infringed any valid claim of the Asserted
`Patents, and NNA is entitled to a declaration to that effect.
`
`RESPONSE TO ¶ 11
`
`Blitzsafe denies the allegations contained in paragraph 11 of the Counterclaims.
`
`THIRD COUNTERCLAIM
`(Declaratory Judgment of Unenforceability
`- Intentionally Failing to Disclose Invalidating Prior Art)
`
`NNA realleges and incorporates paragraphs 1-11 as if fully set forth herein.
`
`12.
`
`RESPONSE TO ¶ 12
`
`Answering paragraph 12 of the Counterclaims, Blitzsafe repeats and realleges its
`
`responses to paragraphs 1 through 7, 9, and 11 above as if fully set forth at length herein.
`
`13.
`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 ¶ 13
`
`Blitzsafe denies the allegations contained in paragraph 13 of the Counterclaims.
`
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`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 5 of 27 PageID #: 1398
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`14.
`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.
`
`RESPONSE TO ¶ 14
`
`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
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`continuation-in-part application in the ’786 Patent family. Blitzsafe denies any remaining
`
`allegations contained in paragraph 14 of the Counterclaims.
`
`A finding of inequitable conduct renders the entire patent family unenforceable.
`
`15.
`
`RESPONSE TO ¶ 15
`
`Blitzsafe states that this paragraph sets forth a legal conclusion to which no response is
`
`required, and therefore denies the same. To the extent that a response is required, Blitzsafe
`
`denies the allegations contained in paragraph 15 of the Counterclaims.
`
`Ira Marlowe is named as the sole inventor of the ’961 Application and the ’847
`
`16.
`Application.
`
`RESPONSE TO ¶ 16
`
`Blitzsafe admits the allegations contained in paragraph 16 of the Counterclaims.
`
`17.
`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 ¶ 17
`
`Blitzsafe admits the allegations contained in paragraph 17 of the Counterclaims.
`
`
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`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 6 of 27 PageID #: 1399
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`18.
`Upon information and belief, Mr. Marlowe was a designer of the prior art
`Blitzsafe Toyota-Panasonic interfaces and knew the structural and functional details of the prior
`art devices. Although Marlowe disclosed the existence of these prior art interfaces to the PTO,
`he purposely and deceptively withheld critical technical information about how the interfaces
`worked and intentionally sought claims on the same structure and circuitry present in the prior
`art devices.
`
`
`RESPONSE TO ¶ 18
`
`
`
`Blitzsafe admits that Mr. Marlowe designed the Toyota-Panasonic interfaces and knew
`
`the structural and functional details of the devices. Blitzsafe denies the remaining allegations
`
`contained in paragraph 18 of the Counterclaims.
`
`19.
`Upon information and belief, Mr. Marlowe violated his duty to disclose
`information to the PTO by failing to disclose material information regarding these prior art
`Blitzsafe interfaces which were sold more than one-year prior to the filing date of the ’961
`Application. Upon information and belief, Mr. Marlowe failed to disclose that these prior art
`devices included the same structure and functionality recited in the patent claims he was seeking,
`making those claims ineligible for patent protection.
`
`RESPONSE TO ¶ 19
`
`Blitzsafe denies the allegations contained in paragraph 19 of the Counterclaims.
`
`20.
`Upon information and belief, Mr. Marlowe knew of the material nature of these
`prior art devices, yet deliberately withheld this information from the PTO. But-for
`Mr. Marlowe’s withholding of this critical information, one or more claims of the ‘786 Patent
`would not have issued.
`
`RESPONSE TO ¶ 20
`
`Blitzsafe denies the allegations contained in paragraph 20 of the Counterclaims.
`
`21.
`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 OEM car stereos, such as Toyota vehicles, 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 offered for sale to visitors of Blitzsafe’s public website by
`February 2001 and no later than March 4, 2001.
`
`
`
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`RESPONSE TO ¶ 21
`
`Blitzsafe states that Mr. Marlowe is the President of Blitzsafe of America, Inc. Blitzsafe
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`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
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`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 is presently without
`
`sufficient information to admit or deny that the TOY/PAN DMX V.1B and TOY/PAN DMX
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`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
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`the remaining allegations contained in paragraph 21 of the Counterclaims.
`
`22.
`thus, any
`filed on December 11, 2002,
`‘961 application was
`The
`Toyota/Panasonic interfaces on sale before December 11, 2001 constitutes prior art to the ‘786
`Patent.
`
`
`RESPONSE TO ¶ 22
`
`Blitzsafe admits that the ’961 Application was filed on December 11, 2002. Blitzsafe
`
`denies the remaining allegations contained in paragraph 22 of the Counterclaims.
`
`
`23.
`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, upon information and belief, 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. 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.
`
`
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`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.
`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.
`
`RESPONSE TO ¶ 25
`
`Blitzsafe states that the ’786 Patent speaks for itself. Blitzsafe denies any remaining
`
`allegations contained in paragraph 25 of the Counterclaims.
`
`26. 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.
`
`RESPONSE TO ¶ 26
`
`Blitzsafe states that the ’786 Patent speaks for itself. Blitzsafe denies any remaining
`
`allegations contained in paragraph 26 of the Counterclaims.
`
`27.
`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.
`
`RESPONSE TO ¶ 27
`
`Blitzsafe states that the ’786 Patent speaks for itself. Blitzsafe denies any remaining
`
`allegations contained in paragraph 27 of the Counterclaims.
`
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`28.
`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 ¶ 28
`
`Blitzsafe states that the ’786 Patent speaks for itself. Blitzsafe denies any remaining
`
`allegations contained in paragraph 28 of the Counterclaims.
`
`29.
`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 ¶ 29
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 29 of the Counterclaims.
`
`30. While making these arguments to the PTO Examiner, 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 at least the Falcon prior art reference. 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).
`
`RESPONSE TO ¶ 30
`
`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
`
`
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`speak for themselves. Blitzsafe denies the remaining allegations contained in paragraph 30 of
`
`the Counterclaims.
`
`
`31.
`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.
`
`RESPONSE TO ¶ 31
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies the remaining allegations contained in paragraph 31 of the Counterclaims.
`
`32.
`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 ¶ 32
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 32 of the Counterclaims.
`
`33.
`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 ¶ 33
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 33 of the Counterclaims.
`
`34. While making these arguments to distinguish over Miyazaki, Mr. Marlowe failed
`to mention that the Blitzsafe Toyota/Panasonic interfaces performed the format conversion of
`
`
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`control commands from the OEM car stereo to the after-market external audio device. For
`example, upon information and belief, 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. Upon information and
`belief, the Toyota/Panasonic interfaces were designed with a pre-programmed microcontroller
`that allowed for the communication of incompatible audio devices.
`
`RESPONSE TO ¶ 34
`
`Blitzsafe denies the allegations contained in paragraph 34 of the Counterclaims.
`
`35. 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 about Blitzsafe’s Toyota/Panasonic interfaces, one or more claims of the
`claims of the ’786 patent would not have issued.
`
`RESPONSE TO ¶ 35
`
`Blitzsafe denies the allegations contained in paragraph 35 of the Counterclaims.
`
`36.
`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 ¶ 36
`
`Blitzsafe states that the prosecution history of the ’786 Patent speaks for itself. Blitzsafe
`
`denies any remaining allegations contained in paragraph 36 of the Counterclaims.
`
`37. Mr. Marlowe, and/or his representatives, accepted these reasons for allowance,
`despite knowing 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”). Instead, Mr. Marlowe, and/or his
`representatives intentionally withheld critical information about Blitzsafe’s Toyota/Panasonic
`interfaces from the PTO Examiner to obtain allowance.
`
`
`
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`RESPONSE TO ¶ 37
`
`Blitzsafe denies the allegations contained in paragraph 37 of the Counterclaims.
`
`38.
`That is, as set forth in the Defendants’ Invalidity Contentions served on Blitzsafe
`on January 19, 2016, 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 ¶ 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 the remaining allegations
`
`contained in paragraph 38 of the Counterclaims.
`
`39.
`For example, upon information and belief, 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.
`
`RESPONSE TO ¶ 39
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2 speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 39 of
`
`the
`
`Counterclaims.
`
`40.
`Further, upon information and belief, 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.
`
`
`
`
`-12-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 13 of 27 PageID #: 1406
`
`RESPONSE TO ¶ 40
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2 speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 40 of
`
`the
`
`Counterclaims.
`
`41.
`In addition, upon information and belief, 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 ¶ 41
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2 speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 41 of
`
`the
`
`Counterclaims.
`
`42.
`Similarly, upon information and belief, 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.
`
`RESPONSE TO ¶ 42
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.1B speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 42 of
`
`the
`
`Counterclaims.
`
`43.
`Upon information and belief, 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.
`
`
`
`
`-13-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 14 of 27 PageID #: 1407
`
`RESPONSE TO ¶ 43
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.1B speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 43 of
`
`the
`
`Counterclaims.
`
`44.
`Upon information and belief, 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 ¶ 44
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.1B speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 44 of
`
`the
`
`Counterclaims.
`
`45.
`the TOY/PAN DMX V.2B had a
`information and belief,
`Also, upon
`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.
`
`RESPONSE TO ¶ 45
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.2B speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 45 of
`
`the
`
`Counterclaims.
`
`46.
`Upon information and belief, 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.
`
`
`
`
`-14-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 15 of 27 PageID #: 1408
`
`RESPONSE TO ¶ 46
`
`Blitzsafe states that the design and capabilities of the TOY/PAN DMX V.2B speak for
`
`themselves, and denies
`
`the remaining allegations contained
`
`in paragraph 46 of
`
`the
`
`Counterclaims.
`
`47.
`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.
`
`RESPONSE TO ¶ 47
`
`Blitzsafe states that 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, and denies the remaining
`
`allegations contained in paragraph 47 of the Counterclaims.
`
`48.
`Upon information and belief, around 1998, Panasonic marketed at least two CD
`changers designed for use in automobiles, the DP601 and DP 801. Upon information and belief,
`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. Upon information and belief, 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 ¶ 48
`
`Blitzsafe states that the design and capabilities of the Panasonic DP601 and DP801 CD
`
`changers speak for themselves, and denies the remaining allegations contained in paragraph 48
`
`of the Counterclaims.
`
`49.
`Thus, upon information and belief, 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
`
`
`
`-15-
`
`

`
`Case 2:15-cv-01274-JRG-RSP Document 95 Filed 04/22/16 Page 16 of 27 PageID #: 1409
`
`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.
`
`RESPONSE TO ¶ 49
`
`Blitzsafe states that the design and capabilities of the TOY/PAN V.2, TOY/PAN DMX
`
`V.1B, and TOY/PAN DMX V.2B