Unified Patents Inc. v. Blitzsafe of Texas, LLC, IPR2016-00118, Paper 1 (PTAB Oct. 30, 2015)

IPR2016-00118 Petition Patent 8,155,342

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC. Petitioner

v.

BLITZSAFE TEXAS, LLC Patent Owner

IPR2016-00118 Patent 8,155,342

Multimedia Device Integration System

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,155,342


i

TABLE OF CONTENTS

I. INTRODUCTION ...................................................................................... - 1 -

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ........................ - 1 -

A. REAL PARTIES IN INTEREST ..................................................... - 1 -

B. RELATED MATTERS .................................................................... - 1 -

C. PAYMENT OF FEES ...................................................................... - 2 -

D. DESIGNATION OF LEAD COUNSEL ......................................... - 2 -

E. SERVICE INFORMATION ............................................................ - 3 -

F. POWER OF ATTORNEY ............................................................... - 3 -

III. REQUIREMENTS FOR INTER PARTES REVIEW ................................. - 3 -

A. GROUND FOR STANDING ........................................................... - 3 -

B. IDENTIFICATION OF THE PRIOR ART REFERENCES ........... - 3 -

1. U.S. Pub. No. 2001/0028717 to Ohmura (“Ohmura”). ......... - 3 -

2. U.S. Pub. No. 2002/0084910 to Owens (“Owens”). .............. - 4 -

3. Pub. No. WO 02/096137 to Ahn (“Ahn”). ............................. - 4 -

4. Other references for standard features in dependent claims. .................................................................................... - 5 -

C. STATEMENT OF THE PRECISE RELIEF REQUESTED ........... - 6 -

IV. OVERVIEW OF THE ’342 PATENT ....................................................... - 9 -

A. PRIORITY DATE OF THE ’342 PATENT .................................... - 9 -

B. SUMMARY OF THE ’342 PATENT ............................................ - 10 -

C. SUMMARY OF RELEVANT PROSECUTION FILE HISTORY ....................................................................................... - 12 -

D. PERSON OF ORDINARY SKILL IN THE ART ......................... - 13 -

E. PROPOSED CLAIM CONSTRUCTION ...................................... - 13 -

1. “integration subsystem” ....................................................... - 15 -

2. “multimedia device integration system” .............................. - 15 -

V. PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING ............................... - 16 -


ii

A. GROUND 1: INDEPENDENT CLAIMS 1 AND 49 AND DEPENDENT CLAIMS 2-4 ARE ANTICIPATED BY OHMURA ....................................................................................... - 17 -

B. GROUND 2: INDEPENDENT CLAIMS 1 AND 49, AND DEPENDENT CLAIMS 2-4 ARE OBVIOUS OVER OWENS IN VIEW OF AHN ......................................................................... - 24 -

C. GROUND 3: INDEPENDENT CLAIMS 25 AND 73 ARE OBVIOUS OVER OHMURA IN VIEW OF AHN ........................ - 34 -

D. GROUND 4: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM 5 ARE OBVIOUS OVER OHMURA IN VIEW OF FLICK ...................................................................... - 35 -

E. GROUND 5: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM 5 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF FLICK .................................................... - 37 -

F. GROUND 6: INDEPENDENT CLAIM 120 AND DEPENDENT CLAIM 6 ARE OBVIOUS OVER OHMURA IN VIEW OF TRANCHINA ........................................................... - 37 -

G. GROUND 7: INDEPENDENT CLAIM 120 AND DEPENDENT CLAIM 6 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF TRANCHINA ......................................... - 40 -

H. GROUND 8: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER OHMURA IN VIEW OF COON ........................................ - 40 -

I. GROUND 9: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF COON ......................... - 43 -

J. GROUND 10: DEPENDENT CLAIM 11 IS OBVIOUS OVER OHMURA IN VIEW OF LUTTER ................................................. - 44 -

K. GROUND 11: DEPENDENT CLAIM 11 IS OBVIOUS OVER OWENS AND AHN IN VIEW OF LUTTER.................................. - 45 -

L. GROUND 12: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE OBVIOUS OVER OHMURA IN VIEW OF MCCONNELL ................................................................................ - 46 -

M. GROUND 13: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF MCCONNELL ................................................................................ - 50 -

N. GROUND 14: DEPENDENT CLAIM 19 IS OBVIOUS OVER OHMURA IN VIEW OF BECKERT .............................................. - 52 -

O. GROUND 15: DEPENDENT CLAIM 19 IS OBVIOUS OVER OWENS AND AHN ........................................................................ - 53 -


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P. GROUND 16: DEPENDENT CLAIM 22 IS OBVIOUS OVER OHMURA IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF TRANCHINA ................................................................. - 53 -

Q. GROUND 17: DEPENDENT CLAIM 22 IS OBVIOUS OVER OWENS AND AHN IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF TRANCHINA ........................................ - 54 -

R. GROUND 18: INDEPENDENT CLAIM 121 IS OBVIOUS OVER OHMURA IN VIEW OF EICHE ....................................... - 55 -

S. GROUND 19: INDEPENDENT CLAIM 121 IS OBVIOUS OVER OWENS AND AHN IN VIEW OF EICHE ........................ - 56 -

IV. CONCLUSION ............................................................................................ - 57 -


iv

EXHIBIT LIST Exhibit No. Description

1001 U.S. Patent No. 8,155,342 to Marlowe 1002 Declaration of Prasant Mohapatra (“Mohapatra Declaration”) 1003 Resume of Prasant Mohapatra 1004 Ohmura U.S. Pub. No. 2001/0028717, Prior Art under 35 U.S.C.

§ 102(a) and § 102(e) 1005 Owens U.S. Pub. No. 2002/0084910, Prior Art under 35 U.S.C.

§ 102(a) and § 102(e) 1006 Ahn Pub. No. WO 02/096137, Prior Art under 35 U.S.C.

§ 102(a) and § 102(e) 1007 Coon US 6,539,358, Prior Art under 35 U.S.C. § 102(a) and

§ 102(e) 1008 Beckert Pat. 6,175,789, Prior Art under 35 U.S.C. § 102(b) and

§ 102(e) 1009 Article, “Blitzsafe Designs “Smart” Integration Device,”

Automedia (Feb. 1998) (“Blitzsafe Integration Device”) Prior Art under 35 U.S.C. § 102(b)

1010 Perry Pub. App. 20030025830, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1011 Flick US Pub. 20010029415, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1012 Tranchina US 7,493,645, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1013 Lutter U.S. Pub. No. 20020196134, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1014 McConnell 6,608,399, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1015 Eiche [US Pub. No. 20020137505, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1016 Sony JP Pat. 2001-128280, Prior Art under 35 U.S.C. § 102(b), and machine translation to English

1017 Trauner U.S. Pub. App. 20020070852, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1018 Lovin Pub. App. 20030053378, Prior Art under 35 U.S.C. § 102(a) and § 102(e)

1019 Unified Patents Inc.’s Voluntary Interrogatories


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I. INTRODUCTION

Petitioner Unified Patents Inc. (“Unified” or “Petitioner”) respectfully

petitions for initiation of inter partes review of Claims 1-25, 49, 73, 97, 120, 121

of U.S. Patent No. 8,155,342 (the “’342 Patent”) in accordance with 35 U.S.C.

§§ 311–319 and 37 C.F.R. § 42.100 et seq. (“Petition”).

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)

A. REAL PARTIES IN INTEREST

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could

exercise control over Unified’s participation in this proceeding, the filing of this

petition, or the conduct of any ensuing trial. See EX1019 (Unified Patents Inc.’s

Voluntary Interrogatories).

B. RELATED MATTERS

Litigation

• Blitzsafe Texas, LLC v. Nissan Motor Co., Ltd. et al., 2-15-cv-01276, TXED,

July 16, 2015

• Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2-15-cv-01277, TXED,

July 16, 2015


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• Blitzsafe Texas, LLC v. Volkswagen Group of Am., Inc. et al., 2-15-cv-

01278, TXED, July 16, 2015

• Blitzsafe Texas, LLC v. Hyundai Motor Co. et al., 2-15-cv-01275, TXED,

July 16, 2015

• Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et al., 2-15-cv-01274, TXED,

July 16, 2015

• Marlowe Patent Holdings LLC v. Dice Elects., LLC, et al., 3-10-cv-01199,

NJD, March 5, 2010

• Card Verification Solutions, LLC v. JP Morgan Chase & Co., 1-13-cv-

006338, ILND, September 4, 2013

C. PAYMENT OF FEES

This Petition is accompanied by a payment of $31,000 and requests review

of Claims 1-25, 49, 73, 97, 120, 121 of the ’342 Patent. 37 C.F.R. § 42.15. Thus,

this Petition meets the fee requirements under 35 U.S.C. § 312(a)(1).

D. DESIGNATION OF LEAD COUNSEL

Lead Counsel for Petitioner is Paul C. Haughey (Reg. No. 31,836), of

Kilpatrick Townsend & Stockton LLP. Back-up Counsel are Jonathan Stroud

(Reg. No. 72,518), of Unified and Scott E. Kolassa (Reg. No. 55,337) of Kilpatrick

Townsend & Stockton LLP.


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E. SERVICE INFORMATION

As identified in the attached Certificate of Service, a copy of this Petition, in

its entirety, is being served to the address of the attorney or agent of record in the

Patent Office for the ’342 Patent. Petitioner may be served at the offices of their

counsel, Kilpatrick Townsend & Stockton LLP.

F. POWER OF ATTORNEY

Powers of attorney are being filed with the designation of counsel in

accordance with 37 C.F.R. § 42.10(b).

III. REQUIREMENTS FOR INTER PARTES REVIEW

A. GROUND FOR STANDING

The ’342 Patent is currently asserted in multiple litigations. Petitioner has

not been sued or served. Petitioner is not the owner of the ’342 Patent and

Petitioner is not barred or estopped from requesting IPR. Thus, the ’342 Patent is

eligible for inter partes review.

B. IDENTIFICATION OF THE PRIOR ART REFERENCES

1. U.S. Pub. No. 2001/0028717 to Ohmura (“Ohmura”) (EX1004).

Ohmura is a published US application with priority to an April 11, 2000,

Japanese application and an April 9, 2001, U.S. filing date. It is directed to an

automobile audio apparatus 100 with a display 24 that communicates wirelessly


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with various portable devices. It shows controlling the portable devices with the

car stereo display, and displaying a playlist and other information from the portable

device on the car stereo display. Ohmura was not cited, and was published on

October 11, 2001, more than 1 year before the earliest cited ’342 priority date and

more than 2 years before the earliest claimable priority date of December 3, 2003,

of the ’342 Patent.

2. U.S. Pub. No. 2002/0084910 to Owens (“Owens”) (EX1005).

Owens was filed December 29, 2000, and published July 4, 2004. It

describes a wired add-on to a car stereo which is controlled by the car stereo

controls and provides data to the car stereo for display. It was cited against the

great grandparent U.S. Patent 7,489,786, and the claims were amended to add “pre-

programmed code” to distinguish it.

3. Pub. No. WO 02/096137 to Ahn (“Ahn”) (EX1006).

Ahn was published Nov. 28, 2002, over a year before the earliest claimable

priority date of Dec. 3, 2003 of the ’342 Patent. The international filing was

Oct. 26, 2001, based on a May 23, 2001 Korean priority. Ahn describes a mobile

device which receives streaming music and transmits it via Bluetooth to a car

stereo (“car kit”).


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4. Other references for standard features in dependent claims.

The other references relied on are directed to standard features which Patent

Owner incorporated into the dependent claims and later independent claims.

U.S. Pat. 6,539,358 to Coon (“Coon”) (EX1007), filed May 24, 2000 and

published March 25, 2003, describes a car docking station for a portable device

with speech recognition and text to speech synthesizing.

U.S. Pat. 6,175,789 to Beckert (“Beckert”) (EX1008), which has

continuation priority to June 24, 1996, and issued January 16, 2001, describes an

open platform with a USB hub for adding devices to a vehicle, and describes voice

commands, video, and a movie as a video example.

U.S. Pub. No. 20010029415 to Flick (“Flick”) (EX1011), filed February 9,

2001, and issued October 11, 2001, is directed to a remote vehicle function control

system and describes converting between different command protocols.

U.S. Pat. 7,493,645 to Tranchina (“Tranchina”) (EX1012), filed October

27, 2000, describes a vehicle console with a wireless receiver and a video

converter for converting between different video formats.

U.S. Pub. No. 20020196134 to Lutter (“Lutter”) (EX1013), filed June 26,

2002, and published December 26, 2002, describes a vehicle audio system that

detects portable devices for communication.


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U.S. Pat. 6,608,399 to McConnell (“McConnell”) (EX1014), discloses

various types of audio portable devices, wired and wireless connections, various

video portable devices

U.S. Pub. No. 20020137505 to Eiche (“Eiche”) (EX1015), continuation

priority to February 18, 2000, published September 26, 2002, and describes an in-

vehicle docking system that connects both wired and wireless devices to a car

stereo system.

C. STATEMENT OF THE PRECISE RELIEF REQUESTED

Pursuant to 35 U.S.C. § 311, this Petition requests cancellation of Claims

1-25, 49, 73, 97, 120, 121 of the ’342 Patent in accordance with one or more of the

following grounds, as indicated in the discussion below. The first two grounds are

provided for the main independent claims. The rest of the grounds, while

numerous, are directed to a variety of standard features added in the dependent

claims and later independent claims incorporating various dependent claim

features.

• GROUND 1: INDEPENDENT CLAIMS 1 AND 49 AND DEPENDENT

CLAIMS 2-4 ARE ANTICIPATED BY OHMURA.

• GROUND 2: INDEPENDENT CLAIMS 1 AND 49 AND DEPENDENT

CLAIMS 2-4 ARE OBVIOUS OVER OWENS IN VIEW OF AHN.


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• GROUND 3: INDEPENDENT CLAIMS 25 AND 73 ARE OBVIOUS

OVER OHMURA IN VIEW OF AHN.

• GROUND 4: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM

5 ARE OBVIOUS OVER OHMURA IN VIEW OF FLICK.

• GROUND 5: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM

5 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF FLICK.

• GROUND 6: INDEPENDENT CLAIM 120 AND DEPENDENT

CLAIM 6 ARE OBVIOUS OVER OHMURA IN VIEW OF

TRANCHINA.

• GROUND 7: INDEPENDENT CLAIM 120 AND DEPENDENT

CLAIM 6 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF

TRANCHINA.

• GROUND 8: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER

OHMURA IN VIEW OF COON.

• GROUND 9: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER

OWENS AND AHN IN VIEW OF COON.

• GROUND 10: DEPENDENT CLAIM 11 IS OBVIOUS OVER

OHMURA IN VIEW OF LUTTER.


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• GROUND 11: DEPENDENT CLAIM 11 IS OBVIOUS OVER OWENS

AND AHN IN VIEW OF LUTTER.

• GROUND 12: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE

OBVIOUS OVER OHMURA IN VIEW OF MCCONNELL.

• GROUND 13: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE

OBVIOUS OVER OWENS AND AHN IN VIEW OF MCCONNELL.


OHMURA IN VIEW OF BECKERT.


AND AHN.


OHMURA IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF

TRANCHINA.


AND AHN IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF

TRANCHINA.

• GROUND 18: INDEPENDENT CLAIM 121 IS OBVIOUS OVER

OHMURA IN VIEW OF EICHE.


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• GROUND 19: INDEPENDENT CLAIM 121 IS OBVIOUS OVER

OWENS AND AHN IN VIEW OF EICHE.

IV. OVERVIEW OF THE ’342 PATENT

A. PRIORITY DATE OF THE ’342 PATENT

The ’342 Patent was filed June 26, 2006. It was a continuation-in-part (CIP)

of Ser. No. 11/071,667, filed March 3, 2005 (abandoned); which was a CIP of Ser.

No. 10/732,909 filed December 10, 2003 (abandoned); which was a CIP of Ser.

No. 10/316,961 filed December 11, 2002, now U.S. Pat. No. 7,489,786. The

original U.S. Pat. No. 7,489,786 was directed to wired connections to a car stereo,

with no mention of wireless, and included only Figs. 1-7 of the ’342 patent. CIP

Ser. No. 10/732,909 (Pub. No. 20040151327, filed Dec. 10, 2003) had claims

directed to a docking station with wired connections, with figures 8-9 added. The

specification mentions in paragraph 107 that if the car has Bluetooth, it can be used

to communicate with the integration system. CIP Serial No. 11/071,667, filed

March 3, 2005 added figures 10-17 and the June 27, 2006 filing of the ’342 patent

added Figs. 18-24. Thus, at best, the December 10, 2003 CIP is the earliest priority

date.


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B. SUMMARY OF THE ’342 PATENT

The ’342 patent claims are directed to displaying audio files from a

wirelessly connected portable device on a car stereo display, and selecting the file

using the car stereo controls. The independent claims are 1, 25, 49, 73, 97, 120

and 121.

Claim 1 is directed to an “integration subsystem” between a “portable

device” [e.g., smart phone or music player] and a “car audio/video system.” A first

wireless interface, “in communication with said integration subsystem” has a

wireless link with a second wireless interface “in communication with the car

audio/video system. Information about an audio file [e.g., song list] stored on the

portable device is displayed on the “display of the car audio/video system,” and the

user selects the audio file “using controls of the car audio/video system.” Claim 1

is silent on where the integration subsystem is (in the portable device, car stereo or

an adapter), but it clearly has a wireless connection to the car audio/video system.

The claimed “car audio/video system” is sometimes described as a “car stereo,”

and that term is used in the claims of great-grandparent U.S. Patent No. 7,489,786.

We thus use the term “car stereo” interchangeably.


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Independent claim 49 is similar, directed to the integration subsystem being

electrically connected to the car stereo and wirelessly connecting with the portable

device.

Independent claims 25 and 73 are the same as claims 1 and 49, respectively,

except the audio file is streamed to the portable device (“received by”) instead of

stored.

Incompatible formats. Independent claims 97 and 120 are similar to claim

1, but add incompatible format commands and data, respectively, between the

portable device and the car stereo. The only description of data conversion for

display in the ’342 Patent is reformatting of RGB to composite signals and vice-

versa. EX1001 (’342 Patent) at 26:21-34. Standard chips are described as doing

this. Id. at 29:51-59. The conversion of commands is described as between

devices of different manufacturers, with code examples in Tables 1-4, id. at 22:18-

24:36, and Figs. 13-15 describing a protocol conversion.

Independent claim 121 is similar to claim 1, but requires the integration

subsystem have separate wireless links with both the portable device and the car

stereo.

Dependent Claims. The dependent claims add a variety of features that

were standard for car stereo systems and add-on devices before the earliest priority


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date of the ‘342 patent, such as: listing various types of portable add-on devices,

including video devices as well as audio devices, voice recognition and speech

synthesizing for hands free operation, device detection, and wired and wireless

devices.

C. SUMMARY OF RELEVANT PROSECUTION FILE HISTORY

As described under “Priority Date of the ’342 Patent” above, the patent was

built in stages with multiple CIPs adding description and figures.

Great grandparent U.S. Patent 7,489,786 originally had similar claims, but

without mentioning wireless. Those were rejected over various grounds, finally

over Owens (EX1005) and U.S. Patent 6,175,789 to Beckert (EX1008) (for

incompatible formats). The claims were amended to add the “pre-programmed

code” feature, and allowed.

The intervening CIPs pursued different claims. The 12-10-2003 CIP added

Figs. 8-9 and had claims on the docketing station. This also added the first

mention of wireless, with a brief reference to Bluetooth. This was assigned to a

different examiner, Xu Mei, who examined the rest of the CIPs as well.

The 3-3-2005 CIP of 10/732,909 added figures 10-17 with claims directed to

an interface for exchanging data and audio signals between a car stereo and an

external “after-market device.” The claims were rejected mainly over U.S. Patent


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6,052,603 to Kinzalow, which was distinguished as just teaching a hands-free

interface to transmit audio to a car stereo system. The application was abandoned.

The 6-27-2006 CIP added Figs. 18-24, with claims similar to issued claims.

The pertinent claims were first rejected over U.S. Patent 6,539,358 to Coon

(EX1007), a “[v]oice-interactive docking station for a portable computing device”

and then U.S. Patent 7,493,645 to Tranchina (EX1012), a “[c]onsole with monitor

and wireless receiver.” It was argued that Tranchina didn’t describe using the car

stereo controls to select an audio file on the portable device, it merely described

wireless communications for control purposes.

D. PERSON OF ORDINARY SKILL IN THE ART

One of ordinary skill in the art at time of the earliest claimed effective filing

date of the ’342 Patent (March 20, 1995) would have an undergraduate degree in

computer science or computer engineering, or equivalent work experience,

including familiarity with wireless transmission of audio and video. See ¶¶ 15-17.

E. PROPOSED CLAIM CONSTRUCTION

Pursuant to 37 C.F.R. § 42.100(b), the claim terms of an unexpired patent

subject to inter partes review shall receive the “broadest reasonable construction in

light of the specification of the patent in which [they] appear[].” See also In re

Swanson, No. 07-1534 (Fed. Cir. 2008); In re Trans Texas Holding Corp., 498


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F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571

(Fed. Cir. 1984).) In compliance with 37 C.F.R. § 42.104(b)(4), Petitioner states

that, in general, the “claim terms are presumed to take on their ordinary and

customary meaning.” See Changes to Implement Inter Partes Review

Proceedings, Post-Grant Review Proceedings, and Transitional Program for

Covered Business Method Patents, 77 Fed. Reg. 48699 (2012) (Response to

Comment 35). However, where a definition is provided by a patent applicant for a

specific claim term, that definition will control interpretation of the term as it is

used in the claim. See, e.g., Toro Co. v. White Consolidated Indus., Inc., 199 F.3d

1295, 1301 (Fed. Cir. 1999).

All claim terms not specifically addressed below have been accorded their

broadest reasonable interpretation in light of the patent specification, including

their plain and ordinary meaning, to the extent such a meaning could be

determined by a skilled artisan.

There have been no claim construction briefs or orders yet in the related

District Court litigations.

Petitioner proposes to adopt the following constructions based on the

reasons below and as set forth in EX1002 (Mohapatra Decl.) at ¶¶ 18-19.


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Claim Terms.

1. “integration subsystem”

The ’342 Patent simply shows a box labelled “Integration subsystem” in the

portable device or the car stereo in Figs. 18-23. “Integration” is defined as it is

used in the claims as obtaining information about the audio file, transmitting a

control command to select a file, and instructing the audio device to transmit the

file. EX1001 (’342 Patent) at 8:64-9:19. These functions are described being

handled by a microcontroller in the car stereo. Id. at 13:9-19. Figs. 18, 20 & 22

show the integration subsystem as a box in the portable device. Thus, this would

be understood by one of skill in the art to be a processor in the car stereo or the

portable device along with software and memory.

Accordingly, Petitioner submits that the broadest reasonable interpretation of

a “integration subsystem” is a processor and associated software and memory.

2. “multimedia device integration system”

The ’342 Patent describes a multimedia system as “The present invention

further provides a multimedia device integration system that allows for the wireless

integration of a portable audio and/or video device with a car audio and/or video

system.” Id. at 5:46-49. It also describes a stereo display for information about the

audio or video files. Since the portable device could be audio or video, audio alone


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is clearly intended to be covered, with the “multi” in multimedia either indicating it

is one of many media, or it include the further described and claimed display of

information about the audio (or video) files. Accordingly, Petitioner submits that

the broadest reasonable interpretation of a “multimedia device integration system”

is a system that provide audio or video and a display.

V. PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING

Background.

The claims of the ’342 patent are directed to standard features of after-

market audio and video systems that are described in a myriad of references. To

give a sense of the prior art, a few examples are listed below, in addition to the

specific prior art relied on herein for the various grounds:

Japanese Patent 2001-128280 to Sony (EX1016), published May 11, 2001 in

Japan, describes portable audio equipment added to a car stereo, using the car

stereo controls and display.

U.S. Patent Application Publication 2002/0070852 to Trauner (EX1017),

filed Dec. 12, 2000 and published June 13, 2002, is another of many examples

showing the use of voice recognition and a voice synthesizer in a car and Bluetooth

connected add-on devices.


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U.S. Patent Application 2003/0053378 to Lovin (EX1018), priority to July

31, 2001 provisional, published March 20, 2003, describes Bluetooth used to

provide music received from an MP3 player, and converted to FM format to play

on a car stereo.

Summary of the grounds of rejection.

The ’342 Patent claims are directed to an “integration subsystem” between a

“portable device” [e.g., smart phone or music player] and a “car audio/video

system.” Information about an audio file [e.g., song list] from the portable device

is displayed on the “display of the car audio/video system,” and the user selects the

audio file “using controls of the car audio/video system.” This is clearly shown in

Ohmura, and also in the combination of Owens and Ahn. The dependent claims

and later independent claims add a variety of standard features that are shown in

the other references as described below.

A. GROUND 1: INDEPENDENT CLAIMS 1 AND 49 AND DEPENDENT CLAIMS 2-4 ARE ANTICIPATED BY OHMURA

Ohmura was filed one year and eight months before the earliest claimed

priority date of the ’342 Patent, and was published two months before that earliest

date. Figure 2 of Ohmura shows a car audio apparatus 100 with a display 24 that

communicates wirelessly with various portable devices.


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Figure 7 of Ohmura shows the external play list D12 displayed on the car audio

display:


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Claim 1.

Claim 1 requires a portable device be wirelessly interfaced with a car stereo,

and that the user select audio files on the portable device using the car stereo

controls, and that information about the audio file be displayed on the car stereo

display. As supported in the claim chart below, Ohmura shows portable audio

apparatuses 200a and 200b which wirelessly communicate (in-car radio

communication) with the car stereo. The user selects music on the portable

apparatus using the car stereo controls. See, e.g., EX1004 (Ohmura) at 108 in Fig.

2. The play list from the portable device is displayed on the car stereo display. Id.

at D12, Fig. 7.


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The elements of the claim have been labelled with letters (e.g., [A]) in the

chart below for ease of understanding. The preamble recites a “multimedia device

integration system” which comprises the claimed element [A] “integration

subsystem” and [B] first and second wireless interfaces. Such an integration

system is shown in Ohmura, which has both components. The claimed [A]

“integration subsystem” is shown by the operating system 106 and CPU 101 of the

car stereo in Fig. 2, or the operating system 207 and CPU 203 of the portable

apparatus, and inherent associated memory. The wireless interfaces are shown by

the “transmission/reception modules” 110 (car stereo) and 205 (portable

apparatus).

Although other claims specify the location of the “integration subsystem,”

claim 1 does not, and is met by either location. The functions in element [C] of

controlling the portable device with the car stereo controls is shown in paragraph

0111 quoted below. Paragraph 0204, quoted below, shows both the display of the

music list, seen in Fig. 7, copied above, and the selection by the user. The

performance of these functions by the integration subsystem, CPU 101, is shown in

the flow chart of Fig. 4 and the quoted language of paragraph 0099 below. See

EX1002 (Mohapatra Decl.) ¶¶ 20-24.


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’342 Patent (brackets added)

Ohmura (EX1004) (emphases added)

1. A multimedia device integration system, comprising:

“An audio apparatus made up of the car-mounted audio apparatus 100 and portable audio apparatuses 200a and 200b.” Ohmura Abstract.

[A] an integration subsystem in communication with a portable device, the portable device external to a car audio/video system; and,

“An audio apparatus (audio system) made up of the car-mounted audio apparatus 100 [integration subsystem] and portable audio apparatuses 200a and 200b [portable device] transmits/receives contents data such as music via radio communication.” Id. at Abstract.

[B] a first wireless interface in communication with said integration subsystem, said first wireless interface establishing a wireless communication link with a second wireless interface in communication with the car audio/video system,

“[0080] The portable audio apparatus 200a is constructed of an apparatus main unit 201a.” “[0081] This apparatus main unit 201a is provided with …a transmission/reception module 205 [first wireless interface] ….” See also id. at Fig. 2. “[0079] Furthermore, a transmission/reception module 110 [second wireless interface] is connected to the CPU 101 and the transmission/reception module 110 carries out in-car radio communication with the portable audio apparatuses 200a and 200b carried into the vehicle via an in-car radio antenna 34.” See also id. at Fig. 2.

“[0084] These audio apparatus 100 [car audio/video system] and portable audio apparatuses 200a and 200b transmit/receive music data, etc. to/from each other through in-car radio communication."

[C] wherein said integration subsystem obtains information, about an audio file stored on the portable device, transmits the information over said wireless

“[0111] The music source/output port determination operation in S14 is carried out by the passenger operating the cross cursor/determination button 108 on the "AUDIO TOP MENU" screen to select/determine "Determine music replay/output destination" D1 and making the display screen show the "AUDIO MENU" screen [display of the car audio/video system ] shown in FIG. 7.” “[0204] . . . .Then, before listening to desired music in


- 22 -

communication link to the car audio/video system for subsequent display of the information on a display of the car audio/video system, instructs the portable device to play the audio file in response to a user selecting the audio file using controls of the car audio/video system, and transmits audio generated by the portable device over said wireless communication link to the car audio/video system for playing on the car audio/video system.

the vehicle, the passenger recognizes music titles of the music data stored in the portable audio apparatuses 200a and 200b by means of the display of music titles by the audio apparatus 100 using the stored music title data and selects desired music title from the music titles displayed.” “[0113] The passenger operates the cross cursor/determination button 108 [controls of the car audio/video system] in this music data list D12 displayed to select/determine [instructs the portable device to play the audio file] the "Second music" D12a. Then, the passenger selects/determines "Car-mounted SP" D13a in the "Output destination" selection area D13 (selection/determination content in FIG. 7).” “[0084] These audio apparatus 100 [car audio/video system] and portable audio apparatuses 200a and 200b transmit/receive music data, etc. to/from each other through in-car radio communication." “[0099] First, the action of the audio apparatus 100 will be explained using the flow chart of operation control of the audio apparatus 100 shown in FIG. 4. This flow chart indicates the procedure of a software program executed by the CPU 101.”

Claim 49. Claim 49 is similar to claim 1, but leaves out that the “integration

subsystem in communication with the portable device,” and instead recites the

second wireless interface is with the portable device, instead of with the car

audio/video system. This thus covers the integration subsystem being electrically

connected to the car stereo, but wirelessly connecting with the portable device.

This is shown in Ohmura, as discussed above with respect to claim 1. The


- 23 -

differences between claim 49 and claim 1 are shown in the chart at the end of the

Mohapatra Declaration. See EX1002 (Mohapatra Decl.) ¶ 25.

Claims 2-4. Claim 2 says “wherein said integration subsystem is positioned

within the portable device.” This is shown in Ohmura, where an operating system

Interface 207 and CPU 203 comprise the “integration subsystem.” The use of the

portable device CPU instead of the car stereo CPU was described in Ohmura, and

varying the location would be obvious to one of skill in the art:

“[0232] The method of controlling the audio apparatus in

the above embodiments and their modifications is

implemented by the CPUs inside these apparatuses

executing the control program stored in the concentrated

control unit 20 that performs system control of the audio

apparatus 100 and portable audio apparatus 200, etc.

Furthermore, providing such a control program stored in

a program storage medium separately will also allow the

control unit of another audio apparatus, etc. to execute

the above-described control processing.”

Claim 3 recites “wherein said first wireless interface is positioned within the

portable device.” This is shown in Ohmura in the chart above with “apparatus

main unit 201a [portable audio player] is provided with …a transmission/reception

module 205 [first wireless interface] ….” See EX1004 (Ohmura) at Fig. 2.


- 24 -

Claim 4 recites “wherein said second wireless interface is positioned within

the car audio/video system.” This is shown in Ohmura in the chart above with “a

transmission/reception module 110” [second wireless interface] in “car-mounted

audio apparatus 100.” Id.; see also Fig. 2. See EX1002 (Mohapatra Decl.) at

¶¶ 26-28.

B. GROUND 2: INDEPENDENT CLAIMS 1 AND 49, AND DEPENDENT CLAIMS 2-4 ARE OBVIOUS OVER OWENS IN VIEW OF AHN

Owens.

Owens was cited against the great-grandparent of the ’342 Patent, a wired

system. Owens shows a car stereo “head unit 10” which connects to various add-

on modules, including a “CDC (compact disc changer) 15” and an A/V interface

module connecting to a variety of other devices, as shown in Fig. 1 below.

Owens Fig. 1:


- 25 -

Owens shows a car stereo LCD display 21 and various controls in Fig. 10. The

mode button can select various portable AV modules or the CDC (select button

26). The display indicates the portable device selected (22, 23) and the CDC

tracks are displayed just like the tracks of the single CD player in the stereo.

Owens Fig. 10:


- 26 -

As noted above, Owens was cited in the ‘786 patent, the great- grandparent

of the ‘342 Patent. The ’786 patent was handled by another examiner, and the

examiner of the ’342 Patent never discussed Owens. The original ’786 Examiner

described Owens as follows, a description not disputed by Patent Owner—instead,

Patent Owner added limitations to the claims:

“Owens discloses an audio device integration system

comprising: a first connector (fig. 1 #32) electrically

connectable to a car stereo (fig. 1 #10); a second

connector (fig.8 “L1R1,V1”) electrically connectable to

an after-market audio device (fig.1 #44,46,48) external to

a car stereo (pg.2 [0032] ln. 9-11); a third connector (fig.

1 #12) electrically connectable to one or more auxiliary

input sources (fig.1 #13) external to a car stereo and an

after-market audio device (pg.2 [0025] ln. 3-6); an

interface (fig.1 #30,40) connected between the first and

second electrical connectors for channeling audio signals


- 27 -

to a car stereo from an after-market audio device (pg.2

[0032]), wherein the interface remotely controls at least

one of a plurality of auxiliary sources using a car stereo

by receiving a control command from a car stereo

through the first connector (pg.2 [0028]), transmitting a

control command to at least one of a plurality of auxiliary

input sources through at least one of the plurality of

auxiliary electrical connectors for execution by at least

one of a plurality of auxiliary input sources (pg.1

[0006]); receiving data from one of a plurality of

auxiliary input sources through at least one of the

plurality of auxiliary electrical connectors, and

transmitting the data to a car stereo through the first

electrical connector for display by a car stereo (pg.3

[0035]); and selecting one of a plurality of auxiliary input

sources from a car stereo (pg.2 [0026]).” 2-20-2008

Final Rejection, pp. 3-4.

Ahn.

Ahn is also directed to providing music from a portable device to a car

stereo, but using a wireless Bluetooth connection. In particular, as shown in Fig. 1,


- 28 -

Ahn streams music over the internet wirelessly to a mobile device 30, which then

provides the music via a wireless Bluetooth connection to a car stereo (car kit 40).

Ahn Fig 1:

Ahn shows in Fig. 2 a Bluetooth transceiver 38 in mobile device 30, and a

Bluetooth transceiver 400 in the car stereo 40. Ahn Fig. 2:

Claim 1 requires a portable device be wirelessly interfaced with a car stereo,

and that the user select audio files on the portable device using the car stereo

controls, and that information about the audio file be displayed on the car stereo

display. As supported in the claim chart below, Owens shows portable audio

apparatuses, such as CDC 15 and modules connected by a bus to A/V Interface

module 30, which communicate with the car stereo. The user selects music on the


- 29 -

portable apparatus using the car stereo controls (Fig. 10). The data from the

portable device is displayed on the car stereo display (Fig. 10.). It would be

obvious to substitute the Bluetooth interface of Ahn for the wired bus of Owens.

The preamble’s “multimedia device integration system” is shown by its

claimed elements, [A] “integration subsystem” and [B] first and second wireless

interfaces, with [A] performing the control and display functions of element [C].

Such an integration system is shown in Owens and Ahn, which have both

components. The claimed [A] “integration subsystem” is shown by the “master

microprocessor” of the car stereo in Fig. 9 of Owens, and inherent associated

memory. The wireless interfaces are shown by the “transmission/reception

modules” 110 (car stereo) and 205 (portable apparatus) of Ahn.

The functions in element [C] of controlling the portable device with the car

stereo controls is shown in the quoted paragraphs quoted below, with the

operations being performed by the master microprocessor as described in

paragraph 0034 quoted in element A. As described in paragraph 0037, the mode

button can select the car stereos built in CD, or the external, portable multi-CD

CDC. The selection of the track for the CD applies to the external CDC, as

described in paragraph 0039 as operating “similarly.” Finally, the described


- 30 -

display of status information about the track would apply to both the internal CD

player and the external CDC.

It would be obvious to combine Owens and Ahn. Both are directed to

connecting mobile devices that provide music to a car stereo. One of skill in the

art would look to Ahn to provide a more flexible wireless connection in place of

the wired connection of Owens. The combination would provide controls from the

car stereo, and display the music selections on the car stereo display, as described

in Owens, with the wireless connection described in Ahn. Paragraphs 0040 and

0041 of Owens describe wireless remote control of the system already, and this use

of wireless would cause one to look for wireless implementations of the data and

other control functions, as shown in Ahn. At the time of the ’342 priority date, it

was obvious to support both wired and wireless add-on devices, as described in

McConnell (see claim 17 discussion below). Ahn describes the user interface and

music selection in the portable device, which is one of the embodiments

contemplated in the ’342 Patent. It would be obvious to one of skill in the art that

a driver would want to control a portable device from the car stereo, while a

passenger in the back seat would want to control from the portable device, see,

e.g., Owens at [0010], and ideally both would be supported or it would be a matter

of design choice which to select. See EX1002 (Mohapatra Decl.) ¶¶ 29-39.


- 31 -

’342 Patent (brackets added)

Owens (EX1005) and Ahn (EX1006) (emphases added)

1. A multimedia device integration system, comprising:

“A head unit in an automotive audio system has a master microprocessor connected to a bus for serial additional of modules for expanding the system.” Owens, Abstract. “Disclosed is an online music-data providing system via a Bluetooth car kit …. Ahn, Abstract.

[A] an integration subsystem in communication with a portable device, the portable device external to a car audio/video system; and,

“[0002] The term head unit general refers to the central unit in an automotive audio system [a car audio/video system], which typically includes a radio tuner and a cassette tape player and/or a CD player.” Owens. “[0006] The invention relates to an expandable system having a bus which permits the serial additional of [sic] modules [portable device] for additional inputs and outputs, the bus running through each module. The head unit has circuitry configured to recognize when these inputs and outputs have been added to the system, as well as a display and manual controls which allow the vehicle driver at least some control over the entire system.” Owens. “[0034] The master microprocessor performs all of the system selection functions as may be selected by the manual and remote controls, and sends and receives signals to the various peripherals in clocked time slots.” Owens.

[B] a first wireless interface in communication with said integration subsystem, said first wireless interface establishing a wireless communication link with a second wireless interface in communication with the car audio/video system,

“The car kit 40 [car audio/video system] is installed in the user’s car 60 ….” Ahn 5:18.

“…mobile station 30 [portable device] comprises …a data processing and controlling unit 36; and a Bluetooth communication unit 38.” Ahn 5:23-6:1.

“The Bluetooth communication unit 38 [first wireless interface] enables short range radio links by the Bluetooth protocol between the data processing and controlling unit 36 [in mobile station 30] and the car kit 40 [car audio/video system].” Ahn, 6:7-9.

“The car kit 40 comprises a Bluetooth communication unit 400 [second wireless interface]…” Ahn, 6:24.


- 32 -

[C] wherein said integration subsystem obtains information, about an audio file stored on the portable device, transmits the information over said wireless communication link to the car audio/video system for subsequent display of the information on a display of the car audio/video system, instructs the portable device to play the audio file in response to a user selecting the audio file using controls of the car audio/video system, and transmits audio generated by the portable device over said wireless communication link to the car audio/video system for playing on the car audio/video system.

“[0006] The invention relates to an expandable system having a bus which permits the serial additional of modules for additional inputs and outputs, the bus running through each module. The head unit [car audio/video system] has circuitry configured to recognize when these inputs and outputs have been added to the system, as well as a display and manual controls [controls of the car audio/video system] which allow the vehicle driver at least some control over the entire system.” Owens.

“[0037]…. Pressing the mode button moves the unit through the tuner, CD player, CDC, A/V source selector, and auxiliary modes.” Owens. “[0035] Referring to FIG. 10, the display panel 20 …. The plate 20 includes an LCD 21 [display of the car audio/video system] which provides the driver with status information including mode selected, frequency or track, active modules (22), selected A/V source (23), and the time. A rotary volume control 25, central select button 26, track button 27, and band button 28 are operated as described below to control the system.” Owens. “[0039] The mode automatically advances to CD when a CD is inserted, and can also be switched using the mode button. Pressing the top or bottom of the track button advances to the next or previous track, and holding the tracks button puts the CD into fast forward or reverse. The CD can be paused by pressing the bottom of the band button. The program buttons for the radio tuner also serve functions for the CD player including intro (INT) which previews all tracks, random (RDM) which plays all tracks in random order one time, repeat (RPT), and program (PGM) which is used with the track button to program up to 24 tracks into memory. The CDC [portable device] mode operates similarly, but includes the options of selecting a disc by pressing the program buttons marked D.DN or D.UP. In the A/V mode [portable device], the A/V source can be selected by pushing the A/V button.” Owens.


- 33 -

Claim 49. Claim 49 is similar to claim 1, but leaves out that the “integration

subsystem in communication with the portable device,” and instead recites the

second wireless interface is with the portable device, instead of with the car

audio/video system. This thus covers the integration subsystem being electrically

connected to the car stereo, but wirelessly connecting with the portable device.

Owens shows the controller in the car stereo, while Ahn adds the wireless interface

as described above with respect to claim 1.

It would be obvious to one of skill in the art that a driver would want to

control a portable device from the car stereo, while a passenger in the back seat

would want to control from the portable device, see, e.g., Owens at [0010], and

ideally both would be supported or it would be a matter of design choice which to

select to have the integration subsystem. The differences between claim 49 and

claim 1 are shown in the chart at the end of the Mohapatra Declaration. See


Claims 2-4. Claim 2 says “wherein said integration subsystem is positioned

within the portable device.” This is shown in Ahn, where a “data processing and

control unit 36” comprise the “integration subsystem,” with the functionality being

obvious to move from the car stereo of Owens.


- 34 -

Claim 3 recites “wherein said first wireless interface is positioned within the

portable device.” This is shown in Ahn in the chart above. See EX1006 (Ahn) at

Fig. 2.

Claim 4 recites “wherein said second wireless interface is positioned within

the car audio/video system.” This is shown in Ahn in the chart above. See id. at

Fig. 2; see also EX1002 (Mohapatra Decl.) ¶¶ 42-44.

C. GROUND 3: INDEPENDENT CLAIMS 25 AND 73 ARE OBVIOUS OVER OHMURA IN VIEW OF AHN

Music Streaming—Claims 25, 73.

These claims are directed to the standard feature of streaming music in

addition to playing stored music. Independent claim 25 is the same as claim 1,

except the audio file is “received by” instead of “stored on” the portable device

(e.g., the portable device is a radio, or streams received music). The claim charts

at the end of the Mohapatra Declaration are marked to show the differences of

claims 25 and 73 from claim 1. Claim 73 is exactly the same as claim 49, except

the audio file is “received by” instead of “stored on” the portable device. One of

skill in the art would recognize that the external player of Ohmura could be a radio

or other device that would stream (receive) music. Thus, there would be

motivation to combine with Ahn, which shows a streaming device, that then

transmits the streamed music to the car stereo via a Bluetooth connection. See


- 35 -

Mohapatra Decl. ¶ 25. As shown in Fig. 1, Ahn streams music over the internet to

a mobile device 30, which then provides the music to a car stereo (car kit 40):

“[0036] The music-data-providing server 10 may transmit streaming music data

and non-streaming general music data according to the user's selection.”

D. GROUND 4: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM 5 ARE OBVIOUS OVER OHMURA IN VIEW OF FLICK

Claims 5, 97—Incompatible control signals.

These claims are directed to the standard feature of converting between

different command protocols, such as was done by Blitzsafe’s own earlier

products, as described in the 1998 article Blitzsafe Integration Device:

“Leaping forward to 1998, Blitzsafe has created a new

line of CD integration device with DMX (or Digital

Multiplexing) technology. …they actually recognize the

protocol of the factory radio and communicate with it

through the use of a microprocessor. In other words, the

Blitzsafe unit communicates with the factory head unit

and the CD changer and acts as a translator.” Blitzsafe

Integration Device.

Claim 97 is similar to claim 1, but adds that the car stereo control commands

are in a format incompatible with the portable device, and are re-formatted. The

claim charts at the end of the Mohapatra Declaration are marked to show the


- 36 -

differences between claims 97 and claim 1. Claim 5, dependent on claim 1, has the

same limitation. This format translation was well known as demonstrated by

Patent Owner’s own prior product described in Blitzsafe Integration Device, which

describes a protocol translator for an after-market CD for a car. The specific

translation being command conversion is inherently understood from Blitzsafe

Integration Device and is explicitly described in Flick. It would be obvious to

combine Ohmura with Flick because both relate to car stereos and Flick describes

wireless command conversion between different car systems:

[0062] This provides for a relatively simple and

straightforward approach to interface or cooperate with a

vehicle having a data communications bus 26, and

wherein the controller 25 is advantageously compatible

with a number of different vehicles.

EX1011 (Flick). Blitzsafe Integration Device makes it clear that conversion,

or translation, between devices of two different manufacturers is desired in the

market. See EX1002 (Mohapatra Decl.) ¶¶ 46-48.

’342 Patent (brackets added) Ohmura (EX1004) and Flick (EX1011) (emphasis added)

5. The system of claim 1, wherein said integration subsystem receives, over said wireless communication link, a control command issued at the car audio/video system in a format incompatible with the portable device, processes the control

“A vehicle system includes a remote function controller, and a data bus adapter cartridge …. The control circuitry may generate digital command codes, and the data bus adapter cartridge may convert the


- 37 -

command into a formatted command compatible with the portable device, and dispatches the processed control command to the portable device for execution thereby.

digital command codes into data communications bus signals according to a desired protocol. Flick, Abstract.

E. GROUND 5: INDEPENDENT CLAIM 97 AND DEPENDENT CLAIM 5 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF FLICK

Claims 5, 97—Incompatible control signals.

As described above, these claims are directed to the standard feature of

converting between different command protocols, such as was done by Blitzsafe’s

own earlier products. The specific translation being command conversion is

obvious from one reading Blitzsafe Integration Device and is explicitly described

in Flick. It would be obvious to combine Owens and Ahn with Flick because all

relate to car stereos and Flick describes wireless command conversion between

different car systems, as well as the reasons described in the preceding ground.

See EX1002 (Mohapatra Decl.) ¶ 49.

F. GROUND 6: INDEPENDENT CLAIM 120 AND DEPENDENT CLAIM 6 ARE OBVIOUS OVER OHMURA IN VIEW OF TRANCHINA

Claims 6, 120—Incompatible display data.


different data protocols, such as was done by Blitzsafe’s own earlier products, as


- 38 -

described in Blitzsafe Integration Device. Claim 120 is similar to claim 1, but adds

that the data from the portable device is in a format incompatible with the car

stereo, and is reformatted. The differences between claim 120 and claim 1 is

highlighted in the chart at the end of the Mohapatra Declaration. This limitation is

also in claim 6, dependent on claim 1. This is described in the ’342 patent as the

data for the display (e.g., song list), which can be converted between video

formats. This is a standard practice which the ’342 patents admits is provided by

commercially available chips:

The interface 690 could convert between composite and

red/green/blue (RGB) video signals, and vice versa, using

commercially-available video format conversion chips

such as the TDA8315, TDA4570, TDA3567,

TDA3566A, and TDA3569A video conversion chips

manufactured by Philips Corp., and the AL251 and

AL250 video conversion chips manufactured by

Averlogic Technologies, Inc., or any other suitable video

conversion chips.

EX1001 (’342 Patent) at 29:51-59. Tranchina describes conversion for video

in a “Vehicle display device” as referenced in the chart below. It would be

obvious to combine Tranchina with Ohmura because Ohmura shows providing

display data from a portable device to a car stereo display which would need to be


- 39 -

converted if in a different format. The desire to incorporate add-on devices of

different manufactures is shown in Blitzsafe Integration Device. The conversion

between video formats was pervasively known, thus making the combination

obvious. For example Perry describes a “A video standards converter (VSC)” for

doing such a conversion:

“A video standards converter (VSC) ….. The first and

second video standards may be different. The first input

module may be adapted to convert an analog video signal

to a digital signal.”

EX1010 (Perry), at Abstract; see EX1002 (Mohapatra Decl.) ¶¶ 50-51.

’342 Patent (brackets added) Tranchina (EX1012) (emphasis added)

6. The system of claim 1, wherein said integration subsystem receives data generated by the portable device in a format incompatible with the car audio/video system, processes the data into formatted data compatible with the car audio/video system, and transmits the processed data to the car audio/video system over the wireless communication link for subsequent display of the processed data on a display of the car audio/video system.

“Vehicle display device …” Tranchina, Title. “[0030] The signal processing/ conversion facilities 116 may perform such processing/ conversion to video and/or audio signals, prior to such signals being output to, for example, the displays 117-119.” Tranchina. “[0063] Such multi- vehicle compatibility provided by the controller 25 is especially advantageous in after-market systems ….” Tranchina


- 40 -

G. GROUND 7: INDEPENDENT CLAIM 120 AND DEPENDENT CLAIM 6 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF TRANCHINA

Claims 6, 120—Incompatible display data.


different data protocols, such as was done by Blitzsafe’s own earlier products, as

described in Blitzsafe Integration Device. As described in the preceding ground,

Tranchina describes conversion for video in a “Vehicle display device” as

referenced in the chart below. It would be obvious to combine Tranchina with

Owens and Ahn because Owens and Ahn show providing display data from a

portable device to a car stereo display which would need to be converted if in a

different format. The conversion between video formats was pervasively known,

as shown by Perry discussed in the preceding ground, and as shown in detail in

Tranchina as quoted and described in the preceding ground. Other reasons for

obviousness to combine in the preceding ground apply equally to combining with

Owens and Ahn. See EX1002 (Mohapatra Decl.) ¶ 52.

H. GROUND 8: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER OHMURA IN VIEW OF COON

Voice recognition, speech synthesizer.

These claims add standard voice recognition and speech synthesizer

features. In the ’342 Patent, this is described as being done by available voice


- 41 -

recognition processors, such as the Hualon Microelectric HM2007 (36:53-58).

Voice recognition is used for the commands, and speech synthesizing is used for

audio data. Coon describes a vehicle docking system for add-on devices. As

shown in the citations in the claim chart below, Coon describes recognizing spoken

commands (claim 7), accessing data (claimed “desired file”) in response to the

command (claim 8), a “text-to-speech synthesizer” for portable device data (claim

9) and transmitting the speech to the car stereo (claim 10).

It would be obvious to combine Coon with Ohmura because both are

directed to portable modules communicating with a car stereo, and it would be

desirable to add the hands-free controls of Coon to Ohmura because all deal with

vehicles, where hands-free operation is a known safety feature. See EX1002

(Mohapatra Decl.) ¶¶ 53-54. In addition, the pervasiveness of hands-free systems

at the time made this an obvious, standard feature. For example, Beckert also

describes voice commands in a vehicle system, and adds that they are used for

“most operating modes”:

“Additionally, the computer 22 has a voice recognition

device to permit the user to verbally enter commands in a

hands-free, eyes-free environment. These voice

commands can be used for controlling most operating

modes of the vehicle computing platform.”

EX1008 (Beckert) at 4:23-27.


- 42 -

’342 Patent Coon (EX1007) (emphases added)

7. The system of claim 1, wherein said integration subsystem further comprises a voice recognition subsystem for receiving and processing spoken control commands issued by a user.

“…a voice-interactive docking system for use in a motor vehicle.” Coon at 1:8-9. “The docking station generally includes a speech input device for receiving speech input, a speech recognizer for translating the speech input into voice command data, and an interface application for interacting with the applications residing on the portable computing device.” Coon at 1:47-52.

8. The system of claim 7, wherein said integration subsystem instructs said portable device to play a desired file in response to a spoken command processed by the voice recognition subsystem.

“In particular, the interface application, in response to voice command data, accesses the data associated with the information management application residing on the portable computing device.” Coon at 1:52-55.

9. The system of claim 1, wherein said integration subsystem further comprises a speech synthesizer for generating synthesized speech corresponding to data generated by the portable device.

“The docking station may further include a text-to-speech synthesizer for converting output data from the interface application into speech output data, and an audio system for generating audio output from the speech output data.” Coon at Abstract.

10. The system of claim 9, wherein said integration subsystem transmits the synthesized speech to the car audio/video system over said wireless communication link for subsequent playing of the synthesized speech by the car audio/video system.

“the docking station serves as an interface between the portable computing device and other vehicle systems.” Coon at 1:37-39. “…transmitting the speech output data from the text-to-speech synthesizer to a radio in the motor vehicle.” Coon at Claim 15. “In this preferred embodiment, a radio 66 serves as the audio system.” Coon at 4:27-28.


- 43 -

I. GROUND 9: DEPENDENT CLAIMS 7-10 ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF COON

Voice recognition, speech synthesizer.

As described in the preceding ground and claim chart, Coon describes a

vehicle docking system for add-on devices. As shown in the citations in the claim

chart below, Coon describes recognizing spoken commands (claim 7), accessing

data (claimed “desired file”) in response to the command (claim 8), a “text-to-

speech synthesizer” for portable device data (claim 9) and transmitting the speech

to the car stereo (claim 10).

It would be obvious to combine Coon with Owens and Ahn because all are

directed to portable modules communicating with a car stereo, and it would be

desirable to add the hands-free controls of Coon to Owens and Ahn because all deal

with vehicles, where hands-free operation is a known safety feature. See EX1002

(Mohapatra Decl.) ¶¶ 55-56. In addition, the pervasiveness of hands-free systems

at the time made this an obvious, standard feature, as demonstrated by Beckert

quoted in the preceding ground.


- 44 -

J. GROUND 10: DEPENDENT CLAIM 11 IS OBVIOUS OVER OHMURA IN VIEW OF LUTTER

Device presence.

Claim 11 is directed to the standard “plug and play” feature of detecting

when a device is added to a system. See EX1001(’342 Patent) at 11:26-49

(describing device detection as “plug and play”); id. at 16:52-67 (describing

presence). Ohmura generally describes detecting the portable devices, and thus it

would be obvious from Ohmura to generate a device presence signal and transmit

the device presence signal to the car audio/video system over said wireless

communications link. Lutter provides more detail about using a sensor to detect a

device using Bluetooth technology. It would be obvious to combine Lutter with

Ohmura because both describe detecting portable devices in a vehicle (see claim

chart below), and one would be motivated to use the details of device detection of

Lutter for the device detection referred to in Ohmura. See EX1002 (Mohapatra

Decl.) ¶ 57.

’342 Patent Lutter (EX1013) (emphasis added)

11. The system of claim 1, wherein said integration subsystem generates a device presence signal and transmits the device presence signal to the car audio/video system over said wireless communications link to maintain the car audio/video system in a state responsive to the portable device.

“[0104] At this time, installed in the center of the vehicle, the in-car radio antenna 34 can emit the search radio wave uniformly in the vehicle and detect the portable audio apparatuses 200 in the vehicle uniformly.” Ohmura. “A vehicle audio system includes a


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wireless audio sensor configured to wirelessly detect different portable audio sources brought into the vehicle.” Lutter, Abstract. “[0017] The audio manager 14 detects and communicates with the different wireless audio sources using any one of a variety of wireless communication protocols, such as Bluetooth or IEEE 802.11.” Lutter.

K. GROUND 11: DEPENDENT CLAIM 11 IS OBVIOUS OVER

OWENS AND AHN IN VIEW OF LUTTER Claim 11 is directed to the standard “plug and play” feature of detecting

when a device is added to a system. Owens generally describes detecting the

portable devices, and thus it would be obvious from Owens to generate a device

presence signal and transmit the device presence signal to the car audio/video

system over said wireless communications link. Lutter provides more detail about

using a sensor to detect a device using Bluetooth technology. Owens claim 10:

10. A system as in claim 1 wherein said microprocessor

polls the bus upon system start up to detect what modules

are installed and configures the system accordingly.

It would thus be obvious to combine Lutter with Owens because both

describe detecting portable devices in a vehicle, and one would be motivated to use

the details of device detection of Lutter for the device detection referred to in


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Owens. As described above, it would be obvious to then combine Owens and Ahn.


L. GROUND 12: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24 ARE OBVIOUS OVER OHMURA IN VIEW OF MCCONNELL

Various types of portable device.

Claims 12-16 add different typical portable devices that are used in a car.

Ohmura generally describes portable devices wirelessly connected in a car, while

McConnell describes various particular devices. In particular, McConnell

describes a receiver (claim 12), a satellite receiver (claim 13), a digital media

player (claim 14), an MP3 player (claim 15) and a mobile phone (claim 16), as

shown from the cites below. It would be obvious to combine Ohmura with

McConnell because both describe portable devices connected in a car, and one

would be motived to use the specific devices of McConnell for the general

“portable audio apparatus” of Ohmura. See EX1002 (Mohapatra Decl.) ¶ 59.

’342 Patent McConnell (EX1014) (emphases added)

12. The system of claim 1, wherein the portable device comprises a portable receiver.

“The satellite receiver module is arranged to produce an audio output signal for playback through the vehicle's speaker system.” McConnell at 8:4-6.

13. The system of claim 12, wherein the portable receiver comprises a digital audio broadcast (DAB) receiver, a high-definition (HD) radio receiver, or a satellite receiver.

“The satellite receiver module is arranged to produce an audio output signal for playback through the vehicle's speaker system.” McConnell at 8:4-6.

14. The system of claim 1, wherein the “allow a plug-in/standalone digital


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portable device comprises a portable digital media player.

audio player feature module 200, such as an MP3 type player, to be connected to consumer and/or automotive electronics inside the vehicle.” McConnell at 7:33-36.

15. The system of claim 14, wherein the portable digital media player comprises a video device, a portable media center, a portable media player, an MP3 player, an MP4 player, a WMV player, an Apple iPod, or an Apple video iPod.

“such as an MP3 type player, to be connected to consumer and/or automotive electronics inside the vehicle.” McConnell at 7:33-36.

16. The system of claim 1, wherein the portable device comprises a cellular telephone.

“…can include circuitry arranged to operate in conjunction with a mobile telephone device ….” McConnell at 14:56-57.

Wire connection.

Claim 17 adds a wired connection in addition to a wireless communication.

McConnell describes a docking station for a car that can accept both physically

connected, or wire connection, devices, as well as wireless devices. It would be

obvious to combine Ohmura with McConnell because both describe multiple

portable devices connected in a car (see Ohmura’s 200a & 202a in Fig. 2), and one

would be motived to modify Ohmura to have the flexibility of adding wired, and

not just wireless devices, as shown in McConnell. See EX1002 (Mohapatra Decl.)

¶ 60.

’342 Patent McConnell (EX1014) (Emphasis added)

17. The system of claim 1, further

“Another embodiment of a power and signal coupling arrangement is shown in FIGS. 6 and 7. More specifically, each mounting space includes a set of spring contacts 28 of sufficient


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comprising a non-wireless connection established between the car audio/video system and the portable device.

length to make contact with the conductor pads on the feature modules as the modules are inserted and seated into the docking station. The spring contacts are mounted to a printed circuit board (PCB) 30. PCB 30 can be formed to include an integrated appendix 31 to function as a male connector for receiving a female connector of a wire harness.” McConnell at 5:38-47. “A wireless interface 316 having suitable antenna and receiving circuitry, such as a blue tooth arrangement, can also be used to interface modules with one or more of the non-vehicle devices.” McConnell at 15:16-19.

Video.

Claims 18, 20-21 and 23-24 describe the portable device providing video or

pictures instead of audio, a standard add-on feature for cars, especially for

navigation systems and movies. While Ohmura describes audio, McConnell

describes video. In particular, McConnell, as shown in the cites in the chart below,

describes a video file (claim 18), a camera, which is known to provide pictures

(claim 20), a video clip (claim 21), a song, which is the main use of the disclosed

MP3 player (claim 23), and Internet browsing (claim 24).

It would be obvious to combine Ohmura with McConnell because both

describe portable devices connected in a car, and one would be motived to add the

video devices of McConnell to the general “portable audio apparatus” of Ohmura.

One of skill in the art would recognize that the McConnell video devices include

audio, and thus would be included in the audio apparatus referred to by Ohmura,


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especially since movies can be streamed, with accompanying streaming audio, like

the streaming audio described in Ohmura. See Mohapatra Decl. EX1002

(Mohapatra Decl.) ¶¶ 61-62.

’342 Patent McConnell (EX1014) (emphasis added)18. The system of claim 1, wherein said integration subsystem transmits, over said wireless communication link, information about a video file stored on the portable device to the car audio/video system for subsequent display of the information on a display of the car audio/video system, instructs the portable device to play the video file in response to a user selecting the video file using controls of the car audio/video system, and transmits video generated by the portable device over said wireless communication link to the car audio/video system for playing on the car audio/video system.

“In addition, the module can be arranged to generate a video output signal for display on a display mounted on the module housing, a vehicle mounted display, ….” McConnell at 8:6-8.

20. The system of claim 18, wherein the video file comprises a picture stored on the portable device.

“Another possible feature module shown in FIG. 25 includes a camera module 218.” McConnell at 10:25-26.

21. The system of claim 18, wherein the video file comprises a video clip stored on the portable device.

“In addition, the module can be arranged to generate a video output signal for display on a display mounted on the module housing, a vehicle mounted display, ….” McConnell 8:6-8

23. The system of claim 1, wherein the audio file comprises a song stored on the portable device.

“allow a plug-in/standalone digital audio player feature module 200, such as an MP3 [song] type player, to be connected to consumer and/or automotive electronics inside the vehicle.” McConnell at 7:33-36.

24. The system of claim 1, wherein the “Another possible feature module


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portable device is connected to the Internet, and said integration device processes information generated by the portable device and transmits processed information to the car audio/video system so that the display of the car audio/video system operates as an Internet browser.

includes a travel minder module. This module includes a processor and memory arrangement arranged to provide a stand-alone, multi-purpose device capable of saving travel directions from Internet-based search engines or other applications, as well as oral instructions for reaching specific destinations.” McConnell at 14:42-46.

M. GROUND 13: DEPENDENT CLAIMS 12-18, 20-21 AND 23-24

ARE OBVIOUS OVER OWENS AND AHN IN VIEW OF MCCONNELL

Various types of portable device.

Claims 12-16 add different typical portable devices that are used in a car.

Owens and Ahn generally describe portable devices wirelessly connected in a car,

while McConnell describes various particular devices. In particular, McConnell

describes a receiver (claim 12), a satellite receiver (claim 13), a digital media

player (claim 14), an MP3 player (claim 15) and a mobile phone (claim 16), as

shown from the cites below. It would be obvious to combine Owens and Ahn with

McConnell because all describe portable devices connected in a car, and one would

be motived to use the specific devices of McConnell for the general portable

devices of Owens and Ahn. See EX1002 (Mohapatra Decl.) ¶ 63.


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Wire connection.

Claim 17 adds a wired connection in addition to a wireless communication.

McConnell describes a docking station for a car that can accept both physically

connected, or wire connection, devices, as well as wireless devices. It would be

obvious to combine Owens and Ahn with McConnell because all describe multiple

portable devices connected in a car and Owens describes wired connections. Thus,

one would be motived to modify Ahn to have the flexibility of adding wired, and

not just wireless devices, as shown in McConnell. See EX1002 (Mohapatra Decl.)

¶ 64.

Video.

Claims 18, 20-21 and 23-24 describe the portable device providing video or

pictures instead of audio, a standard add-on feature for cars, especially in

navigation systems and movies. Owens describes both audio and video devices,

while McConnell describes video as well. In particular, McConnell, as shown in

the cites in the chart in the preceding ground, describes a video file (claim 18), a

camera, which is known to provide pictures (claim 20), a video clip (claim 21), a

song, which is the main use of the disclosed MP3 player (claim 23), and Internet

browsing (claim 24).


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It would be obvious to combine Owens and Ahn with McConnell because all

describe portable devices connected in a car, and one would be motived to add the

video devices of McConnell to the modules of Owens. Owens describes various

video devices, such as in claim 9: “9. A system as in claim 7 wherein said at least

one audio/video source comprises at least one of a VCR, a DVD, a TV tuner, and a

game station.” One of skill in the art would recognize that the McConnell video

devices could be added to the video devices of Owens. Like McConnell, as quoted

in the claim chart above, Owens also includes an “MP3 player” (para. 0025), and

the video of Owens would necessarily include video files and video clips. See


N. GROUND 14: DEPENDENT CLAIM 19 IS OBVIOUS OVER OHMURA IN VIEW OF BECKERT

While Ohmura describes audio devices, Beckert specifically describes video

devices including the video as a movie. It would be obvious to combine Ohmura

with Beckert because both describe portable devices connected in a car, and one

would be motived to add the video devices of Beckert to the general “portable

audio apparatus” of Ohmura. One of skill in the art would recognize that the

Beckert video devices include audio, and thus would be included in the audio

apparatus referred to by Ohmura, especially since movies can be streamed, with


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accompanying streaming audio, like the streaming audio described in Ohmura. See

EX1002 (Mohapatra Decl.) ¶ 67.

’342 Patent Beckert (EX1008) (emphasis added)

19. The system of claim 18, wherein the video file comprises a movie stored on the portable device.

“The type of data displayed on the monitor can range widely from word instructions concerning the vehicle's performance, to diagrammatic directions used by the navigation system, to video movies for in-car entertainment.” Beckert at 4:52-56.

O. GROUND 15: DEPENDENT CLAIM 19 IS OBVIOUS OVER

OWENS AND AHN

Owens describes the video as a movie. It would have been obvious to

combine Owens and Ahn, for the same reasons as set forth above. See EX1002

(Mohapatra Decl.) ¶ 68.

’342 Patent Owens (EX1005) (emphasis added)

19. The system of claim 18, wherein the video file comprises a movie stored on the portable device.

“[0010]…can play a video game or watch a movie, ….” Owens.

P. GROUND 16: DEPENDENT CLAIM 22 IS OBVIOUS OVER

OHMURA IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF TRANCHINA

Video and incompatible format.

Claim 22 adds that the video is in an incompatible format. Claim 6 has the

same limitation for audio in an incompatible format. Tranchina shows the claimed

conversion, as described above with respect to claim 6. It would be obvious to


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combine Tranchina with Ohmura for the same reasons, and additionally because

video in an incompatible format may contain audio in an incompatible format. It

would also be obvious to combine Ohmura with McConnell as described above.


’342 Patent Tranchina (emphasis added)

22. The system of claim 18, wherein said integration subsystem receives video generated by the portable device in a first format incompatible with the car audio/video system, processes the video into processed video in a second format compatible with the car audio/video system, and transmits the processed video over the wireless communication link to the car audio/video system for subsequent display of the processed video on a display of the car audio/video system.

“Vehicle display device …” Tranchina at Title. “[0030] The signal processing/ conversion facilities 116 may perform such processing/ conversion to video and/or audio signals, prior to such signals being output to, for example, the displays 117-119, ….” Tranchina. “[0063] Such multi-vehicle compatibility provided by the controller 25 is especially advantageous in after-market systems ….” Tranchina.

Q. GROUND 17: DEPENDENT CLAIM 22 IS OBVIOUS OVER

OWENS AND AHN IN VIEW OF MCCONNELL AND FURTHER IN VIEW OF TRANCHINA

Video and incompatible format.

Claim 22 adds that the video is in an incompatible format. Claim 6 has the

same limitation for audio in an incompatible format. Tranchina shows the claimed

conversion, as described above with respect to claim 6. It would be obvious to

combine Tranchina with Owens for the same reasons, and additionally because

video in an incompatible format may contain audio in an incompatible format. It


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would also be obvious to combine Owens with McConnell as described above. See

EX1002 (Mohapatra Decl.) ¶ 70.

R. GROUND 18: INDEPENDENT CLAIM 121 IS OBVIOUS OVER OHMURA IN VIEW OF EICHE

Claim 121—two wireless connections, integration system in middle.

Claim 121 is a method claim similar to claim 1, but requires the integration


stereo. Multiple wireless links are shown in Eiche (emphases added):

“Wireless communications relative to a vehicle using a

wireless communications device, a pocket for holding the

wireless communication device and a docking station in

communication with the pocket are provided.” Eiche,

Abstract.

“[0013] …. Other potential functions of the docking

station digital signal processor include wireless data

processing or forwarding, the storage of voice

memoranda, text to speech functions, and for interfacing

the system to other communication devices, such as

personal information managers (PIMs), GPS receivers,

vehicle communications busses, Bluetooth devices, and

other devices.” Eiche.

It would be obvious to combine Ohmura with Eiche because both describe

portable devices connected in a car, and one would be motived to support not just


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the wireless devices of Ohmura, but also add wired devices as shown in Eiche.

Because Eiche shows both wired and wireless, it would be obvious to combine

with Ohmura. It would further be obvious to one of skill in the art that many

devices contain both wired (e.g., USB) and wireless (e.g., Bluetooth) connections,

and it would be obvious to support both for the same device. See EX1002

(Mohapatra Decl.) ¶¶ 71-72.

S. GROUND 19: INDEPENDENT CLAIM 121 IS OBVIOUS OVER OWENS AND AHN IN VIEW OF EICHE

Claim 121 is a method claim similar to claim 1, but requires the integration


stereo. Multiple wireless links are shown in Eiche, as described in the preceding

ground and claim chart.

It would be obvious to combine Owens and Ahn with Eiche because all

describe portable devices connected in a car, and one would be motived to support

not just the wireless devices of Ahn alone, or the wired devices of Owens alone, but

also add support for both as shown in Eiche. Because Eiche shows both wired and

wireless, it would be obvious to combine with Owens and Ahn. It would further be

obvious to one of skill in the art that many devices contain both wired (e.g., USB)

and wireless (e.g., Bluetooth) connections, and it would be obvious to support both

for the same device. See EX1002 (Mohapatra Decl.) ¶¶ 73-74.

Unified Patents Inc. v. Blitzsafe of Texas, LLC, IPR2016-00118, Paper 1 (PTAB Oct. 30, 2015)

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Transcript of Unified Patents Inc. v. Blitzsafe of Texas, LLC, IPR2016-00118, Paper 1 (PTAB Oct. 30, 2015)