PTAB

IPR2018-01204

BMW of North America, LLC v. Blitzsafe Texas, LLC

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1. Case Identification

2. Patent Overview

  • Title: Audio Device Integration System
  • Brief Description: The ’786 patent discloses a system for integrating after-market audio devices, such as portable CD or MP3 players, with a vehicle's existing car stereo. The system uses an interface with a pre-programmed microcontroller to enable communication, including the translation of incompatible control commands and the transmission of audio signals, between the stereo and the external device.

3. Grounds for Unpatentability

Ground 1: Claims 92-94, 97, and 98 are obvious over Herley in view of Ido and Lutter.

  • Prior Art Relied Upon: Herley (Application # 2005/0262528), Ido (European Application # EP 0950570), and Lutter (Application # 2002/0196134).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the primary reference, Herley, discloses the core elements of independent claim 92: an "audio content delivery system" for an automobile that comprises a car stereo (user interface and sound system), a portable audio device (external media source like an MP3 or CD player), and an interface (controller and high-speed USB interface) connecting them. However, Petitioner argued Herley does not explicitly teach two key functions recited in claim 92's means-plus-function limitations: generating a "device presence signal" and translating "incompatible" control commands.
    • To supply the "device presence signal," Petitioner relied on Lutter. Lutter teaches an in-vehicle audio manager that detects connected wired or wireless audio sources and causes the car stereo's graphical user interface (GUI) to display icons representing the detected devices. Petitioner argued that this display of an icon upon connection functions as the claimed "device presence signal," which maintains the stereo in an operational state by making the source selectable. This argument was supported by pointing to the Patent Owner’s own broad interpretation of this term in related litigation, where it contended that a USB icon appearing on-screen met the limitation.
    • To supply the translation of incompatible commands, Petitioner relied on Ido. Ido discloses an automotive system where external devices (e.g., a CD auto-changer) connect via USB, while the head unit uses a different local bus protocol (PCI bus). Ido explicitly teaches that data, including control commands, undergoes "form conversion" to be changed from the PCI bus format to the USB format, and vice versa. Petitioner argued this directly teaches the claimed function of receiving a control command in a format incompatible with the portable device (e.g., a non-USB command from the car stereo), processing it into a compatible format (USB), and transmitting it.
    • The dependent claims were also allegedly taught. Claims 93 (portable CD player) and 94 (portable MP3 player) were met by Herley's disclosure of these exact device types. Claims 97 and 98, which require a bus connection like USB, were met by Herley's disclosure of a high-speed interface that can be a USB connection and Ido's teaching of USB-based systems.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Herley with Lutter to improve Herley's basic system with a known, user-friendly feature: visually indicating on a GUI which devices are connected and available. This was argued to be a predictable design choice to enhance usability. A POSITA would combine Herley with Ido because Ido provides a known solution (protocol conversion) to the fundamental problem of integrating devices that use different communication standards, which is the central goal of the system in Herley. This modification would enable control of the external device using the car stereo's native controls, a clear goal of such an integration system.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying conventional techniques (Lutter's device detection/display, Ido's protocol conversion) to a known system (Herley's integration framework) to achieve predictable results and improved functionality.

4. Key Claim Construction Positions

  • Petitioner stated it adopted the claim constructions previously established by the Board in a prior IPR for the ’786 patent (IPR2016-00421) for key terms including "interface" and "portable."
  • Critically, Petitioner also leveraged the Patent Owner's own claim scope positions and proposed constructions from related district court litigation. For example, Petitioner highlighted that the Patent Owner had asserted that the mere display of a "USB graphic" on a car stereo screen satisfied the "device presence signal" limitation. Petitioner used this interpretation to bolster its argument that Lutter's disclosure of displaying device icons met the claim element.
  • For the means-plus-function terms in claim 92, Petitioner adopted the corresponding structures proposed by the Patent Owner in litigation. It then argued that the combination of Herley, Ido, and Lutter disclosed equivalent structures that performed the identical functions, thereby rendering the claims obvious even under the Patent Owner's own framework.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 92-94, 97, and 98 of the ’786 patent as unpatentable under 35 U.S.C. §103.