UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`Patent No. 6,738,697
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2013-00412
`__________________________________________________________________
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`TABLE OF CONTENTS
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`I.  MANDATORY NOTICES (37 C.F.R. § 42.8) ..............................................1 
`A. 
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .............................................. 1 
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) ......................................................... 1 
`C. 
`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4)) ..................... 2 
`
`II. 
`
`PAYMENT OF FEES (37 C.F.R. § 42.103) .................................................. 3 
`
`III.  REQUIREMENTS FOR INTER PARTES REVIEW (37
`C.F.R. § 42.104) .............................................................................................. 3 
`A.  Grounds for Standing (37 C.F.R. § 42.104(a)) .............................................. 3 
`B. 
`Identification of Challenge (37 C.F.R. § 42.104(b)) and
`Relief Requested (37 C.F.R. § 42.22(a)(1)) ..................................................... 3 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ............................................. 6 
`
`C. 
`
`IV. 
`
`V. 
`
`SUMMARY OF THE ’697 PATENT .......................................................... 8 
`A. 
`Background of the ’697 Patent ........................................................................ 8 
`B. 
`Prosecution History of the ’697 Patent .......................................................... 9 
`
`B. 
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ’697 PATENT IS
`UNPATENTABLE ..................................................................................... 12 
`A.  Ground 1: Claims 1, 2, 10, 17, 19-21, 32, 40, 61 are
`Anticipated Under 35 U.S.C. § 102(a) by Fry .............................................. 12 
`Ground 2: Claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61
`are Anticipated Under 35 U.S.C. § 102(b) by Ishihara ............................... 25 
`Ground 3: Claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61
`are Anticipated Under 35 U.S.C. § 102(b) by Asano .................................. 38 
`D.  Ground 4: Claims 5, 18, 26, and 27 of the '697 Patent are
`Obvious Under 35 U.S.C. § 103(a) Over Fry in View of
`Ishihara .............................................................................................................. 49 
`E.  Ground 5: Claims 5, 18, 26, and 27 of the ’697 Patent are
`Obvious Under 35 U.S.C. § 103(a) Over Fry in View of
`Asano ................................................................................................................. 53 
`
`C. 
`
`-ii-
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`F. 
`
`Ground 6: Claims 19, 20 and 40 of the '697 Patent are
`obvious under 35 U.S.C. § 103(a) over Ishihara in View of
`Fry ...................................................................................................................... 54 
`G.  Ground 7: Claims 19, 20 and 40 of the '697 Patent are
`Obvious Under 35 U.S.C. § 103(a) Over Asano in View of
`Fry ...................................................................................................................... 57 
`
`VI.  CONCLUSION .......................................................................................... 59 
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`-iii-
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`Exhibit 1001
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`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`Exhibit 1006
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`Exhibit 1007
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`Exhibit 1008
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`EXHIBITS
`
`U.S. Patent No. 6,738,697 to Breed
`
`Fry, “Diesel Locomotive Reliability Improvements by
`System Monitoring,” Proceedings of the Institution of
`Mech. Engineers, Part F: Journal of Rail and Rapid Transit
`
`Japanese Unexamined Patent Application Publication JP
`H01-197145 to Ishihara et al.
`
`English translation of Japanese Unexamined Patent
`Application Publication JP H01-197145 to Ishihara et al.
`and associated Affidavit attesting to the accuracy of the
`translation
`
`U.S. Patent No. 5,157,610 to Asano et al.
`
`
`
`File History of U.S. Patent No. 6,738,697 to Breed
`
`American Vehicular Sciences LLC’s Infringement
`Contentions, American Vehicular Sciences LLC v. Toyota Motor
`Corp. et al., No. 6:12-CV-405 (E.D. Tex.), Jan. 18, 2013
`
`Expert Declaration of Scott Andrews
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`-iv-
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. Part 42, real party in interest,
`
`Toyota Motor Corporation (“Toyota” or “Petitioner”) respectfully requests inter partes
`
`review of claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697
`
`(“the ’697 patent”), filed on July 3, 2002, and issued on May 18, 2004, to David S.
`
`BREED, and currently assigned to American Vehicular Sciences LLC (“AVS” or “the
`
`Patent Owner”) according to the U.S. Patent and Trademark Office (“the US PTO”)
`
`assignment records. There is a reasonable likelihood that Petitioner will prevail with
`
`respect to at least one claim challenged in this Petition.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner, Toyota, is the real party-in-interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ’697 patent has been asserted by the Patent Owner in the following
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`litigations in the U.S. District Court for the Eastern District of Texas: American
`
`Vehicular Sciences LLC v. Toyota Motor Corp. et al., No. 6:12-CV-405, filed Jun. 25, 2012
`
`(hereinafter, “AVS 405 Litigation”); American Vehicular Sciences LLC v. BMW Grp.
`
`A/K/A BMW AG et al., No. 6:12-CV-412, filed Jun. 25, 2012; American Vehicular
`
`Sciences LLC v. Hyundai Motor Co. et al., No. 6:12-CV-776, filed Oct. 15, 2012; American
`
`Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-CV-148, filed Feb. 13, 2013;
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`American Vehicular Sciences LLC v. American Honda Motor Co., Inc. et al., No. 6:13-CV-
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`-1-
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`226, filed Mar. 8, 2013; and American Vehicular Sciences LLC v. Mercedes-Benz U.S. Intl.,
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`Inc., No. 6:13-CV-310, filed Apr. 3, 2013. Petitioner is a named defendant in the AVS
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`405 Litigation. The earliest that any of the defendants in the AVS 405 Litigation were
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`served is July 20, 2012. Petitioner is not aware of any other litigations involving the
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`’697 patent. Petitioner is not aware of any pending administrative matter that would
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`affect, or be affected by, a decision in this proceeding. This Petition is also being filed
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`simultaneously with IPR2013-00413, -00414, -00415, -00416, and -00417. One of
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`these petitions, IPR2013-00413, also relates to the ’697 patent. The prior art
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`references in that petition are directed to vehicles that transmit emergency messages,
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`while the prior art references in the present petition relate to vehicles that transmit
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`diagnostic codes and fault messages. While the other petitions do not address the
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`’697 patent, they relate to patents that were asserted along with the ’697 patent in the
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`AVS 405 Litigation.
`
`C.
`Lead Counsel:
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`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`
`A. Antony Pfeffer (Reg. No. 43,857)
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`Back-up Counsel: Thomas R. Makin (pro hac to be requested upon authorization)
`
`Petitioner requests authorization to file a motion for Thomas R. Makin to
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`appear pro hac vice as backup counsel. Mr. Makin is a litigation attorney experienced in
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`patent cases, and is admitted to practice law in New York, and in several United
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`States District Courts and Courts of Appeal. Mr. Makin has an established familiarity
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`with the subject matter at issue and represents Petitioner as a defendant in the related
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`AVS 405 Litigation, identified above.
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`Electronic Service Information: ptab@kenyon.com and apfeffer@kenyon.com
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`Post and Delivery: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004
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`Telephone: 212-425-7200 Facsimile: 212-425-5288
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`II.
`
`
`PAYMENT OF FEES (37 C.F.R. § 42.103)
`
`The Petitioner authorizes the Patent and Trademark Office to charge Deposit
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`Account No. 11-0600 for the fees set in 37 C.F.R. § 42.15(a) for this Petition for Inter
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`Partes Review, and further authorizes payment for any additional fees to be charged to
`
`this Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. §
`42.104)
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioner certifies that the patent for which review is sought, the ’697 patent
`
`
`
`(Ex. 1001), is available for inter partes review and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the patent’s claims on the
`
`grounds identified in this petition.
`
`B.
`
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
`
`
`
`Petitioner requests inter partes review of and challenges claims 1, 2, 5, 10, 17-21,
`
`26, 27, 32, 40, and 61 of the ’697 patent on the grounds set forth in the table below,
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`and requests that each of the claims be found unpatentable. Cancellation of the
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`claims is requested. This petition explains in detail the reasons why claims 1, 2, 5, 10,
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`-3-
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`17-21, 26, 27, 32, 40, and 61 are unpatentable under the relevant statutory grounds,
`
`and includes an identification of where each element is found in the prior art, and the
`
`relevance of each of the prior art references. Detailed claim charts are also provided,
`
`and additional explanation and support for each ground of challenge is set forth in
`
`the Declaration of Scott Andrews (Ex. 1008).
`
`Ground
`
`’697 Claims
`
`Basis for Challenge
`
`Ground 1 Claims 1, 2, 10,
`
`Anticipated under 35 U.S.C. § 102(a) by Fry,
`
`17, 19-21, 32, 40,
`
`“Diesel Locomotive Reliability Improvements by
`
`and 61
`
`System Monitoring,” Proceedings of the Institution
`
`of Mechanical Engineers, Part F: Journal of Rail
`
`and Rapid Transit, Vol. 209, Jan. 1, 1995 (“Fry”)
`
`(Ex. 1002)1
`
`Ground 2 Claims 1, 2, 5, 10,
`
`Anticipated under 35 U.S.C. § 102(b) by Japanese
`
`17, 18, 21, 26, 27,
`
`Unexamined Patent Application Publication JP
`
`32, and 61
`
`H01-197145 to Ishihara et al. (“Ishihara”) (Exs.
`
`1003 and 1004 (English translation))
`
`Ground 3 Claims 1, 2, 5, 10,
`
`Anticipated under 35 U.S.C. § 102(b) over U.S.
`
`17, 18, 21, 26, 27,
`
`Patent No. 5,157,610 to Asano et al. (“Asano”) (Ex.
`
`32, and 61
`
`1005)
`
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`1 The abstract of Fry is appended as the final page of Ex. 1002.
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`-4-
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`Ground 4 Claims 5, 18, 26,
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`Obvious under 35 U.S.C. § 103(a) over Fry in view
`
`and 27
`
`of Ishihara
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`Ground 5 Claims 5, 18, 26,
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`Obvious under 35 U.S.C. § 103(a) over Fry in view
`
`and 27
`
`of Asano
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`Ground 6 Claims 19, 20, and
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`Obvious under 35 U.S.C. § 103(a) over Ishihara in
`
`40
`
`view of Fry
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`Ground 7 Claims 19, 20, and
`
`Obvious under 35 U.S.C. § 103(a) over Asano in
`
`40
`
`view of Fry
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`The ’697 patent (Ex. 1001) is identified as a continuation-in-part of a large
`
`family and chain of applications, the earliest of which is U.S. Patent App. No.
`
`08/476,077, which was filed June 7, 1995 and issued as U.S. Patent No. 5,809,437.2
`
`Fry (Ex. 1002) published at least by Jan. 1, 1995, and therefore qualifies as prior art
`
`
`2 Claims 19, 20, and 40 of the ’697 patent have, at best, an effective filing date of
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`Jun. 19, 2002, the filing date of U.S. Patent Appl. No. 10/174,709, now U.S. Patent
`
`No. 6,735,506. None of the earlier applications referenced by the ’697 patent disclose
`
`or make any reference to transmitting GPS or location information, as required by
`
`these claims. In fact, in AVS has admitted this in the AVS 405 Litigation. (See Ex.
`
`1007, AVS’ Infringement Contentions for the ’697 Patent in the AVS 405 Litigation,
`
`Jan. 18, 2013, p. 2.)
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`-5-
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`

`

`
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`under 35 U.S.C. § 102(a). Ishihara (Exs. 1003 and 1004) published on Dec. 17, 1993,
`
`and therefore qualifies as prior art under 35 U.S.C. § 102(b). Asano (Ex. 1005) issued
`
`on Oct. 20, 1992, and therefore qualifies as prior art under 35 U.S.C. § 102(b).
`
`Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`C.
`A claim subject to inter partes review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” (37
`
`C.F.R. § 42.100(b).) The words of the claim are to be given their plain meaning
`
`unless it is inconsistent with the specification. (In re Zletz, 893 F.2d 319, 321 (Fed.
`
`Cir. 1989).) As summarized in the table below, the ’697 patent provides express
`
`definitions for 5 claim terms:
`
`Claim Term
`
`’697 Definition
`
`“component” (claims 1,
`
`“any part or assembly of parts which is mounted to or a
`
`21)
`
`part of a motor vehicle and which is capable of emitting a
`
`signal representative of its operating state” (See ’697
`
`patent, col. 30, l. 58 to col. 31, l. 22; see also id. at col. 32, ll.
`
`12-14 for express definition of “signal” (“any time varying
`
`output from a component including electrical, acoustic,
`
`thermal, or electromagnetic radiation, or mechanical
`
`vibration”).)
`
`“part” (claim 17)
`
`“any component, sensor, system or subsystem of the
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`-6-
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`
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`vehicle such as the steering system, braking system,
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`throttle system, navigation system, airbag system, seatbelt
`
`retractor, air bag inflation valve, air bag inflation
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`controller and airbag vent valve, as well as those listed
`
`below in the definitions of ‘component’ and ‘sensor’” (See
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`’697 patent, col. 10, ll. 51-57.)
`
`“sensor” (claims 2, 10,
`
`“any measuring or sensing device mounted on a vehicle or
`
`32)
`
`any of its components including new sensors mounted in
`
`conjunction with the diagnostic module in accordance
`
`with the invention.” (See ’697 patent, col. 31, l. 23 to col.
`
`32, l. 11.)
`
`“sensor system[]” (claim
`
`“any of the sensors listed below in the definition of
`
`10)
`
`‘sensor’ as well as any type of component or assembly of
`
`components which detect, sense or measure something.”
`
`(See ’697 patent, col. 10, ll. 58-61; see also id. at col. 31, l. 30
`
`to col. 32, l. 11 for a list of sensors.)
`
`“state of the vehicle”
`
`a “diagnosis of the condition of the vehicle with respect to
`
`(claims 1, 21)
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`its stability and proper running and operating condition.”
`
`(See ’697 patent, col. 10, ll. 29-32.)
`
`Beyond these terms, under the broadest reasonable claim construction
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`-7-
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`standard, there is no indication in the ’697 patent that any other terms in the claims
`
`should be given anything other than their plain and ordinary meaning.
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`IV. SUMMARY OF THE ’697 PATENT
`A.
`The ’697 patent is directed to a diagnostic system and method on a vehicle that
`
`Background of the ’697 Patent
`
`diagnoses the state of the vehicle or a component thereof, generates an output
`
`representative of the diagnosis, and then employs a communications device to
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`automatically connect to a remote facility in order to wirelessly transfer the output to
`
`the remote facility. (See, e.g., Ex. 1001, ’697 patent, col. 1, ll. 37-42; col. 2, ll. 16-37;
`
`col. 11, ll. 26-67; col. 13, ll. 34-42; col. 13, ll. 54-58; col. 14, ll. 14-33; col. 14, l. 66 to
`
`col. 15, l. 7.)
`
`According to the ’697 patent, the diagnosed “state of the vehicle” is a
`
`“diagnosis of the condition of the vehicle with respect to its stability and proper
`
`running and operating condition.” (See id., col. 10, ll. 29-32.) More particularly, the
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`diagnostic system and method is able to detect various abnormalities in the operation
`
`of the vehicle as a whole, including “excessive angular inclination,” “a crash,” or
`
`“skidding.” (See id., col. 10, ll. 32-41; see also id., col. 14, ll. 34-37.) The system and
`
`method is also able to determine if “one of the parts of the vehicle, e.g., a component,
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`system or subsystem, is operating abnormally.” (See id. at col. 10, ll. 32-41.) The
`
`patent lists various examples of “components” that can be monitored for abnormal
`
`operation, including the engine, brakes, tires, water pump, alternator, shock absorber,
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`-8-
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`

`
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`wheel mounting assembly, radiator, battery, oil pump, fuel pump, vehicle suspension,
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`and the like. (See id. at col. 30, l. 58 to col. 31, l. 22.)
`
`In some embodiments, the ’697 patent’s diagnostic system includes a processor
`
`and various sensors. (See id. at col. 13, ll. 8-14.) The ’697 patent provides examples of
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`sensors that may be employed, including an “airbag crash sensor,” “accelerometer,”
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`“stress or strain sensor,” “pressure sensor,” “voltmeter,” “coolant thermometer,” “oil
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`pressure sensor,” “air flow meter,” “fuel gauge,” “coolant level sensor,” among other
`
`things. (See id., col. 31, l. 23 to col. 32, l. 11.)
`
`The system also includes a communications device, such as a “cellular
`
`telephone system” or “satellite” system that allows the output of the diagnostic
`
`system to be automatically transmitted to a remote location. (See id. at col. 13, ll. 34-
`
`42.) The remote location may be, for example, a “repair facility” or “emergency
`
`response station.” (Id. at col. 1, ll. 53-60.)
`
`In some embodiments, the diagnosis may be indicated to the driver either
`
`through a display or a warning system. (See id. at col. 13, ll. 24-33; col. 14, ll. 39-44;
`
`col. 38, ll. 51-59; col. 41, ll. 9-19; col. 53, ll. 23-27; col. 82, l. 64 – col. 83, l. 1; Fig. 8.)
`
`In other embodiments, the system includes a location determining system, such as a
`
`GPS system; and vehicle location information can then be transmitted to the remote
`
`facility along with the diagnostic information. (Id. at col. 13, ll. 54-58.)
`
`Prosecution History of the ’697 Patent
`
`B.
`U.S. Pat. App. No. 10/188,673, which issued as the ’697 Patent, was filed on
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`-9-
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`Jul. 3, 2002. (See generally Ex. 1006, ’697 Patent File History.) On Sep. 30, 2003, the
`
`examiner rejected certain claims, including claim 1, under 35 U.S.C. § 102(b) as being
`
`anticipated by U.S. Pat. No. 5,056,023 to Abe (“Abe”). According to the examiner,
`
`Abe discloses “a diagnostic system . . . arranged to diagnose the state of the vehicle
`
`and generate an output indicative thereof”; “a communications device . . . coupled to
`
`the system and arranged to transmit . . . the output”; “a plurality of sensors . . .
`
`mounted in various locations”; “a pattern recognition algorithm”; and “a memory
`
`unit . . . coupled to the system and the communication device.” (Id. at 334.) The
`
`examiner also rejected certain claims under 35 U.S.C. § 103(a) as being unpatentable
`
`over Abe in view of U.S. Pat. Pub. No. 2002/0103622 to Burge (“Burge”). The
`
`Examiner explained that Burge is in the field of vehicle monitoring (the same field as
`
`Abe), and discloses: “a cellular telephone”; “sensing an occupant of the vehicle and
`
`selecting the sensor from a plurality of sensors”; “GPS technology”; “transmission of
`
`the output to a remote location . . . whether the vehicle is stable or is about to
`
`rollover”; and “wireless communication via the Internet or a host computer.” (Id. at
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`334-335.) Finally, the examiner rejected certain claims under 35 U.S.C. § 103(a) as
`
`being unpatentable over Abe and Burge further in view of U.S. Pat. No. 5,581,464 to
`
`Woll et al. (“Woll”). Among other things, Woll discloses “a display . . . arranged in a
`
`vehicle.” (Id. at 336.)
`
`
`
`In response, the applicant added several limitations to claim 1, as indicated
`
`below:
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`1. A vehicle, comprising:
`a diagnostic system arranged on the vehicle to diagnose the state
`of the vehicle or the state of a component of the vehicle and generate an
`output indicative or representative thereof; and
`a communications device coupled to said diagnostic system and
`arranged to automatically establish a communications channel between
`the vehicle and a remote facility without manual intervention and
`wirelessly transmit the output of said diagnostic system to the remote
`facility.
`
`(Id. at 342.) The applicant also amended several other claims. (See id. at 342-344, 347,
`
`349.)
`
`
`
`The applicant then went on to argue that the claimed subject matter—as
`
`amended—was different from the prior art. (See id. at 352-354.) According to the
`
`applicant, Abe does not perform diagnosis on the vehicle. (See id. at 352.) Rather, it
`
`employs an off-board diagnosis unit. (See id.) Thus, instead of diagnosing the
`
`operating condition of the vehicle using a diagnostic system on the vehicle and then
`
`transmitting that diagnosis to a remote facility as the ’697 patent requires, the
`
`applicant argued that the Abe system simply transmits sensor data from the vehicle to
`
`a remote facility. (See id.) Also, the applicant argued that the Abe system is further
`
`unlike the claimed subject matter because it requires the vehicle to be brought to the
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`dealer before data can be transmitted, while the ’697 patent’s system and method
`
`allows for remote communications. (See id.) The applicant argued that Burge is
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`
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`distinguishable for similar reasons. In particular, according to the applicant, it does
`
`not disclose processing sensor data on a vehicle to obtain a diagnosis of the vehicle
`
`before transmitting to a remote facility, but instead only transmits data, without
`
`processing, from on-board sensors to the remote facility. (See id. at 353.)
`
`The claims were then allowed. (See id. at 356.)
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’697 PATENT IS UNPATENTABLE
`A. Ground 1: Claims 1, 2, 10, 17, 19-21, 32, 40, 61 are Anticipated
`Under 35 U.S.C. § 102(a) by Fry
`
`
`
`Claims 1, 2, 10, 17, 19-21, 32, 40, and 61 of the ’697 patent are anticipated
`
`under 35 U.S.C. § 102(a) by Fry (Ex. 1002). Fry was not before or considered by the
`
`Examiner during prosecution of the ’697 patent.
`
`
`
`As detailed in the discussion and claim charts below, Fry discloses all the
`
`limitations of claims 1, 2, 10, 17, 19-21, 32, 40, and 61. Specifically, Fry discloses a
`
`train with an on-board diagnostic system that includes “a computer that continuously
`
`monitors the condition of the vehicle through sensors at key points.” (Ex. 1002, Fry,
`
`Abstract.) This is the same subject matter that is set forth in and claimed by the ’697
`
`patent.
`
`
`
`According to Fry, the “on-board computer” monitors data from the various
`
`sensors, and uses both diagnostics and prognostics with respect to the train’s
`
`components. (Id. at pp. 5-7, § 3.) The diagnostics are able to “diagnose[] down to the
`
`level of ‘replaceable unit’ or the level of action required to allow the vehicle to
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`continue running,” (id. at p. 4, § 2.4); and, the prognostics are able to “make
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`predictions of the remaining time to failure,” (id. at p. 5, § 2.4). Various train
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`components are monitored for failure, including the engine, battery, fuel level, coolant
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`system, oil system, and the monitoring system itself. (Id. at pp. 7-9, § 3.2.) Fry’s on-
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`board system also includes a “[c]ellular radio telephone and modem” that facilitates
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`wireless transmission of fault messages between the train and a remotely located
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`“owning business.” (Id. at Abstract; p. 4, § 2.3; p. 6, § 3.1.2.) Fault messages can be
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`sent from the train “immediately” after a fault has been diagnosed. (Id. at p. 5, § 2.4.)
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`Further, Fry’s system includes a “GPS satellite navigator” to locate the vehicle. (Id. at
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`pp. 5-6, § 3.1.) Vehicle location information is relayed along with the fault messages.
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`(Id. at p. 5, § 3.1; p. 6, § 3.2; Fig. 5.) Fry’s system is also able to inform the “driver or
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`train crew” of current or impending vehicle component faults. (Id. at p. 4, § 2.3.)
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`Fig. 4 provides an overview of Fry’s system. As shown, “[d]ata analysis”
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`“[h]ardware” and “[s]oftware” receives input from a variety of vehicle “[s]ensors.”
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`(See also id. at pp. 5-6, §§ 3.1-3.2.) This sensor data is then utilized by various
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`programs to detect and predict vehicle component failure. (See id. at pp. 5-9, §§ 3.1-
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`3.2.) If a failure is detected or predicted, a “[f]ault message file[]” is generated and
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`relayed to “[c]ommunications” hardware. (Id. at Fig. 4; pp. 6-7, § 3.2.) From there,
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`the “[f]ault message files” are wirelessly transmitted to a remote site by a “CDLC
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`modem” (see also id. at pp. 5-6, § 3.1):
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`In view of the above, Fry discloses a vehicle (a train) with a diagnostic system
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`(including an on-board computer that receives and processes signals from various
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`sensors) that diagnoses the state of the vehicle or the state of a component of the
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`vehicle (including the failure, or predicted failure, of various train components). The
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`diagnostic system generates an output (fault messages), and automatically
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`communicates that output to a remote facility (the owning business) using a wireless
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`communication system (a cellular telephone and modem). This is all claim 1 of the
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`’697 patent requires under the broadest reasonable claim construction. Fry discloses
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`all the elements of method claims 21 and 61 for the same reasons.
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`
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`As noted above, Fry also expressly describes a diagnostic system that employs
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`multiple sensors and a processor; therefore, it discloses all the elements of dependent
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`claims 2, 10, and 32 of the ’697 patent. And, because Fry’s diagnostic system includes
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`a processor that controls at least a communications device, Fry discloses the elements
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`of claim 17. Last, since Fry teaches the use of GPS technology to determine vehicle
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`location, and the transmission of the GPS-based location to the remote site along
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`with the diagnosis information, Fry discloses the additional elements required by
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`dependent claims 19, 20 and 40.
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`
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`Claim charts identifying specific portions of Fry that disclose all of the
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`limitations of claims 1, 2, 10, 17, 19-21, 32, 40, and 61 of the ’697 patent are provided
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`below.
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`’697 Patent – Claim 1
`1. A vehicle,
`comprising:
`
`a diagnostic system
`arranged on the
`vehicle to diagnose the
`state of the vehicle or
`the state of a
`component of the
`vehicle and generate
`an output indicative or
`representative thereof;
`and
`
`Fry (Ex. 1002)
`See, e.g., Abstract (“System monitoring for reliability (SMR)
`involves monitoring critical parts of a vehicle and informing
`the owning business of an impending fault. Diesel
`locomotives offer the largest opportunity for such systems
`and British Rail Research has a developed a system designed
`to improve Class 47 locomotive reliability.”);
`p. 11, § 6 (“[T]he system described here … can be adapted
`for use with other locomotive types.”).
`See, e.g., Abstract (“System monitoring for reliability (SMR)
`involves monitoring critical parts of a vehicle and informing
`the owning business of an impending fault. … The vehicle
`mounted equipment comprises a computer that continuously
`monitors the condition of the vehicle through sensors at key
`points. … The key elements in the success of the system are
`the automated analysis of data on-board the vehicle and its
`ability to call for help ahead of the occurrence of service
`failures.”);
`p. 4, § 2.3 (“An emphasis on reliability improvement requires
`that in order to achieve a fast response to developing faults,
`the analysis of data must be automated and done on-board
`the vehicle; the vehicle must also be able to call for help. It
`is this requirement for a high degree of vehicle system
`‘intelligence’, in conjunction with a communications system
`where the vehicle can call for help . . . that is the key to
`successful SMR.”);
`p. 4, § 2.4 (“[F]aults in equipment need only be diagnosed
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`down to the level of ‘replaceable unit’ or the level of action
`required to allow the vehicle to continue running, such as
`‘top up with coolant’. Diagnosis to this depth is particularly
`important in the case of a vehicle reporting a developing
`fault but a long way from a repair depot. Should the vehicle
`be brought back to the depot, repaired at an outstation,
`repaired by a mobile maintenance team or left for a while? If
`the vehicle does need to return to depot, diagnosis to
`replaceable unit level allows an indication beforehand of
`what spares and depot resources are required…. Similarly, if
`a mobile maintenance team needs to be sent to the vehicle
`they will know what equipment to take with them.”);
`p. 5, § 3.1 (“The vehicle-mounted equipment comprises a
`computer that continuously monitors the condition of the
`vehicle through sensors at key points. … Also fitted are a
`number of transducers mounted directly on to existing
`components.”);
`pp. 6-7, § 3.2 (“The program ‘logger’ reads all the sensors …
`and writes the data to a global buffer. … The analysis
`programs for individual systems then simply extract data
`from this buffer when their own criteria for analysis are met.
`… If the results of the analysis require a message to be sent
`from the vehicle this is instigated by creating a file containing
`the message.”);
`p. 7, § 3.2 (“The complexity of on-board analysis varies with
`the parameter or vehicle system in question. There are a
`number of factors that lead to the task being more complex
`than is initially apparent, such as the effects of varying duty,
`the need to normalize for ambient conditions and the
`requirement to provide prognostic information. The use of
`out-of-limit alarms is in general too simplistic for many
`parameters and will not provide the level of decision support
`needed if the system is to succeed. It is far more useful to
`know that failure is likely at a particular time as this then
`allows the controller to make a decision based upon the
`remaining duty requirement and the best point of repair. In
`other words the primary requirement is not one of simple
`diagnostics but of prognostics.”);
`pp. 7-9, §§ 3.2.2-3.2.7 (The system can engage in “[c]oolant
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`a communications
`device coupled to said
`diagnostic system and
`arranged to
`automatically establish
`a communications
`channel between the
`vehicle and a remote
`facility without manual
`intervention and
`wirelessly transmit the
`output of said
`diagnostic system to
`the remote facility.
`
`monitoring,” “[f]uel monitoring,” “[b]attery monitoring,”
`“[o]il monitoring,” “[e]ngine monitoring,” and “[s]ystem self-
`monitoring.”).
`See also Fig. 3 (depicting “monitoring equipment” with a
`“computer” that receives input from various sources on the
`vehicle); Fig. 4 (showing a system that receives data from
`“[s]ensors,” engages in “[d]ata analysis,” and generates
`“[f]ault message files” as a result).
`See, e.g., Abstract (“System monitoring for reliability (SMR)
`involves monitoring critical parts of a vehicle and informing
`the owning business of an impending fault. … The vehicle
`mounted equipment comprises a computer that continuously
`monitors the condition of the vehicle through sensors at key
`points. The computer is connected to a radio telephone and
`modem and a GPS satellite navigator. The key elements in
`the success of the system are the automated analysis of data
`on-board the vehicle and its ability to call for help ahead of
`the occurrence of service failures.”);
`p. 4, § 2.3 (“An emphasis on reliability improvement requires
`that in order to achieve a fast response to developing faults,
`the analysis of data must be automated and done on-board
`the vehicle; the vehicle must also be able to call for help.”);
`p. 4, § 2.3 (“The provision of a continuous communications
`link between the owning business and an ‘intelligent vehicle’
`allows information on condition to be provided on
`demand.”);
`p. 5, § 2.4 (“Information from the system must be sent to
`the business maintenance controllers. They respond to calls
`from outstations reporting problems with vehicles and
`arrange repair or a replacement vehicle. For fault diagnosis,
`messages should be sent from the vehicle immediately, but
`this is not necessarily the case when prognosis is involved.
`… In these circumstances the approach has been to define a
`failure limit and make predictions of the remaining time to
`failure. Messages can then be generated a set time before
`failure is estimated.”);
`p. 6, § 3.1.2 (“The computer is connected to a Racal
`Vodafone cellular radio telephone and modem. … The
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`modem is configured for auto-dial and auto-answer allowing
`the vehicle to call out or be called at any time.”)