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. IPR2013-00413
`__________________________________________________________________
`
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`

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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 
`
`IV. 
`
`V. 
`
`SUMMARY OF THE ’697 PATENT .......................................................... 7 
`A. 
`Background of the ’697 Patent ........................................................................ 7 
`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 ............... 11 
`A.  Ground 1: Claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 are
`Anticipated Under 35 U.S.C. §§ 102(a) and 102(e) by Simms .................. 11 
`Ground 2: Claims 1, 2, 5, 10, 17, 18, 19, 21, 26, 27, 32, 40, and 61
`are Anticipated Under 35 U.S.C. § 102(b) by DiLullo ............................... 32 
`Ground 3: Claims 5, 18, 26, and 27 are Obvious Under 35 U.S.C.
`§ 103(a) Over Simms in View of DiLullo .................................................... 48 
`D.  Ground 4: Claim 20 is Obvious Under 35 U.S.C. § 103(a) Over
`DiLullo in View of Simms .............................................................................. 53 
`
`C. 
`
`VI.  CONCLUSION .......................................................................................... 55 
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`-ii-
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`Exhibit 1101
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`Exhibit 1102
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`Exhibit 1103
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`Exhibit 1104
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`Exhibit 1105
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`
`Exhibit 1106
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`EXHIBITS
`
`U.S. Patent No. 6,738,697 to Breed
`
`U.S. Patent No. 5,334,974 to Simms et al.
`
`U.S. Patent No. 4,897,642 to DiLullo et al.
`
`File History of U.S. Patent No. 6,738,697 to Breed
`
`American Vehicular Sciences LLC’s Infringement
`Contentions for U.S. Patent No. 6,738,697 to Breed in
`American Vehicular Sciences LLC v. Toyota Motor Corp. et al.,
`No. 6:12-CV-405, Jan. 18, 2013
`
`Expert Declaration of Scott Andrews
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`-iii-
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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
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`Patent Owner”) according to the U.S. Patent and Trademark Office (“the US PTO”)
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`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.
`
`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.
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`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;
`
`American Vehicular Sciences LLC v. American Honda Motor Co., Inc. et al., No. 6:13-CV-
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`226, filed Mar. 8, 2013; and American Vehicular Sciences LLC v. Mercedes-Benz U.S. Intl.,
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`-1-
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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 IPR2013-00412, -00414, -00415, -00416, and -00417. One of
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`these petitions, IPR2013-00412, also relates to the ’697 patent. The prior art
`
`references in that petition are directed to vehicles that transmit diagnostic codes and
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`fault messages, while the prior art references in the present petition relate to vehicles
`
`that transmit emergency messages. While the other petitions do not address the ’697
`
`patent, they relate to patents that were asserted along with the ’697 patent in the 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 States
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`District Courts and Courts of Appeal. Mr. Makin has an established familiarity with
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`the subject matter at issue and represents Petitioner as a defendant in the related AVS
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`405 Litigation, identified above.
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`-2-
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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
`
`
`
`(Exhibit 1101), 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,
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`26, 27, 32, 40, and 61 of the ’697 patent on the grounds set forth in the table below,
`
`and requests that each of the claims be found unpatentable. Cancellation of the
`
`claims is requested. This petition explains in detail the reasons why claims 1, 2, 5, 10,
`
`17-21, 26, 27, 32, 40, and 61 are unpatentable under the relevant statutory grounds,
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`-3-
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`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,
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`and additional explanation and support for each ground of challenge is set forth in the
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`attached Declaration of Scott Andrews (Exhibit 1106).
`
`Ground
`
`’697 Claims
`
`Basis for Challenge
`
`Ground 1 Claims 1, 2, 5, 10,
`
`Anticipated under 35 U.S.C. § 102(a) and § 102(e)
`
`17-21, 26, 27, 32,
`
`by U.S. Patent No. 5,334,974 to Simms et al.
`
`40, 61
`
`(“Simms”) (Ex. 1102)
`
`Ground 2 Claims 1, 2, 5, 10,
`
`Anticipated under 35 U.S.C. § 102(b) by U.S.
`
`17, 18, 19, 21, 26,
`
`Patent No. 4,897,642 to DiLullo et al. (“DiLullo”)
`
`27, 32, 40, 61
`
`(Ex. 1103)
`
`Ground 3 Claims 5, 18, 26,
`
`Obvious under 35 U.S.C. § 103(a) over Simms in
`
`and 27
`
`view of DiLullo
`
`Ground 4 Claim 20
`
`Obvious under 35 U.S.C. § 103(a) over DiLullo in
`
`view of Simms
`
`The ’697 patent (Exhibit 1101) 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. 5,809,437.1
`
`
`1 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
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`-4-
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`
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`Simms (Exhibit 1102) issued on Aug. 2, 1994 and was filed Feb. 6, 1992, and
`
`therefore qualifies as prior art under at least 35 U.S.C. §§ 102(a) and 102(e). DiLullo
`
`(Exhibit 1103) issued on Jan. 30, 1990, and therefore qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`C.
`
`Claim Construction (37 C.F.R. §§ 42.104(b)(3))
`
`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
`
`
`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
`
`Exhibit 1105, 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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`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
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`varying output from a component including electrical,
`
`acoustic,
`
`thermal, or electromagnetic radiation, or
`
`mechanical vibration”).)
`
`“part” (claim 17)
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`“any component, sensor, system or subsystem of the
`
`vehicle such as the steering system, braking system,
`
`throttle system, navigation system, airbag system, seatbelt
`
`retractor, air bag inflation valve, air bag inflation
`
`controller and airbag vent valve, as well as those listed
`
`below in the definitions of ‘component’ and ‘sensor’”
`
`(See ’697 patent, col. 10, ll. 51-57.)
`
`“sensor” (claims 2, 10,
`
`“any measuring or sensing device mounted on a vehicle
`
`32)
`
`or 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.)
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`-6-
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`

`
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`“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”
`
`“diagnosis of the condition of the vehicle with respect to
`
`(claims 1, 21)
`
`its stability and proper running and operating condition.”
`
`(See ’697 patent, col. 10, ll. 29-32.)
`
`Beyond the terms discussed above, under the broadest reasonable claim
`
`construction 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.
`
`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
`
`automatically connect to a remote facility in order to wirelessly transfer the output to
`
`the remote facility. (See, e.g., Ex. 1101, ’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.)
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`-7-
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`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. at 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. at col. 10, ll. 32-41; see also id. at 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,
`
`system or subsystem, is operating abnormally.” (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,
`
`wheel mounting assembly, radiator, battery, oil pump, fuel pump, vehicle suspension,
`
`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
`
`sensors that may be employed, including an “airbag crash sensor,” “accelerometer,”
`
`“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. at 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
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`-8-
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`

`
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`remote location may be, for example, a “repair facility” or “emergency response
`
`station.” (Id. at col. 1, ll. 53-60.)
`
`In other 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).
`
`Additionally, the system can also include 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. Patent App. No. 10/188,673, which issued as the ’697 patent, was filed on
`
`Jul. 3 2002. (See generally Exhibit 1104, ’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. Patent 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. Patent Pub. No. 2002/0103622 to Burge (“Burge”). The
`
`Examiner explained that Burge is in the field of vehicle monitoring (the same field as
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`-9-
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`

`
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`Abe), and discloses “a cellular telephone”; “sensing an occupant of the vehicle and
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`selecting the sensor from a plurality of sensors”; “GPS technology”; “transmission of
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`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. Patent 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:
`
`
`
`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
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`-10-
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`

`
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`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
`
`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
`
`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.)
`
`Thereafter, the claims were 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, 5, 10, 17-21, 26, 27, 32, 40, and 61 are
`Anticipated Under 35 U.S.C. §§ 102(a) and 102(e) by Simms
`
`Claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 are anticipated under 35 U.S.C.
`
`§§ 102(a) and 102(e) by Simms. Simms was not before or considered by the Examiner
`
`during prosecution of the ’697 patent.
`
`As detailed in the discussion and claim charts below, Simms discloses all the
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`-11-
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`

`
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`limitations of claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61. Specifically, Simms
`
`relates to a “fully automatic personal security system” that can be used in connection
`
`with a vehicle. (See, e.g., Exhibit 1102, Simms, Abstract; col. 3, ll. 31-36.) The system
`
`monitors a variety of “remote sensors” to diagnose various vehicle emergencies (such
`
`as a fire, theft, collision, airbag activation, vehicle breakdown, or the like). (Id. at col.
`
`6, ll. 19-30; see also col. 1, ll. 33-34.) This is the same subject matter that is set forth in
`
`and claimed by the ’697 patent.
`
`More particularly, Simms’ system employs a “processor” (or “microcontroller”)
`
`that monitors sensors and “is activated upon occurrence of an alarm condition to …
`
`compose a digital code corresponding to the alarm condition….” (See, e.g., id. at col.
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`4, ll. 4-24.) According to Simms, the sensors that “automatically initiate specific help
`
`requests upon detecting various alarm conditions” can “include smoke or heat
`
`detectors for detecting a fire within the vehicle, a tamper switch or motion detector
`
`for detecting a possible theft of the vehicle, an impact detector for detecting a
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`collision, a sensor for detecting activation of a vehicle air-bag, and any of numerous
`
`other sensor types….” (See, e.g., id. at col. 6, ll. 19-30.) When an emergency is
`
`detected, Simms’ system automatically transmits an emergency message, including a
`
`digital code corresponding to the emergency, from the vehicle to a remotely located
`
`“central dispatch station.” (See, e.g., id. at col. 4, ll. 18-24; col. 7, ll. 23-32.) Depending
`
`on the nature of the diagnosed emergency, the central dispatch facility can then
`
`coordinate a response by the “police,” “fire department,” medical personnel, or a
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`-12-
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`provider of “roadside service.” (Id. at col. 7, ll. 30-36.) The system communicates via
`
`“a cellular telephone or other communication device (such as a communication
`
`satellite) connected to the processor through a first communication circuit which
`
`communicates the digital code to a central dispatch station via the cellular phone.”
`
`(See, e.g., id. at col. 4, ll. 18-23.) Simms further provides that the system can include a
`
`GPS position finder; and, position information can be provided to the remote site as
`
`part of the emergency message. (See, e.g., id. at Abstract; col. 3, ll. 48-54; col. 10, ll. 4-
`
`10; col. 11, ll. 13-41.) Simms’ microcontroller is also connected to an “actuator bank
`
`50,” allowing it to activate the “vehicle horn, illuminate the headlights,” or to control
`
`other vehicle parts—either in response to a detected emergency, or on command
`
`from the central dispatch station. (Id. at col. 9, ll. 34-60.) And, Simms provides for a
`
`vehicle “display … for displaying messages” that is connected to the on-board
`
`microcontroller. (Id. at col. 9, ll. 14-20.)
`
`Various aspects of Simms are shown in the Figures. For instance, Fig. 1
`
`depicts a vehicle, or “mobile unit,” (id. at Fig. 1; see also id. at col. 5, ll. 33-36), that is
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`located utilizing a plurality of “satellites,” (id. at Fig. 1; see also id. at col. 3, ll. 49-54),
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`and wirelessly transmits various data to a “central station,” (id. at Fig. 1; see also id. at
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`col. 5, ll. 25-30). Fig. 42 provides additional details; as shown, the system includes a
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`The gray highlighting applied to this and the other Figures herein has been
`2
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`added for emphasis.
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`“microcontroller” that receives input from “remote sensors” and then generates
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`various outputs that are relayed to a “transmitter.” (Id. at Fig. 4; see also id. at col. 8, ll.
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`16-25.) The system also includes a “[p]osition locator,” (id. at col. 10, ll. 4-10), which
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`also relays information to the “transmitter,” (id. at col. 10, ll. 19-30), along with a
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`“display device” and “actuator bank,” which are both also connected to the
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`“microcontroller,” (id. at col. 9, ll. 6-10):
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`
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`Fig. 6A provides other details regarding the process followed by Simms’
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`system. As shown, the “microcontroller” first “poll[s] remote sensors” to determine
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`if a “personal security situation” exists, (see also id. at col. 11, ll. 65-68); and, if such a
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`situation exists, the “microcontroller” proceeds to “send personal security message”
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`to the “central dispatch station” using a “cellular telephone,” (see also id. at col. 12, ll.
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`7-29). As shown in the flowchart, the system “poll[s] position locator 70 for new
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`current coordinate data” and includes this data as part of the “personal security
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`message” just before it “transmit[s] personal security data,” (see also id. at col. 12, ll. 12-
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`29):
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`In view of the above, Simms discloses a vehicle (an automobile) with a
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`diagnostic system (a “processor” or “microcontroller” that monitors signals from
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`various sensors) that diagnoses the state of the vehicle or a component thereof
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`-15-
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`(including “personal security situations” and vehicle emergencies, such as fire, theft,
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`collision, or airbag activation). The diagnostic system generates an output (a digital
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`code and security message corresponding to the emergency), and automatically
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`communicates that output to a remote facility (a central emergency dispatch facility)
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`using a wireless communication system (a cellular or satellite system). This is all claim
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`1 of the ’697 patent requires under the broadest reasonable claim construction.
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`Simms discloses all the elements of method claims 21 and 61 for the same reasons.
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`
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`As noted above, Simms also expressly describes a diagnostic system that utilizes
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`a variety of different sensors to monitor vehicle components, and a processor that
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`receives input from those sensors in order to diagnose vehicle emergencies. Thus, it
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`discloses all the elements of dependent claims 2, 10, and 32 of the ’697 patent. And,
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`since Simms’s diagnostic system includes a processor that controls an in-vehicle
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`communication system, a display and various vehicle components, either directly (the
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`communication system) or via additional input from a remote facility (the display and
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`the lights, horn, etc.), Simms also discloses the elements of claim 17. The display
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`employed by Simms further satisfies the elements of claims 5, 18, 26, and 27. Last,
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`because Simms teaches the use of GPS technology to determine vehicle location, and
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`the transmission of the location to the remote site, it also discloses the elements of
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`claims 19, 20 and 40.
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`
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`Claim charts identifying the specific portions of Simms that disclose all of the
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`limitations of claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 of the ’697 patent are
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`provided 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
`
`Simms (Exhibit 1102)
`See, e.g., col. 4, ll. 35-41 (“[T]he invention can be
`employed with any type of vehicle, including boats
`and planes.”);
`col. 5, ll. 7-10 (“Mobile security assembly 30 is shown
`in FIG. 1 to be incorporated in an automobile 20.
`Alternatively, mobile security assembly 30 may be
`incorporated in any other type of vehicle….”).
`See also Fig. 1 (showing an automobile).
`
`See, e.g., col. 4, ll. 4-18 (“In addition, an apparatus for
`monitoring a mobile entity in accordance with the
`above-described method is disclosed. The apparatus
`comprises the mobile unit, which further includes a
`programmable memory containing identification
`information characteristic of the mobile entity, a
`keypad for allowing manual entry of various help
`requests, a LORAN-C receiver for providing position
`information, and a processor connected to the
`programmable memory, to the push buttons, and to
`the LORAN-C receiver. The processor is activated
`upon occurrence of an alarm condition to input
`position coordinates from the LORAN-C receiver,
`and to compose a digital code corresponding to the
`alarm condition, to the identification information, and
`to the position coordinates.”);
`col. 6, ll. 7-11 (“FIG. 3 is a block diagram of the
`mobile security assembly 30 of FIG. 1. In addition to
`mobile unit 32, the assembly includes … a plurality of
`remote sensors 41 each connected to the mobile unit
`32.”);
`col. 6, ll. 19-30 (“Remote sensors 41 automatically
`initiate specific help requests upon detecting various
`alarm conditions. For instance, remote sensors 41
`may include smoke or heat detectors for detecting a
`fire within the vehicle, a tamper switch or motion
`detector for detecting a possible theft of the vehicle,
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`an impact detector for detecting a collision, a sensor
`for detecting activation of a vehicle air-bag, and any
`of numerous other sensor types for automatically
`detecting a wide variety of personal security situations.
`The above-described and many other sensors are
`well-known in the art and commercially available.”);
`col. 7, ll. 5-8 (“While in stand-by mode, mobile unit
`32 remains partially operational and continuously
`polls remote sensors 41 to detect vehicular security
`conditions.”);
`col. 7, ll. 23-25 (“When in full security mode, a help
`request may be entered manually at push buttons 33
`or may be automatically detected at a remote sensor
`41.”);
`col. 8, ll. 16-25 (“FIG. 4 shows a detailed block
`diagram of the mobile security assembly 30 which
`illustrates the internal circuitry of the mobile unit 32.
`The internal circuitry includes a microcontroller 310
`which receives external inputs from push buttons 33
`and remote sensors 41. Microcontroller 310 may be
`any conventional microcontroller which incorporates
`an on-board universal asynchronous receiver-
`transmitter (UART), clock/timer and internal
`memory. For example, an Intel® 87C51FB may be
`used.”);
`col. 11, l. 65 - col. 12, l. 11 (“In step 518, the remote
`sensors 41 and the push button switches 33 are
`sequentially polled to determine whether a personal
`security situation exists or whether system test has
`been initiated. If neither, and the elapsed time
`counted at the internal timer has not expired, then the
`program repeats step 518. . . . [I]f a personal security
`situation is detected at step 518A by one of remote
`sensors 41 or push button switches 33, then the
`program continues to step 521 where microcontroller
`310 attempts to transmit the personal security system
`message.”).
`See also Fig. 4 (showing a “microcontroller” that
`receives input from “remote sensors” and generates
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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.
`
`various outputs as a result); Fig. 6A (noting that the
`“microcontroller” “poll[s] remote sensors 41” to
`determine if a “personal security situation” exists).
`
`See, e.g., col. 3, ll. 31-36 (“It is another object of the
`present invention to provide a fully automatic
`personal security system and communication protocol
`which is operative under the most severe
`circumstances to automatically summon an
`emergency response in accordance with the specific
`personal needs of the mobile person.”);
`col. 3, ll. 48-54 (“It is yet another object of the
`invention to combine the advantages of long-range
`navigation systems such as LORAN-C or Global
`Position Satellite (GPS) with the extensive
`communication capabilities of a cellular telephone or
`communications satellite to yield a practical personal
`security system with the above-described emergency
`assistance capabilities.”);
`col. 4, ll. 4-24 (“In addition, an apparatus for
`monitoring a mobile entity in accordance with the
`above-described method is disclosed. The apparatus
`comprises the mobile unit, which further includes a
`programmable memory containing identification
`information characteristic of the mobile entity, a
`keypad for allowing manual entry of various help
`requests, a LORAN-C receiver for providing position
`information, and a processor connected to the
`programmable memory, to the push buttons, and to
`the LORAN-C receiver. The processor is activated
`upon occurrence of an a