UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,738,697 PURSUANT TO 35 U.S.C. §§ 42.107
`
`Case No. IPR2013-00413
`
`
`
`
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` 
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`
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`

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`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`SUMMARY OF THE ‘697 PATENT AND DEFICIENCIES IN
`ASSERTED REFERENCES ........................................................................... 2
`III. CLAIM CONSTRUCTION ............................................................................ 7
`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`GROUNDS RAISED BY PETITIONER ........................................................ 7
`A. Ground 1: Simms Does Not Anticipate Under 35 U.S.C. § 102 (a)
`Claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 ........................................... 12
`B. Ground 2: DiLullo Does Not Anticipate Under 35 U.S.C. § 102
`(b) Claims 1, 2, 5, 10, 17, 18, 19, 21, 26, 27, 32, 40, and 61 ........................ 18
`C. Ground 3: Simms In View of DiLullo Does Not Render Obvious
`Under 35 U.S.C. § 102 (b) Claims 5, 18, 26, and 27 .................................... 23
`D. Ground 4: DiLullo In View of Simms Does Not Render Obvious
`Under 35 U.S.C. § 103 (a) Claim 20 ............................................................. 27
`CONCLUSION .............................................................................................. 28
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`V.
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
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` 
`
`TABLE OF AUTHORITIES
`
` Cases 
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ....................................................................... 17, 18
`CAE Screen Plates, Inc. v. Heinrich Fiedler GMBH & Co. KG,
`224 F.3d 1308 (Fed. Cir. 2000) ..................................................................... 17, 18
`In re Bond,
`910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990) .............................................. 10
`In re Wilson,
`424 F.2d 1382, 165 USPQ 494 (CCPA 1970) .................................................... 10
`Phillips v. AWH Corp.,
`415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) ............................................ 10
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226, 9 USPQ2d 1913 (Fed. Cir. 1989) ............................................. 10
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628, 2 USPQ2d 1051 (Fed. Cir. 1987) ................................................. 10
`Statutes 
`35 U.S.C. § 102 ........................................................................................ 9, 16, 19, 23
`35 U.S.C. § 103 ................................................................................................. passim
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314 .......................................................................................................... 1
`Other Authorities 
`MPEP § 2111 ........................................................................................................... 10
`MPEP § 2131 .......................................................................................................... 10
`MPEP § 2141 .................................................................................................... 19, 23
`MPEP § 2142 ........................................................................................................... 20
`MPEP § 2143 ............................................................................................. 10, 20, 21
`Rules 
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
` 
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`ii
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`I.
`
`INTRODUCTION
`
`Patent Owner American Vehicular Sciences (“American”) submits the
`
`following preliminary response to the Petition filed by Toyota Motor Corporation
`
`(“Toyota”) requesting inter partes review of claims 1, 2, 5, 10, 17-21, 26, 27, 32,
`
`40, and 61 of U.S. Pat. No. 6,738,697 (“the ‘697 patent”). This filing is timely
`
`under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it is filed within three
`
`months of the July 17, 2013 mailing date of the Notice granting the Petition a July
`
`8, 2013 filing date. This petition was one of two filed by Toyota relating to the
`
`‘697 patent, the other being Case Number IPR2013-00412.
`
`“The Director may not authorize an inter partes review to be instituted
`
`unless the Director determines that the information presented in the petition filed
`
`under section 311 . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged . . . .” 35 U.S.C. §
`
`314(a) (emphasis added). Here, the prior art cited by Toyota, either alone or in
`
`combination, fails to disclose each and every limitation of claims 1, 2, 5, 10, 17-21,
`
`26, 27, 32, 40, and 61 of the ‘697 patent. As such, Toyota has failed to show a
`
`reasonable likelihood that it would prevail with respect to the grounds asserted in
`
`its Petition. This Patent Owner Preliminary Response establishes that no review
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`1
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`IPR2013-00413
`should be instituted with respect to at least the claims and grounds identified
`
`below.1
`
`II.
`
`SUMMARY OF THE ‘697 PATENT AND DEFICIENCIES IN
`ASSERTED REFERENCES
`
`The ‘697 patent claims the benefit of an initial priority application filed June
`
`7, 1995, which disclosed a revolutionary new vehicle diagnostic system positioned
`
`on the vehicle. (See Ex. 1101, ‘697 patent at cover, claiming priority to U.S. Pat.
`
`App. No. 08/476,077, now U.S. Pat. No. 5,809,437). That application disclosed a
`
`system of sensors on a vehicle, a diagnostic computer positioned on the vehicle for
`
`processing the sensor output and outputting a diagnosis, a display in the vehicle for
`
`displaying the diagnosis received from the vehicle diagnostic computer, and a
`
`separate transmission means for transmitting the diagnosis information to a remote
`
`site. (See, e.g., U.S. Pat. No. 5,809,437 at claims 1, 9.) A later application filed on
`
`June 19, 2002 (U.S. Pat. App. No. 10/174,709, now U.S. Pat. No. 6,736,506)
`
`disclosed including GPS location data with a diagnosis transmission. (See, e.g.,
`
`U.S. Pat. No. 6,736,506 at claims.) The application leading to the ‘697 patent is a
`
`                                                            
`1 In its Preliminary Patent Owner’s Response, American has set forth preliminary
`
`positions in response to grounds recited in Toyota’s Petition. Should the Board
`
`decide to institute a trial, American reserves the right to set forth additional
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`reasons, arguments and evidence in support of patentability.
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`2
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`IPR2013-00413
`continuation-in-part from both of those applications and several others, combining
`
`the concepts from the applications.
`
`The ‘697 patent in particular relates to on-board diagnosis of the state of a
`
`vehicle and its components. (See, e.g., Ex. 1101, ‘697 patent at claim 1.) The ‘697
`
`patent invention, however, is much more than just a diagnosis system. Key
`
`inventive elements of the ‘697 patent not found in the art cited by Petitioner
`
`Toyota include:
`
`
`
`The concept of on-board diagnosis. The ‘697 patented inventions
`
`require the vehicle to collect sensor data and process it to arrive at a diagnosis of
`
`the state of the vehicle or vehicle components—all on board the vehicle. (See, e.g.,
`
`Ex. 1101, ‘697 patent at claims 1, 2, 21.) In other words, the system of the ‘697
`
`patent transmits a completed diagnosis to a remote site. (See id.) This distinction
`
`is how the applicant overcame certain prior art with respect to certain claims of the
`
`‘697 patent. For example, the ‘697 patent distinguished U.S. Pat. No. 5,400,018 to
`
`Scholl by stating that in Scholl:
`
`[t]he vehicle does not include a system for performing diagnosis.
`
`Rather, the raw sensor data is processed at an off-vehicle location in
`
`order to arrive at a diagnosis of the vehicle’s operating conditions. . . .
`
`Scholl does not teach the diagnosis of the problem or potential
`
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`problem on the vehicle itself nor does it teach the automatic
`
`diagnostics or any prognostics.
`
`(Ex. 1101, ‘697 patent at 2:67-3:13.) During prosecution, the inventor overcame
`
`rejections in view of U.S. Pat. No. 5,056,023 to Abe (“Abe”) and U.S. Pat. Pub.
`
`No. 2002/0103622 to Burge (“Burge”), by showing that Abe and Burge do not
`
`process sensor data to arrive at a “diagnosis” on the vehicle, but instead off-load
`
`diagnostic capability to a remote facility. (See Ex. 1104, ‘697 Patent File History
`
`at 352-354.) In short, the inventions of the ‘697 patent do not merely consist of
`
`vehicle sensors, diagnosis performed somewhere (whether on the vehicle or not),
`
`and transmission of information to a remote site. The concept of on-board
`
`diagnosis is completely lacking in at least U.S. Pat. No. 5,334,974 to Simms
`
`(“Simms”), which Toyota relies upon, as Simms discloses only monitoring and
`
`reporting vehicle security alarms. (See infra § IV.A.)
`
`
`
`The ability to diagnose the “state of the vehicle or the state of a
`
`component of a vehicle,” as opposed to simply detecting vehicle or component
`
`failures. This is an important distinction in the ‘697 patent. Diagnosing the “state”
`
`of the vehicle means “a diagnosis of the condition of the vehicle with respect to its
`
`stability and proper running and operating condition. (See Ex. 1001, ‘697 patent at
`
`10:29-32.) “Thus, the state of the vehicle could be normal when the vehicle is
`
`operating properly on a highway or abnormal when, for example, the vehicle is
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`experiencing excessive angular inclination . . ., the vehicle is experiencing a crash,
`
`the vehicle is skidding, and other similar situations.” (See Ex. 1001, ‘697 patent at
`
`10:32-38.) At least the Simms patent fails to disclose a diagnosis of the “state of
`
`the vehicle or the state of a component of a vehicle.” (See infra § IV.A.)
`
`
`
`Further, dependent claims of the ‘697 patent add other features. For
`
`example, claims 5 and 26 claim a “display” to “display the diagnosis of the state of
`
`the vehicle or the state of the component of the vehicle.” (Ex. 1101, ‘697 patent at
`
`claims 5, 26.) Notably, the diagnosis information shown on the display is “the
`
`diagnosis” performed by the on-board vehicle computer—not just messages or a
`
`diagnosis received from a remote facility or other information. (See, e.g., Ex.
`
`1101, ‘697 patent at 13:24-33 (“A display may be arranged in the vehicle . . . .
`
`Such a display is . . . arranged to display the diagnosis of the state of the vehicle or
`
`the state of a component of the vehicle . . . .”).) Claims 18 and 27 similarly claim a
`
`“warning” device or system for indicating a diagnosis—something recited
`
`separately from the “display,” such as a warning lamp or sound. See, e.g., Ex.
`
`1101, ‘697 patent at 81:32-36 (“The [output system] may be a display as
`
`mentioned above or a warning device.”), 13:24-33 (“A display may be arranged in
`
`the vehicle . . . . Such a display is . . . arranged to display the diagnosis of the state
`
`of the vehicle or the state of a component of the vehicle . . . . A warning device
`
`may also be coupled to the diagnostic system for relaying a warning . . . .”)
`
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`(emphasis added). At least Simms again fails to disclose a display or warning
`
`device relating to such diagnosis information regarding the state of the vehicle or
`
`components, while the other cited reference (U.S. Pat. No. 4,897,642 to DiLullo
`
`(“DiLullo”)) fails to disclose at least a warning device as claimed. (See §IV.A.)  
`
` 
`
`Dependent claim 17 adds the feature of using the diagnosis output to
`
`“control” at least one part of the vehicle. The ‘697 patent clarifies that “control” of
`
`the vehicle or a component means to variably direct the operation of at least one
`
`part of the vehicle based on the diagnosis of the state of the vehicle or component.
`
`(See, e.g., Ex. 1101, ‘697 patent at 41:9-18, 84:9-18.) In other words, claim 17
`
`recites that a diagnosis system’s processor is able to, for example, turn a
`
`component on or off, change the operation of a component, etc. based on the
`
`vehicle or component diagnosis. An example could be turning off a passenger air-
`
`bag if a sensor detects a child seated in a seat or disabling a vehicle if the driver is
`
`drunk. (See, e.g., Ex. 1101, ‘697 patent at 24:64-67, 26:39-42 (disclosing sensors
`
`for detecting if a child or child seat is present in a seat), 19:52-55 (disclosing
`
`sensors for detecting if a seat is occupied by a drunk adult).) The ‘697 patent
`
`describes this “control” “based on” the diagnosis as being more functional than
`
`merely transmitting the diagnosis information or displaying the information—
`
`neither the transmitter or display are being “controlled”, nor are they being
`
`controlled “based on” the diagnosis information. None of the cited references,
`
` 
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`however, including Simms or DiLullo, disclose such claimed “control” based on
`
`the diagnosis. (See infra §§ IV.A-C.)
`
`For these reasons and other reasons discussed below, and because the art
`
`relied upon by Toyota does not disclose, either alone or in combination, all of the
`
`claim limitations, Toyota’s Petition should be denied.
`
`III. CLAIM CONSTRUCTION
`
`The ‘697 patent specification provides express definitions for a number of
`
`claim terms (which Petitioner Toyota set forth in its Petition), including:
`
`Claim Term
`
`Definition Set Forth in ‘697 Patent
`
`“component” (claims 1, 21)
`
`“any part or assembly of parts which is
`
`mounted to or a part of a motor vehicle
`
`and which is capable of emitting a
`
`signal representative of its operating
`
`state” (see Ex. 1101, ‘697 patent at
`
`30:58-31:22).
`
`“part” (claim 17)
`
`“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
`
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`IPR2013-00413
`air bag
`inflation
`
`inflation valve,
`
`controller and airbag vent valve, as well
`
`as those listed below in the definitions
`
`of ‘component’ and sensor’” (see Ex.
`
`1101, ‘697 patent at 10:51-57).
`
`“sensor” (claims 2, 10, 32)
`
`“any measuring or sensing device
`
`mounted on a vehicle or any of its
`
`components
`
`including new
`
`sensors
`
`mounted
`
`in conjunction with
`
`the
`
`diagnostic module in accordance with
`
`the invention” (see Ex. 1101, ‘697
`
`patent at 31:23-32:11).
`
`“sensor system” (claim 10)
`
`“any of the sensors listed below in the
`
`definition of ‘sensor’ as well as any type
`
`of
`
`component
`
`or
`
`assembly
`
`of
`
`components which detect, sense or
`
`measure something (see Ex. 1101, ‘697
`
`patent at 10:58-61).
`
`“diagnosis of the state of the vehicle”
`
`“diagnosis of
`
`the condition of
`
`the
`
`(claims 1, 21)
`
`vehicle with respect to its stability and
`
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`proper running and operating condition”
`
`(see Ex. 1101, ‘697 patent at 10:29-32).
`
`In addition, however, American disputes the manner in which Petitioner
`
`Toyota has applied (and therefore effectively construed) certain other claim terms.
`
`Specifically, Toyota has ignored the plain language and ordinary meaning of the
`
`following claim terms, for which American provides a proposed ordinary-meaning
`
`construction:
`
`Claim Term
`
`Correct Construction
`
`“output
`
`indicative or representative
`
`output indicating the condition of the
`
`thereof” or “output
`
`indicative or
`
`vehicle with respect to its stability and
`
`representative of the diagnosed state of
`
`proper running and operating condition
`
`the vehicle or the diagnosed state of the
`
`or indicating that one of the parts of the
`
`component of the vehicle” (claims 1, 21)
`
`vehicle, e.g., a component, system, or
`
`subsystem, is operating abnormally (Ex.
`
`1101, ‘697 patent at 10:29-41).
`
`“control at
`
`least one part of
`
`the
`
`variably directing the operation of at
`
`vehicle” (claim 17)
`
`least one part of the vehicle (Ex. 1101,
`
`‘697 patent at 41:9-18, 84:9-18).
`
`“display” (claim 5)
`
`a screen for showing information, as
`
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
`opposed to a warning lamp (See, e.g.,
`
`Ex. 1101, ‘697 patent at 81:32-36 (“The
`
`[output system] may be a display as
`
`mentioned above or a warning device.”),
`
`13:24-33 (“A display may be arranged
`
`in the vehicle . . . Such a display is . . .
`
`arranged to display the diagnosis of the
`
`state of the vehicle or the state of a
`
`component of the vehicle . . . A warning
`
`device may also be coupled to the
`
`diagnostic system for relaying a warning
`
`. . .”).)
`
`“display . . . arranged to display the
`
`the display shows the diagnosis output
`
`diagnosis” (claim 5)
`
`from the diagnostic system arranged on
`
`the vehicle (Ex. 1101, ‘697 patent at
`
`claim 1 and 13:24-28).
`
`
`
`
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`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`GROUNDS RAISED BY PETITIONER
`
`In its Petition, Toyota has proposed seven separate groups of rejections
`
`against various claims of U.S. Patent No. 6,738,697 (“the ‘303 Patent”).
`
`Specifically, Toyota has proposed the following grounds and rejections:
`
` Ground 1. Proposed rejection of claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40,
`
`and 61 under 35 U.S.C. § 102 (a) and § 102 (e) over U.S. Pat. No. 5,334,974
`
`to Simms (“Simms”).
`
`Ground 2. Proposed rejection of 1, 2, 5, 10, 17, 18, 19, 21, 26, 27, 32, 40,
`
`and 61 under 35 U.S.C. § 102(b) over U.S. Pat. No. 4,897,642 to DiLullo
`
`(“DiLullo”).
`
`Ground 3. Proposed rejection of claims 5, 18, 26, and 27 under 35 U.S.C. §
`
`103 (a) over Simms in view of DiLullo.
`
`Ground 4. Proposed rejection of claim 20 under 35 U.S.C. § 103(a) over
`
`DiLullo in view of Simms.
`
`In numerous instances, however, the cited references, either alone or in
`
`combination, fail to disclose, teach, or suggest all the elements of the claims to
`
`which they are applied, and hence they fail to establish a prima facie case of
`
`unpatentability with respect to those claims Accordingly, with respect to at
`
`least the claims discussed below, the Petition does not establish a reasonable
`
`likelihood that those claims are unpatentable, and, therefore, the Board should
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`not institute an inter partes review proceeding based on the proposed grounds.
`
`A. Ground 1: Simms Does Not Anticipate Under 35 U.S.C. § 102(a)
`Claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61
`
`Petitioner Toyota argues that claims 1, 2, 10, 17-21, 26, 27, 32, 40, and 61
`
`are anticipated by Simms. For at least the reasons set forth below, however,
`
`Toyota has not shown that Simms discloses all of the limitations of at least some of
`
`these claims. For a proper showing that a claim is anticipated, all elements of the
`
`claim must be disclosed in the cited reference. “A claim is anticipated only if
`
`each and every element as set forth in the claim is found, either expressly or
`
`inherently described, in a single prior art reference.” Verdegaal Bros. v. Union
`
`Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
`
`“The identical invention must be shown in as complete detail as is contained in
`
`the ... claim.” MPEP § 2131, citing Richardson v. Suzuki Motor Co., 868 F.2d
`
`1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). “All words in a claim must
`
`be considered in judging the patentability of that claim against the prior art.”
`
`MPEP § 2143.03 citing In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
`
`(CCPA 1970). “During patent examination, the pending claims must be 'given
`
`their broadest reasonable interpretation consistent with the specification.'“ MPEP
`
`§ 2111 citing Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321,
`
`1329 (Fed. Cir. 2005). Furthermore, the elements must be arranged as required
`
`by the claim. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
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`Independent claims 1 and 21 (and therefore all dependent claims)
`
`require performing, on an on-board system, a diagnosis of the “state of the vehicle
`
`or the state of a component of the vehicle,” as shown below:
`
`Claim 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.
`
`Claim 21: A method for monitoring a vehicle, comprising the steps of:
`
`diagnosing the state of the vehicle or the state of a component of the
`
`vehicle by means of a diagnostic system arranged on the vehicle;
`
`generating an output indicative or representative of the diagnosed
`
`state of the vehicle or the diagnosed state of the component of the
`
`vehicle; and
`
`transmitting the output indicative or representative of the diagnosed
`
`state of the vehicle or the diagnosed state of the component of the
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`
`vehicle from the vehicle to a remote location.
`
`(Ex. 1101, ‘697 patent at claims 1, 21.)
`
`Further, claims 1 and 21 recite that the on-vehicle diagnostic system
`
`generates an output indicative of the diagnosed state of the vehicle or component.
`
`In other words, it is not enough for an on-board vehicle processor to merely collect
`
`sensor data—it must actually diagnose of the state of the vehicle or components
`
`and generate an output of that diagnosis—on the vehicle itself and not on a remote
`
`computer. (See, e.g., Ex. 1001, ‘697 patent at 2:67-3:13) (distinguishing over prior
`
`art which provides that “raw sensor data is processed at an off-vehicle location in
`
`order to arrive at a diagnosis of the vehicle’s operating condition,” and which
`
`“does not teach the diagnostics of the problem or potential problem on the vehicle
`
`itself”).
`
`
`
`Simms does not teach such status diagnosis being performed on the on-board
`
`vehicle processor. Rather, Simms is concerned with monitoring the personal
`
`security of a passenger rather than the operating state of the vehicle and
`
`components. Simms discloses only a vehicle “personal security system” having a
`
`“mobile communication unit . . . triggered by the occurrence of a variety of
`
`personal security conditions.” (Ex. 1102, Simms at Abstract, 1:23-15.) The
`
`personal security conditions consist of “various alarm conditions,” such as
`
`“detecting a fire within the vehicle,” “detecting a possible theft of the vehicle,” “an
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`impact detector for detecting a collision,” “a sensor for detecting activation of a
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`vehicle air-bag,” and “any of numerous other sensor types for automatically
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`detecting a wide variety of personal security situations.” (Ex. 1102, Simms at
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`6:19-30.) A communication is triggered only when there is an “alarm condition”—
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`which falls short of information regarding the “state” of the vehicle or components. 
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`Claims 5, 18, 26, and 27 also recite a display “to display the diagnosis of
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`the state of the vehicle or the state of a component of the vehicle” or “warning,” as
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`shown below:
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`Claim 5. The vehicle of claim 1, further comprising a display arranged
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`in the vehicle in a position to be visible from the passenger
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`compartment, said display being coupled to said diagnostic system
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`and arranged to display the diagnosis of the state of the vehicle or the
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`state of a component of the vehicle.
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`Claim 26. The method of claim 21, further comprising the steps of:
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`arranging a display in the vehicle in a position to be visible from the
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`passenger compartment; and
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`displaying the state of the vehicle or the state of a component of the vehicle
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`on the display.  
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`Claim 18. The vehicle of claim 1, further comprising a warning device
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`coupled to said diagnostic system for relaying a warning to an
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`occupant of the vehicle relating to the state of the vehicle or the state
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`of the component of the vehicle as diagnosed by said diagnostic
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`system.
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`Claim 27. The method of claim 21, further comprising the step of
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`relaying a warning to an occupant of the vehicle relating to the state of
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`the vehicle.
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`(See Ex. 1101, ‘697 patent at claim 5.) The ‘697 patent distinguishes between a
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`“warning lamp” (a simple lamp that either is lit or not) and a “display” (a screen
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`for displaying information). (See, e.g., Ex. 1101, ‘697 patent at 81:32-36 (“The
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`[output system] may be a display as mentioned above or a warning device.”),
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`13:24-33 (“A display may be arranged in the vehicle . . . Such a display is . . .
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`arranged to display the diagnosis of the state of the vehicle or the state of a
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`component of the vehicle . . . A warning device may also be coupled to the
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`diagnostic system for relaying a warning . . .”).)
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`Simms does not disclose a display for “displaying the state of the vehicle or
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`the state of the component,” nor does it disclose a “warning device” for relaying a
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`warning relating to the state of the vehicle or component. Simms only discloses a
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`display for “displaying messages to the mobile person” from a central dispatch
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`station. (Ex. 1102, Simms at 6:51-53; see also id. at 12:33-35 (“The call-back
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`confirmation [from the central dispatch station] is indicated on the alphanumeric
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`display device.”).) There is no disclosure in Simms of directly displaying any
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`diagnosis information processed on-board. Similarly, Petitioner Toyota only
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`points to the message display of Simms as allegedly comprising a “warning
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`device.” The ‘697 patent, however, distinguishes between a “display” and a
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`“warning device.” And the disclosure in Simms of that an actuator can “sound the
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`vehicle horn, illuminate the headlights, etc.” in response to a theft detection is not a
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`warning “to an occupant of a vehicle” (as a theft alarm presumably is only
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`triggered when the vehicle is unoccupied).
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`Claim 17 further requires a processor “arranged to control at least one part
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`of the vehicle based on the output indicative or representative of the state of the
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`vehicle or the state of a component of the vehicle,” as shown below:
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`Claim 17. The vehicle of claim 2, wherein said processor is arranged
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`to control at least one part of the vehicle based on the output
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`indicative or representative of the state of the vehicle or the state of a
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`component of the vehicle.
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`(Ex. 1101, ‘697 patent at claim 17). The ‘697 patent clarifies that “control” of the
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`vehicle or a component means to variably direct the operation of at least one part
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`of the vehicle based on the diagnosis. (See, e.g., Ex. 1101, ‘697 patent at 41:9-18,
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`84:9-18.) In other words, when utilizing claim 17, the diagnosis processor is able
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`to, for example, turn a component on or off, change the operation of a component,
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`etc. based on the vehicle or component diagnosis.
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`One example could be turning off a passenger air-bag if a sensor detects a
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`child seated in a seat or disabling a vehicle if the driver is drunk. (See, e.g., Ex.
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`1101, ‘697 patent at 24:64-67, 26:39-42 (disclosing sensors for detecting if a child
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`or child seat is present in a seat), 19:52-55 (disclosing sensors for detecting if a
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`seat is occupied by a drunk adult).) This “control” of the vehicle and components
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`is separate from simply transmitting or displaying information (which is not “based
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`on” the diagnosis information), and it is not satisfied by Simm’s disclosure of
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`merely sounding the vehicle horn or illuminating the headlights if a theft alarm is
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`detected (which is more like the separate “warning device” of the ‘697 patent
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`claims). (See Petition at 24-25.)
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`Accordingly, Petitioner Toyota has not demonstrated a reasonable likelihood
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`that each of these claims are unpatentable under § 102 in view of Simms. The
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`Board should therefore decline to institute an inter partes review based on this
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`ground or Toyota’s arguments therein.
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`B. Ground 2: DiLullo Does Not Anticipate Under 35 U.S.C. § 102(b)
`Claims 1, 2, 5, 10, 17, 18, 19, 21, 26, 27, 32, 40, and 61
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`Petitioner Toyota argues that claims 1, 2, 5, 10, 17, 18, 19, 21, 26, 27, 32,
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`40, and 61 are anticipated by DiLullo (Toyota does not argue that claim 20 is
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`anticipated by DiLullo). For at least the reasons set forth below, Toyota has not
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`shown that DiLullo discloses all of the limitations of at least some of these
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`claims, and thus has not demonstrated a reasonable likelihood that each of these
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`claims is unpatentable under § 102.
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`Claim 17 includes the element of a processor “arranged to control at least
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`one part of the vehicle based on the output indicative or representative of the state
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`of the vehicle or the state of a component of the vehicle,” as shown below:
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`Claim 17. The vehicle of claim 2, wherein said processor is arranged
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`to control at least one part of the vehicle based on the output
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`indicative or representative of the state of the vehicle or the state of a
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`component of the vehicle.
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`(Ex. 1101, ‘697 patent at claim 17.) Again, the ‘697 patent clarifies that “control”
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`of the vehicle or a component means to variably direct the operation of at least one
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`part of the vehicle based on the diagnosis. (See, e.g., Ex. 1101, ‘697 patent at 41:9-
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`18, 84:9-18.) In other words, when utilizing claim 17, the diagnosis processor is
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`able to, for example, turn a component on or off, change the operation of a
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`component, etc. based on the vehicle or component diagnosis. One example is
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`turning off a passenger air-bag if a sensor detects a child seated in a seat or
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`disabling a vehicle if the driver is drunk. (See, e.g., Ex. 1101, ‘697 patent at 24:64-
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`67, 26:39-42 (disclosing sensors for detecting if a child or child seat is present in a
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`seat), 19:52-55 (disclosing sensors for detecting if a seat is occupied by a drunk
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`adult).)
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`DiLullo does not disclose any such “control” of the vehicle or vehicle
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`components in response to any diagnosis. Petitioner Toyota again only cites to the
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`disclosure in DiLullo of (1) a communications device coupled to the diagnostic
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`system to transmit the diagnosis and (2) a display for displaying information
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`received from the remote diagnostic computer. (See Petition at 44.) Neither of
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`these constitutes “control” of a component as contemplated by the ‘697 patent.
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`First, neither transmitting nor displaying diagnosis information constitutes
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`controlling a component “based on” the diagnosis information. Rather, the
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`transmission and displaying occur regardless of the content of the diagnosis.
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`Second, both transmitting and displaying are claimed as separate functions
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`from the “control” function. (See, e.g., claim 1 (claiming transmission of the
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`diagnosis) and claim 5 (claiming displaying the diagnosis on a display).) Under
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`the doctrine of claim differentiation, the requirement in claim 17 of “control” of a
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`component is presumed to be different than the transmission or display elements of
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`claims 1 and 5—otherwise the “control” element of claim 17 would be
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`meaningless and redundant to claims 1 and 5. See, e.g.,