Trials@uspto.gov
`571-272-7822
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`Paper 14
`Entered: January 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
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`
`Paper 14
`Entered: January 13, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`INTRODUCTION
`On July 8, 2013, Toyota Motor Corporation (“Toyota”) filed a petition
`requesting an inter partes review of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and
`18 of U.S. Patent No. 8,036,788 B2 (Ex. 1001, “the ’788 Patent”). Paper 1
`(“Pet.”). The patent owner, American Vehicular Sciences LLC (“AVS”),
`filed a preliminary response. Paper 11 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD – 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
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of Toyota’s petition and AVS’s preliminary
`response, we determine that the information presented in the petition
`establishes that there is a reasonable likelihood that Toyota would prevail in
`showing unpatentability of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and 18 of the
`’788 Patent. Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter
`partes review for claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and 18 of the ’788
`Patent.
`A. Related Proceedings
`The ’788 Patent is involved the following co-pending litigation:
`American Vehicular Sciences LLC v. Toyota Motor Corp. et al., No. 6:12-
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`CV-405 (E.D. Tex. filed July 20, 2012).1
`B. The ’788 Patent Disclosure
`The ’788 Patent discloses a system and a method for monitoring the
`condition of a vehicle. Ex. 1001, col. 3, ll. 35-38; col. 4, ll. 1-14. Sensors
`monitor components of the vehicle and are connected to a diagnostic
`module. Id. at col. 3, ll. 39-41, 46 -47. The diagnostic module determines
`an actual or potential failure of the component or subsystem. Id. at col. 3, ll.
`49-50. The diagnostic module controls a communications unit that
`communicates through a wireless communications network with a remote
`site. Id. at col. 3, ll. 38-39, 48. The remote site is any site or location
`interested in receiving information about the diagnostic or prognostic status
`of the components of the vehicle. Id. at col. 3, ll. 53-56. The ’788 Patent
`describes diagnostics as generally determining the present condition of the
`component. Id. at col. 7, ll. 41-42. The ’788 Patent describes prognostics as
`determining when a component will fail. Id. at col. 7, ll. 45-46.
`The method described collects status data for vehicle maintenance and
`monitors a triggering event on a vehicle. Ex. 1001, col. 4, ll. 42-49. The
`triggering event relates to a diagnostic or prognostic analysis of at least one
`component or subsystem of the vehicle. Id. The triggering event initiates a
`transmission between the communications unit and a remote site. Id. The
`transmission includes a diagnostic or prognostic message about the
`component or subsystem, e.g., a message about a failure, predicted failure,
`or fault code generation of the component or subsystem. Id.
`
`
`1 Toyota states that the ’788 patent is the subject of additional litigation
`proceedings pending in the Eastern District of Texas, none of which name
`Toyota as a defendant. Pet. 1.
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`Figure 3 of the ’788 Patent is reproduced below:
`
`
`Figure 3 is a schematic of a vehicle illustrating a total diagnostic
`system utilizing the diagnostic module. Ex. 1001, col. 20, ll. 32-36. The
`sensors shown in Figure 3 are mounted on components within the engine of
`the vehicle including, among other sensors, the following: microphone 2,
`coolant thermometer 3, oil pressure sensor 4, oil level sensor 5, air flow
`meter 6, voltmeter 7, ammeter 8, engine knock sensor 10, oil turbidity sensor
`11, throttle position sensor 12, oxygen sensor 17, transmission fluid level
`sensor 25, coolant level sensor 27, transmission fluid turbidity sensor 28,
`brake pressure sensor 29, and coolant pressure sensor 30. Id. at Figs. 3, 4;
`col. 20, l. 59–col. 21, l. 10.
`Figure 20C of the ’788 Patent is reproduced below:
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`Figure 20C is a block diagram showing a general system for obtaining
`information about a vehicle or vehicle component. Ex. 1001, col. 54, ll. 26-
`27. Control system 628 is coupled to and controls antenna array 622,
`enabling reception of return signals from sensors 627. Id. at col. 54, ll. 40-
`43. The information is directed to display/telematics/adjustment unit 629
`where the information can be displayed on display 629 to the driver and sent
`to a remote location for analysis via a telematics unit 629. Id. at col. 54, ll.
`61-66.
`C. Exemplary Claims
`Claims 1 and 4 are the only two independent claims of the challenged
`claims, and are reproduced below:
`1. A method for providing status data for vehicle maintenance,
`comprising:
`
`monitoring for a triggering event on a vehicle having a wireless
`communications unit, the triggering event relating to a diagnostic or
`prognostic analysis of at least one of a plurality of different components or
`subsystems of the vehicle; and
`
`initiating a wireless transmission between the communications unit
`and a remote site separate and apart from the vehicle in response to the
`triggering event, the transmission including a diagnostic or prognostic
`message about the at least one component or subsystem.
`
`4. A system for providing status data for vehicle maintenance,
`comprising:
`
` a
`
` diagnostic module including at least one sensor for monitoring a
`plurality of different components or subsystems of the vehicle, said
`diagnostic module being arranged to analyze monitoring data provided by
`said at least one sensor and detect a triggering event relating to a diagnostic
`or prognostic analysis of at least one of the plurality of different components
`or subsystems of the vehicle; and
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`a wireless communications unit arranged to interface with a wireless
`communications network, said communications unit being coupled to said
`diagnostic module and initiating a wireless transmission between said
`communications unit and a remote site separate and apart from the vehicle in
`response to the triggering event, the transmission including a diagnostic or
`prognostic message about the at least one component or subsystem.
`
`D. Prior Art Relied Upon
`Toyota relies upon the following prior art references.
`
`Scholl
`Ishihara
`
`Mar. 21, 1995 Ex. 1002
`Dec. 17, 1993 Ex. 1003
`
`Ishihara
`
`Fry
`
`
`
`Ex. 10042
`
`Jan. 1, 1995
`
`Ex. 1005
`
`US 5,400,018
`Japanese Published
`Application
`H01-197145
`English Translation of
`Ishihara
`K. N. Fry, Diesel
`Locomotive Reliability
`Improvements by System
`Monitoring, 209 PROC.
`INSTITUTION
`MECHANICAL ENGINEERS,
`PART F: J. RAIL & RAPID
`TRANSIT 1 (1995)
`
`
`2 All references in this decision to “Ishihara” are to the English translation
`(Ex. 1004) of the Japanese Published Application.
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`Oct. 1994
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`Ex. 1006
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`Mogi3
`
`Mogi, Prospects for Failure
`Diagnostics of
`Automotive Electronic
`Control Systems Leading
`Change: the Transportation
`Electronic Revolution,
`PROC. OF THE 1994 INT’L
`CONGRESS ON TRANSP.
`ELECS., 477-488 (1994)
`
`
`E. The Alleged Grounds of Unpatentability
`Toyota alleges the following grounds for unpatentability.
`Claims
`Grounds
`References
`1, 3, 4, 6, 7, 8, 9, 11, 15,
`§§ 102(a) and (e)
`Scholl
`16, and 18
`
`1, 3, 4, 6, 7, 8, 9, 11, 15,
`§ 102(b)
`16, and 18
`1, 3, 4, 6, 7, 8, 9, 11, 15,
`16, and 18
`
`9 and 15
`
`Ishihara
`
`§ 102(a)
`
`Fry
`
`§ 103(a)
`
`A. Claim Construction
`
`ANALYSIS
`
`Ishihara and
`Scholl
`
`Principles of Law
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`
`3 Mogi is not relied on as support for any ground of unpatentability. Toyota
`uses Mogi as evidence supporting institution on claims 9 and 15 over
`Ishihara and Scholl. Mogi is relied on to show one of ordinary skill would
`have known the availability of the functionality of failure prediction systems
`when designing a vehicle diagnostic system. See Pet. 59.
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012). The terms also are given their ordinary and customary meaning as
`would be understood by one of ordinary skill in the art in the context of the
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). If an inventor acts as his or her own lexicographer, the definition
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998).4
`An extraneous limitation should not be read into the claims from the
`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`the presence of which in a claim is unnecessary for the purpose of making
`sense of the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994); Renishaw PLC, 158 F.3d at 1249. The construction that stays true to
`the claim language and most naturally aligns with the inventor’s description
`is likely the correct interpretation. See Renishaw PLC, 158 F.3d at 1250.
`“Comprising” is a term of art used in claim language, which means
`that the named elements are essential, but other elements also may be
`included to constitute additional components within the scope of the claim.
`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
`“component”
`The term “components” is recited, for example, in claim 1:
`“monitoring a triggering event . . . relating to a diagnostic or prognostic
`analysis of at least one of a plurality of different components or subsystems
`
`4 Neither Toyota nor AVS contends that the specification of the ’788 Patent
`defined any term differently from what would be understood by one of
`ordinary skill in the art.
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`of the vehicle…”. (emphasis added). As Toyota points out, the
`specification of the ’788 Patent describes the term “component” as:
`generally refer[ring] to 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.
`
`Ex.1001, col. 8, ll. 5-8.
`
`Toyota does not contend that the named inventor of the ’788 patent
`acted as his own lexicographer and coined a new meaning for the term
`“component” different from the ordinary and customary meaning, as would
`be understood by one with ordinary skill in the art. Neither does AVS.
`Also, the above-quoted language does not appear to be in the form of a
`definition. Rather, the text is a portion of the description of preferred
`embodiments, and uses the words “refers to” after the term “component.”
`The ordinary and customary meaning of “component” simply refers to a part
`that is less than the whole. The evidence falls short of that standard required
`for recognizing a new definition, i.e., reasonable clarity, deliberateness, and
`precision. Accordingly, we do not regard the above-quoted text as setting
`forth Patent Owner’s special definition for the term “component.” Instead,
`the text describes how components operate and interact with other elements
`in an operative environment.
`The Board construes “component” as “a part or an assembly of parts,
`less than the whole.” Based on the term itself, “component” does not have
`to relate to a motor vehicle; nor does it have to be capable of emitting a
`signal representative of its operating state.
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`“sensor”
`The term sensor is recited, for example, in claim 4: “a diagnostic
`module including at least one sensor for monitoring a plurality of different
`components or subsystems of the vehicle” (emphasis added). As Toyota
`asserts, the specification of the ’788 Patent describes the term “sensor” as:
`generally refers to any measuring, detecting 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.” Pet. 5-6 (citing Ex.1001, col. 8, ll. 19-24).
`
`Neither Toyota nor AVS contends that the named-inventor of the ’788
`patent acted as his own lexicographer and coined a new meaning for the
`term “sensor” different from the ordinary and customary meaning as would
`be understood by one with ordinary skill in the art. The above-referenced
`excerpt does not give one of ordinary skill adequate notice of a change in the
`meaning of a common term or intent to redefine the term. See In re Paulsen,
`30 F.3d at 1480. Also, the text is in a portion of the description of preferred
`embodiments and uses the words “refers to,” which are followed by a
`“partial non-exhaustive list” of more than forty exemplary automobile or
`truck sensors.
`Regarding the phrase referring to “sensor” as a “measuring or sensing
`device,” neither Toyota nor AVS explains how a “sensor” measures without
`also sensing. Additionally, defining “sensor” to mean a “sensing device” is
`circular and thus, not meaningful. Concerning the phrase referring to
`“sensor” as “any . . . device mounted on a vehicle or any of its components,”
`we note that the requirement of being mounted on a vehicle is extraneous as
`far as the claimed subject matter is concerned. There is no reason to read
`into the ordinary meaning of “sensor” the requirement of being mounted on
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`a vehicle. Further, interpreting the term “sensor” as being “in accordance
`with the invention” evokes ambiguity and indefiniteness which should be
`avoided in matters of interpretation.
`For all the foregoing reasons, we do not regard the above-quoted text
`as setting forth Patent Owner’s special definition for “sensor.” The term
`possesses its ordinary and customary meaning, as would be understood by
`one with ordinary skill, and does not require an express construction. We
`agree, however, that the term “sensor” includes each of the sensors
`particularly identified in the specification of the ’788 Patent.
`“triggering event”
`The term “triggering event” is recited in claim 1, which states in
`pertinent part, “monitoring for a triggering event on a vehicle having a
`wireless communications unit, the triggering event relating to a diagnostic or
`prognostic analysis” (emphasis added). Neither party addresses “triggering
`event” in its claim construction analysis.
`The ’788 Patent describes a triggering event as “a failure, predicted
`failure or fault code generation of the component or subsystem.” Ex. 1001,
`col. 4, ll. 54-57. In the context of the claim language, this description is
`consistent with the ordinary meaning of “triggering event.” Applying the
`broadest reasonable interpretation of the term, the Board construes
`"triggering event” as meaning “an event that starts or causes something to
`happen.”
`
`“diagnostic or prognostic message”
`The term “diagnostic or prognostic message” is recited in claim 1,
`which states in pertinent part, “the transmission including a diagnostic or
`prognostic message about the at least one component or subsystem”
`
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`(emphasis added). Neither party addresses “diagnostic or prognostic
`message” in its proposed claim constructions. The specification of the ’788
`Patent states the following:
`Generating diagnostic or prognostic information about the component
`or subsystem may entail determining whether the component or
`subsystem is about to fail. In this case, the transmission of diagnostic
`or prognostic messages from the communications unit is a
`transmission of an indication of the actual potential failure of the
`component or subsystem. Ex. 1001, col. 4, ll. 15-20.
`
`
`Consistent with the specification of the ’788 Patent, the Board construes
`“diagnostic or prognostic message” to mean “diagnostic or prognostic
`information related to actual or potential failure of a component.”
`Error Correction: “of” to “or”
`AVS seeks to use claim construction for correction of an alleged error
`in claims 8 and 9. Claims 8 and 9 both depend from claim 7, which depends
`from claim 1. Resp. 5-6. The error alleged is that claims 8 and 9 recite
`“component of subsystem” instead of “component or subsystem,” as appears
`in claim 7. Id. AVS alleges “if the correction is not subject to reasonable
`debate to one of ordinary skill in the art, namely, through claim language
`and the specification, and the prosecution history does not suggest a
`different interpretation, then a court can correct an obvious typographical
`error.” Prelim. Resp. 8 (citing Ultimax Cement Mfg. Corp. v. CTS Cement
`Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009)).
`The Ultimax Cement decision cites to Novo Indus., L.P. v. Micro
`Molds Corp., 350 F.3d 1348, 1357 (Fed.Cir.2003). Neither Ultimax Cement
`nor Novo is directed to claim construction, but rather error correction. Novo
`holds that minor errors, as opposed to major errors, may be corrected by a
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`district court. We further note that minor errors of an applicant in
`connection with an issued patent, as AVS alleges is the case here, are
`correctible by a certificate of correction. 35 U.S.C. § 254.
`AVS does not point to the prosecution of the ’788 Patent for
`assistance in interpretation regarding this issue. As claims 8 and 9 are
`currently presented, “component of subsystem” is not clearly a
`typographical error. Therefore, we have no reason to rewrite “component of
`subsystem” under the context of “interpretation.”
`B. Anticipation by Scholl
`Toyota contends that claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and 18 of the
`’788 Patent are anticipated under 35 U.S.C. § 102(a) and (e) by Scholl. Pet.
`3-4, 18-28. To support this position, Toyota presents the testimony of
`Dr. Ralph Wilhelm, Jr.. Ex. 1008, ¶¶ 35-56.
`Regarding Toyota’s assertion of Scholl as prior art under 35 U.S.C.
`§ 102(a) or, alternatively, under 35 U.S.C. § 102(e), Toyota submitted as
`Exhibit 1002 a copy of U.S. Patent No. 5,400,018 to Scholl (“Scholl”),
`which shows on its cover an issue date of March 21, 1995. The cover of
`Scholl also indicates that the patent was granted from an application that was
`filed in the United States on December 22, 1992. AVS claims a priority date
`of June 7, 1995 for the ’788 Patent. Thus, based on this record, Scholl
`issued in the United States before the invention by AVS and, therefore, is
`prior art under 35 U.S.C. § 102(a). Additionally, based on this record,
`Toyota has also shown that Scholl was granted on an application filed in the
`United States before the invention by AVS and, therefore, is prior art under
`35 U.S.C. § 102(e).
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`For the reasons discussed below, we are persuaded that Toyota has
`made a sufficient showing that there is a reasonable likelihood that it would
`prevail with respect to claims 1, 3, 4, 6, 7, 8, 11, 15, 16, and 18 on the
`ground that those claims are anticipated by Scholl. We are not persuaded
`that Toyota has met the threshold test to institute inter partes review with
`respect to claim 9.
`
`Scholl Overview
`Scholl discloses generating by a vehicle a set of data relating to the
`vehicle’s operation, an embodiment of which is illustrated in Figure 3 of
`Scholl reproduced below:
`
`
`As shown in Figure 3, Scholl discloses a microprocessor-based
`monitor 210 that receives data from a variety of sources relating to the
`vehicle’s operation. Ex. 1002, col. 2, ll. 58-59, col. 3, ll. 18-21. The sources
`include sensors and electronic control modules (ECM). Id. at col. 3, ll. 21-
`29. This data is received by models 302, prognostics 304, and diagnostics
`308 implemented on the vehicle monitor 210. Id. at col. 3, ll. 48-51. Using
`sensor data, the models measure vehicle parameters, compare the
`measurements to modeled values, and use the differences in the prognostics
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`and diagnostics. Id. at col. 3, ll. 61-65. Management Information Manager
`306 is connected to sources as well as prognostics 304 and diagnostics 308
`to gather data and prepare data for transmission via satellite communication
`network 212 for expert interpretation 310. Id. at col. 3, ll. 58-60.
`1. Claims 1, 3, 4, 6, 7, 15, 16, and 18
`Independent claim 1 of the ’788 Patent is a method claim for
`providing status data related to vehicle maintenance. The first step of the
`method is monitoring vehicle components for a triggering event related to
`operation of vehicle components. The second step is transmission of a
`diagnostic or prognostic message about the component between the vehicle
`and a separate remote site upon occurrence of the triggering event.
`Independent claim 4 is a system claim similar to claim 1. A
`diagnostic module includes at least one sensor for vehicle components. The
`diagnostic module analyzes the sensor data to detect a triggering event
`related to a component. A wireless communications unit coupled to the
`diagnostic module transmits a diagnostic or prognostic message about the
`component between the vehicle and a remote site.
`The preamble of claim 1 of the ’788 Patent recites “a method for
`providing status data for vehicle maintenance.” Scholl discloses generating
`“a set of data” relating to vehicle operation. Ex. 1002, col. 1, ll. 14-18, col.
`2, ll. 58-68. Toyota relies on this disclosure to assert that the preamble is
`met by Scholl. Pet. 13. Toyota alleges Scholl also discloses the recitation of
`claim 1 requiring “monitoring for a triggering event,” by producing “a fault
`code in response to predetermined conditions.” Pet. 14 (citing Ex. 1001, col.
`4, ll. 5-25). Relying on the same portion of Scholl, Toyota contends that
`Scholl discloses the “diagnostic or prognostic analysis” recited in claim 1 by
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`using fault codes to identify out-of-range parameters. Id. Toyota expands
`on its position by noting prognostics analysis is disclosed by Scholl’s
`prognostics 304. Id. The Petition describes the cited portion of Scholl as
`analyzing the rate of change of certain parameters to identify “a fault
`condition about to happen” and “responsively generate fault codes.” Id.
`Scholl’s transceiver 214 communicates data from monitor 210 to
`satellite communications network 212. Ex. 1002, col. 3, ll. 39-41. Toyota
`alleges that this meets the “wireless communications unit” limitation of
`claim 1. Pet. 13. Toyota cites to the same section of Scholl as disclosing
`“initiating a wireless transmission . . . in response to the triggering event,” as
`recited in claim 1. Pet. 13-14.
`Scholl’s transceiver sends data over the communications network to
`third party specialists and experts to “generate repair instructions.” Ex.
`1002, col. 3, ll. 39-47. Toyota proffers this disclosure to meet claim 1’s
`limitation of wireless transmission between the “communications unit and a
`remote site.” Pet. 15. Toyota further supports its position on the
`“communications unit and a remote site” limitation by relying on Scholl’s
`disclosure of a fault code transmitted over satellite communications link to
`the remote location. Pet. 15 (citing Scholl, col. 6, ll. 15-23).
`Scholl transmits data from vehicle-to-vehicle specialists 220 and
`experts 222, who, in turn, “generate repair instructions.” Ex. 1002, col. 3, ll.
`39-47. Toyota regards this disclosure as satisfying the claimed “diagnostic
`or prognostic message” transmitted between the communications unit and
`the remote site. Pet. 15.
`AVS opposes institution of review based on Scholl. AVS first
`contends Scholl was disclosed and considered by the United States Patent
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`and Trademark Office during prosecution of the application for the ’788
`Patent. Prelim. Resp. 10 (citing Ex. 1007 at 293). In deciding whether to
`institute inter partes review, the Director is not required to defer to a prior
`determination by the Office, even one which considered the same prior art or
`arguments.5
`AVS contends that application of Scholl requires reliance on the
`principles of inherency to establish wireless transmission as a result of a
`“triggering event.” Prelim. Resp. 12-13. All that is required is that Scholl
`discloses each claim limitation expressly or inherently. For reasons
`discussed below, Toyota has presented sufficient evidence that Scholl
`expressly discloses initiating transmission upon occurrence of a triggering
`event.
`AVS acknowledges that Scholl discloses that fault codes are
`transmitted from the vehicle to the remote location in Scholl. Prelim. Resp.
`11-12 (citing Ex. 1002, 6:20-22). Nonetheless, AVS argues that the
`transmission is not initiated in response to a triggering event on the vehicle,
`as required by claim 1. As acknowledged by AVS, the cited portion of
`Scholl does disclose that fault codes are transmitted, but, contrary to AVS’s
`additional assertion, Scholl also discloses transmission initiated in response
`to a triggering event. Indeed, as shown in Scholl Figure 3, the data,
`including fault codes, i.e., a “triggering event” as we have construed the
`term, is processed and then transmitted.
`
`
`5 35 U.S.C. § 325(d) (“In determining whether to institute or order a
`proceeding under . . . chapter 31, the Director may take into account
`whether, and reject the petition because, the same or substantially the same
`prior art or arguments previously were presented to the Office.”) (emphasis
`added).
`
`
`
`17
`
`
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`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`Monitor 210 generates the fault code. Ex. 1002, col. 4, ll.5-25. The
`monitor is in satellite communication with the remote station. Id. at col. 3,
`ll. 39-41; Fig. 3. The remote station generates repair instructions, which are
`transmitted between the communications unit and the remote site. Id. at col.
`3, ll. 39-47. Accordingly, transmission occurs on a triggering event, the
`generation of a fault code.
`AVS also argues Scholl does not meet the limitation because Scholl
`
`is:
`
`silent about the timing of any transmission between the vehicle and
`the remote site. Accordingly, it is equally plausible that the
`transmission occurs at a predetermined time, e.g., once a day, etc.,
`unrelated to the actual occurrence of the triggering event, as opposed
`to being initiated as a response to a triggering event.
`
`Prelim. Resp. 13. AVS’s argument is not commensurate in scope with the
`claim language, which requires only that communication is initiated in
`response to the “triggering event.” While the triggering event occurs prior to
`transmission, the limitation does not specify the length of time between the
`two events. AVS’s argument that Scholl may have a time delay is not
`persuasive.
`Next, AVS alleges Scholl does not disclose performing diagnostics or
`prognostics on-board the vehicle. Prelim. Resp. 13-15. In support of that
`argument, AVS points to the fact that Scholl discloses that data analysis by
`specialists and experts occurs at a remote site. Id. (citing Ex. 1002, col 4:43-
`48, col. 6, l. 66-col. 7, l. 5). There is, however, no claim language that
`requires the diagnostics or prognostics to be “on-board” the vehicle or that
`precludes a remote analysis.
`
`
`
`
`18
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`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`Independent claim 4 includes limitations similar to those contained in
`claim 1. Toyota relies on many of the same citations to Scholl as it relies on
`for claim 1. Pet. 16-19. More specifically, claim 4 recites a “diagnostic
`module including at least one sensor for monitoring” components. Scholl
`discloses sensors to receive information about vehicle subsystems. Ex.
`1002, col. 3, ll. 48-51; see also col. 3, ll. 18-29. Toyota cites this portion of
`Scholl as meeting the limitation of a diagnostic module including a sensor.
`Pet. 17-18.
`Claim 4 further requires that the diagnostic module be “arranged to
`analyze monitoring data provided by said at least one sensor and detect a
`triggering event.” Scholl discloses that monitor 210 receives data from a
`plurality of sources on the vehicles, including sensors. Ex. 1002, col. 3, ll.
`20-22. Further, monitor 210 produces a fault code in response to
`predetermined conditions in the diagnostics or prognostics, or in response to
`an operator-generated signal. Ex. 1002, col. 4, ll. 5-25. Toyota cites these
`disclosures, as well as other parts of Scholl, as meeting the limitation. Pet.
`32.
`
`Toyota finds the limitation in claim 4 of “a wireless communications
`unit,” is met by Scholl. Pet. 18-19. In addition to what was relied on for
`claim 1, Toyota cites to Scholl column 6, lines 15 to 23 and Figure 2. Pet.
`19.
`
`AVS makes the same arguments for claim 4 as it makes for claim 1.
`See, e.g., Prelim. Resp. 11-13. For reasons already stated in connection with
`claim 1, AVS’s arguments are not persuasive.
`
`
`
`
`19
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`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`Claims 3, 6, 7, 15, 16, and 18 depend directly or indirectly from
`claims 1 or 4. Toyota presents evidence that claims 3, 6, 7, 15, 16, and 18
`are not patentable as anticipated by Scholl. Pet. 15-16, 19-21, and 23-25.
`Claim 9 depends from claim 7, which depends from claim 1, both of
`which are analyzed above. Claim 9 recites as an additional limitation “the at
`least one sensor is part of a diagnostic module on the vehicle, further
`comprising configuring the diagnostic module to analyze data obtained by
`the at least one sensor in order to predict failure of the at least one
`component of subsystem and generate the triggering event based on
`prognostic criteria” (emphasis added).
`Prognostics 304 of Scholl “analyze data in order to detect conditions
`that may lead to future problems.” Ex. 1002, col. 4, ll. 17-18. Monitor 210
`in Scholl receives information about the predetermined conditions from the
`prognostics and produces a fault code. Id., at col. 4, ll. 5-7. Although, as
`analyzed in connection with claim 8 below, prognostics 304 are “on the
`vehicle,” there is no disclosure that prognostics 304 actually “predict
`failure.” Scholl discloses that parameter changes “may be an indication of a
`fault condition about to happen.” Id., at col. 4, ll. 21-26. Therefore,
`prognostics “may be adapted to look at the rate of change” and generate fault
`codes. Id. Producing a fault code relating to prognostics, as disclosed in
`Scholl, is not predicting failure, as recited in claim 9.
`Toyota has established a reasonable likelihood that it will prevail on
`the issue of whether claims 1, 3, 4, 6, 7, 15, 16, and 18 are anticipated by
`Scholl. Toyota has not established a reasonable likelihood that it will prevail
`on the ground that Scholl anticipates claim 9.
`
`
`
`
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`20
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`Case IPR2013-00417
`Patent 8,036,788 B2
`
`
`2. Claim 8
`Claim 8 depends from claim 7, which depends from claim 1. Claim 7
`recites as a further limitation that the “monitoring for the triggering eve
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