UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
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`Petitioner,
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
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`Patent Owner.
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`Patent 8,036,788
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`__________________________________________________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`AMEND
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`Case No. IPR2013-00417
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`__________________________________________________________________
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`THE SUBSTITUTE CLAIMS ARE INDEFINITE ............................................. 1
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`THE SUBSTITUTE CLAIMS ARE NOT ENABLED ....................................... 1
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`III. AVS FAILS TO MEET ITS BURDEN OF PROOF ........................................... 2
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`IV. CRANE ANTICIPATES OR RENDERS OBVIOUS THE
`SUBSTITUTE CLAIMS ............................................................................................. 6
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`BAUMANN RENDERS THE SUBSTITUTE CLAIMS OBVIOUS .............11
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`SCHOLL OR ISHIHARA RENDERS THE SUBSTITUTE CLAIMS
`OBVIOUS ...................................................................................................................15
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`V.
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`VI.
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`TABLE OF AUTHORITIES
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`Page
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`Cases
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`Idle Free Sys., Inc., v. Bergstrom, Inc.,
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`IPR2012-00027, Paper 26 (P.T.A.B. June 11, 2013) .................................................. 2-3
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`Lockwood v. American Airlines, Inc.,
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`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................................... 3
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`Statutes
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`35 U.S.C. § 102 .................................................................................................................... 6, 11
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`35 U.S.C. § 103 ........................................................................................................................... 6
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`35 U.S.C. § 112 ...................................................................................................................... 1, 2
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`37 C.F.R. § 42.23 ....................................................................................................................... 1
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`37 C.F.R. § 42.24 ....................................................................................................................... 1
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`IPR2013-00417
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`Petitioner Toyota Motor Corporation (“TMC”) respectfully submits this
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`Opposition under 37 C.F.R. §§ 42.23 and 42.24 to AVS’s Motion to Amend (Paper
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`29, hereinafter “MTA”). AVS proposes to substitute claims 22-31 for claims 1, 3, 4,
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`6-8, 11, 15, 16, and 18 of U.S. 8,036,788 (Ex. 1001, “the ’788 Patent”), and requests
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`the original claims be cancelled, conceding unpatentability over Scholl (Ex. 1002) and
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`Ishihara (Ex. 1004). AVS adds two limitations: the vehicle must be “on a road,” and
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`the message transmitted remotely must identify the component or subsystem affected
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`and whether it needs repair or replacement. The Board should deny the motion
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`because: the claims are indefinite; the claims are not enabled; AVS fails to address
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`patentability over the relevant art; and the substitute claims are unpatentable.
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`I.
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`The Substitute Claims Are Indefinite
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`The substitute claims are unpatentable as indefinite under 35 U.S.C. § 112, ¶ 2,
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`because AVS’s proposed amendment is unclear if it requires prediction of when an
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`identified component needs repair as opposed to replacement (and vice versa), or if it is
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`sufficient to predict when the component needs to be either “repaired or replaced.”
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`II. The Substitute Claims Are Not Enabled
`While the claim language is unclear, AVS implies the substitute claims require
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`identification of a component and an indication of whether it needs to be repaired, as
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`opposed to replaced (and vice versa). (MTA at 11.) AVS’s expert also takes this narrow
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`view. (Ex. 1025, Kennedy Tr., p. 486, l. 7–p. 487, l. 13.) If the claims are definite, the
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`broadest reasonable interpretation (“BRI”) of the phrase “repaired or replaced” does
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`not require an on-board system to distinguish between the need to repair versus the
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`need to replace. Instead, it is enough to determine that a component either needs
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`repair or replacement. However, to the extent AVS’s proposed amended claims
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`actually require an on-board system that distinguishes between the need for repair and
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`the need for replacement, the specification does not support such a claim or explain
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`how to determine whether a component needs repair as opposed to replacement.
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`There is nothing in the claims limiting the type of analysis or indicating which
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`components to analyze; nor does AVS cite exemplary code, an algorithm, or anything
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`enabling one of skill to determine which analysis to apply to which component, or
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`how to determine whether that component needs repair as opposed to replacement
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`(and vice versa). Indeed, AVS’s expert admits that no cited portions of related U.S.
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`Patent No. 7,650,210, whose specification largely overlaps with that of the ’788
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`patent, discloses algorithms for processing sensor data into an indication that a
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`component needed to be repaired or replaced. (See Ex. 1025, Kennedy Tr., p. 487, l.
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`15 – p. 501, l. 16.) And, in IPR2013-00416, AVS proffered expert testimony that the
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`creation of an algorithm able to determine whether a component needs to be repaired
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`or replaced would require more than routine efforts by one of skill. (See IPR2013-00416,
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`Ex. 2007, Loudon Decl., at ¶ 61.) Thus, if construed as AVS implies, the claims are
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`unpatentable under § 112, ¶ 1.
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`III. AVS Fails to Meet Its Burden of Proof
`AVS fails its burden, Idle Free Sys., Inc., v. Bergstrom, Inc., IPR2012-00027, Paper
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`26 at 8 (P.T.A.B. June 11, 2013), to show the patentable distinction of its claims.
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`First, AVS only analyzes the 1995 state of the art. But, AVS does not establish
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`it is entitled to a date earlier than August 2007. While AVS claims priority to a June
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`1995 application, which allegedly supports substitute claims 22 and 24, (Ex. 2007), it
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`points only to scattered disclosure in its August 2007 application and then blithely
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`contends that the June 6, 1995, application contains “similar disclosures.” (MTA, at
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`8.) With respect to the substitute dependent claims, AVS provides no analysis, just
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`citation to scattered pages of the applications. (Id. at 8-9.) Even if AVS had provided
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`the required analysis for its claims, the 2007 application was not: (i) a straight
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`continuation back through the 1995 application; (ii) co-pending with that application;
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`or (iii) a C-i-P of a single earlier application. Rather, during prosecution, applicant
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`cross-referenced 32 applications as “continuations-in-part.” AVS fails to show the
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`required continuity of sufficient disclosure in each intervening application. See
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`Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). The
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`majority of patent applications through which AVS claims priority are not even in
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`evidence.
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`Second, even if AVS is accorded a 1995 date, it must establish patentability
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`over the actual 1995 state of the art. However, its description of this art is incorrect
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`and incomplete. Therefore, it fails to prove the substitute claims are patentable,
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`nonobvious, or an advance over the art. AVS asserts that “[t]he prior art in 1995 as it
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`related to on-board vehicle diagnostics was primitive”; that “fault codes were not
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`being used [in 1995] to . . . identify whether a particular component needed to be
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`repaired or whether the particular component needed to be replaced”; and that its
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`expert “reviewed the prior art known to AVS, e.g., prior art cited on the front of the
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`’788 and related patents, and references cited in invalidity contentions submitted by
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`TMC in the co-pending litigation.” (MTA, at 9-11; see also Ex. 2002, Kennedy Decl., ¶
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`57.) The art, including the references that AVS’s expert reviewed, was far more
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`developed. (Ex. 1026, Andrews Decl., ¶¶ 31-72.)
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`By the late ’70s, inventors developed solutions to the problem of giving drivers
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`information regarding whether any malfunctioning/failed components needed repair
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`or replacement. For instance, U.S. 4,267,569 to Baumann et al. discloses a system
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`which functioned “during operation of the vehicle,” (Ex. 1020, Baumann, at col. 4, ll.
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`12-20), “permit[ted] diagnosis of operation and function parameters in a motor
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`vehicle,” and provided “to an operator [via] a display” the “resulting information . . .
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`includ[ing] various instructions, e.g.[,] repair instructions or a trouble shooting
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`sequence based on the diagnosis,” (id. at Abstract), or “a replacement parts list,” (id. at
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`col. 5, ll. 58-61). By the ’90s, the art taught that systems having the limitations of the
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`substitute claims were common. For example, U.S. 5,592,614 to Peters, discloses a
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`vehicle “fault identification system” “for identifying at least one faulty component.”
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`(Ex. 1021, Peters, at col. 1, l. 1; col. 2, l. 28.) This system “is extensible and may be
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`connected to allied systems such as on-line workshop manuals, parts ordering
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`systems, and systems intended to decide whether to replace or repair.” (Id. at col. 10, l.
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`67 – col. 11, l. 4.) Further, a 1992 article by Bryant, “A Review of the Potential for
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`Vehicle On-Board Diagnostic Safety Systems,” explains that “[i]t is a fairly easy
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`technological exercise to use sensors to detect brake pad wear, tire tread depth, tire
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`temperature, inflation, or even steering system wear,” and that “[i]t is also reasonably
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`easy to supply that data to the driver and predict service requirements using
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`illuminated displays, i.e., ‘tire rotation due in 1,000 miles,’ or, ‘LF tire will need
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`replacement in 5,000 miles’, or ‘Check LF tire condition’.” (Ex. 1023, “Bryant,” at
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`pp. 100-101.) In fact, by the late ’80s, even commercially available vehicles included
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`displays able to inform a driver to repair or replace vehicle components. For instance,
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`the owner’s manual for the 1988 Buick Riviera describes a vehicle with an “Electronic
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`Control Center” that was able to inform the driver of failures such as a “climate
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`control problem” or a “Brake pump problem” that require a “service check.” And,
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`the display could inform the driver that the “brake fluid [is] low” and should be
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`replaced. (Ex, 1029, “Riviera,” at 2-36; 2-44; 2-46; 2-48.) A similar display was
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`described in Ortega et al., “An Interactive, Reconfigurable Display System for
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`Automotive Instrumentation,” IEEE Transactions on Consumer Electronics, Vol.
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`CE33, No. 1, pp. 1-13 (Feb. 1987) (Ex. 1024, “Ortega”). Ortega describes a vehicle
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`with a “universal display” providing the driver with various “diagnostic[]”
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`information, including “vehicle status, failure codes, service, etc.” (Id. at 2.) This
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`display could inform the driver that, among other things, an “engine controls problem
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`[had been] detected” or that a “charging system problem [had been] detected” and
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`that a “service check [is] required.” (Id. at 9.) Further, Ortega could display that a
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`problem with a “headlamp,” “tail lamp,” or “parking lamp” had been detected and
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`that the appropriate bulb should be “replace[d].” (Id. at 10.) And, another reference,
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`U.S. 5,450,321 to Crane (Ex. 1022, “Crane”), which was identified in the Invalidity
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`Contentions served by TMC in a co-pending litigation (Exs. 1027, 1028), describes the
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`very subject matter AVS now attempts to claim. AVS fails to distinguish Crane,
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`which its expert does not even remember. (Ex. 1025, Kennedy Tr, p. 126, ll. 6-14; see
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`generally MTA; Ex. 2002, Kennedy Decl.)
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`IV. Crane Anticipates or Renders Obvious the Substitute Claims
`Applying either AVS’s expert’s narrow view of the proposed amended claims
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`or the BRI, Crane anticipates the claims under 35 U.S.C. § 102(b) or (e), or renders
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`them obvious under § 103(a), in view of an ordinary artisan’s knowledge, or in
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`combination with prior art of record, i.e., Scholl. (Ex. 1026, Andrews Decl., ¶¶ 73-81,
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`93-98, 102-08.) Crane recognizes that prior systems “function[] only when the vehicle
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`is stationary,” and thus did “not tell the driver what to do while the driver is driving.”
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`(Ex. 1022, Crane, col. 4, ll. 28-30.) Crane improves this art by “continuously,” and in
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`“realtime,” monitoring the “powered vehicle[’s]” components, (see, e.g., id. at Abstract),
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`“[a]s long as the vehicle is being driven,” (id. at col. 10, ll. 7-9). Crane uses “sensors
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`relating to realtime variables,” including a “starter solenoid sensor,” a “starter switch
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`sensor,” a “battery sensor,” and a “water pump sensor.” (Id. at col. 2, ll. 28-30; col. 6,
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`ll. 31-44.) A “microprocessor,” (id. at Abstract), receives and analyzes the sensor data
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`in order to make “diagnostic” determinations, (id. at col. 7, ll. 3-6; col. 8, ll. 10-19; col.
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`18, ll. 43-46), regarding “parts degradation,” (id. at col. 5, ll. 35-37), a “defective”
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`component, (id. at col. 14, ll. 11-36; ), or the “breakdown of a component,” (id. at col.
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`18, ll. 31-35). After diagnosis, the Crane system outputs a diagnostic “signal related to
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`the condition information of the components of the powered vehicle,” (id. at col. 5, ll.
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`58-59), which includes information regarding which components, if any, require either
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`repair or replacement. (Id. at col. 5, ll. 45-47; col. 10, l. 57 – col. 11, l. 29; col. 12, ll. 7-
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`24; col. 12, l. 64 – col. 13, l. 45; col. 14, ll. 17-26; col. 18, ll. 22-46; Figs. 4, 6.) This
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`same signal is then transmitted to an interested remote location. (Id. at col. 8, ll. 29-
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`40; Fig. 1.) Crane differentiates between the need to repair versus replace by, for
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`example, monitoring the vehicle’s “starter system.” (Id. at col. 10, ll. 53-65.) In this
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`example, Crane describes diagnosing the condition of the starter and instructing the
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`driver via a display to, “Replace” parts (such as the “starter switch”) or “Repair” parts
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`(such as the “starter motor”). (Id. at col. 10, l. 65–col. 11, l. 29.) See summary chart:
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`Claim 22
`A method
`for
`providing
`status data
`for vehicle
`maintenanc
`e,
`comprising:
`monitoring
`for a
`triggering
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`Claim 24
`A system for
`providing status
`data for vehicle
`maintenance,
`comprising:
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`Disclosure in Crane (Ex. 1022)
`See, e.g., col. 1, ll. 17-21 (“a realtime management
`system for identifying system inefficiencies and
`subsystems requiring repair through the use of
`realtime interactive computer analysis”).
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`a diagnostic
`module including
`at least one
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`See, e.g., Abstract (referencing a “microprocessor”
`that receives “input” from “[a] plurality of input
`sensors . . . connected to components of the
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`IPR2013-00417
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`Claim 22
`event on a
`vehicle
`during
`operation
`of the
`vehicle on a
`road having
`a wireless
`communica
`tions unit,
`the
`triggering
`event
`relating to a
`diagnostic
`or
`prognostic
`analysis of
`at least one
`of a
`plurality of
`different
`component
`s or
`subsystems
`of the
`vehicle; and
`
`Claim 24
`sensor for
`monitoring a
`plurality of
`different
`components or
`subsystems of the
`vehicle during
`operation of the
`vehicle on a road,
`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
`
`initiating a
`wireless
`transmissio
`n between
`the
`
`a wireless
`communications
`unit arranged to
`interface with a
`wireless
`
`Disclosure in Crane (Ex. 1022)
`powered vehicle” and utilizes “programs” to assess
`those sensor inputs. “The microprocessor is
`connected to the display to transmit a condition
`output to the display. . . . The operator of the
`powered vehicle has direct access to information
`generated from the management system in order to
`enable the operator to make reasonable, logical
`management decisions to cure costly problems and
`inefficiencies quickly and reliably.”); Figs. 1-8D;
`col. 1, ll. 17-21 (“[T]he present invention relates to a
`realtime management system for identifying system
`inefficiencies and subsystems requiring repair
`through the use of realtime interactive computer
`analysis.”);
`col. 2, ll. 28-30 (referencing “realtime sensors
`relating to realtime variables affecting the operation
`of the powered system”);
`col. 10, ll. 7-11 (“As long as the vehicle is being
`driven, the system is continually analyzing and
`sensing the realtime inputs 54. This provides the
`operator of the vehicle with information never
`before available.”);
`col. 18, ll. 29-46 (“The present invention provides an
`automatic, realtime, continuous evaluation of
`systems within the powered vehicle. The
`management system of the present invention will
`continuously tell the operator of the degradation of
`the system or of an actual breakdown of a
`component that prevents the system from
`functioning properly. . . . [T]he present invention
`acts as a diagnostic instrument and allows the
`unskilled operator of the powered vehicle to
`determine the repair which is necessary.”).
`See, e.g., col. 5, ll. 35-47 (noting the system provides a
`“continual update of system or parts degradation” to
`allow the “operator” to “mak[e] a proper decision of
`the need for repairs” or “whether or not to replace”
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`IPR2013-00417
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`Claim 22
`communica
`tions unit
`and a
`remote site
`separate
`and apart
`from the
`vehicle in
`response to
`the
`triggering
`event, the
`transmissio
`n including
`a diagnostic
`or
`prognostic
`message
`about the at
`least one
`component
`or
`subsystem;
`wherein the
`diagnostic
`or
`prognostic
`message
`includes an
`identificatio
`n of the at
`least one
`component
`or
`subsystem
`and an
`identificatio
`n of
`whether the
`at least one
`
`Claim 24
`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,
`wherein the
`diagnostic or
`prognostic
`message includes
`an identification
`of the at least one
`of the plurality of
`different
`components or
`subsystems of the
`vehicle and an
`identification of
`whether the at
`least one of the
`
`Disclosure in Crane (Ex. 1022)
`vehicle components);
`col. 6, ll. 31-52 (referencing numerous sensors and
`noting that the “microprocessor is programmed . . .
`to transmit[] a signal to the display indicative of a
`cause of the single abnormal parameter. The display
`can also indicate the action which is necessary so as
`to cure the cause of the single abnormal
`parameter.”);
`col. 8, ll. 29-41 (“If the management system 50 is
`used in connection with an external monitoring
`system, then the microprocessor 52 may be
`connected to a transmitter/receiver 62. The
`transmitter/receiver 62 is suitable for transmitting
`the signal from the microprocessor 52 to another
`location 64. . . . The transmitter/receiver 62 can be
`connected to the transmitter/receiver 64 by a
`suitable satellite link, or other means of
`communication.”);
`col. 10, ll. 57-60; col. 11, ll. 27-29, 64-66; col. 12, ll.
`7-9, 23-30 (“The display 106 provides information
`to the operator of the powered vehicle as to the
`status of the starter system and the repair needed for
`the starter system problems.”; “The display 106 will
`indicate a bad starter motor (e.g., ‘Repair Starter
`Motor’).”; “The processor 122 will analyze each of
`the inputs in order to tell the operator of the vehicle
`the item to repair.”; “The display 124 will advise the
`operator to repair the radiator or hoses.”; “The
`display 124 can also provide the indication to
`‘Replace Belt’. . .”);
`col. 14, ll. 32-35 (“Additionally, an audio signal 190
`can be transmitted when the battery is defective.
`The audio signal provides an additional cue to the
`operator of the powered vehicle to replace the
`battery.”);
`col. 18, ll. 22-28 (“[D]isplay number 1 recites
`‘Continued Use of Accessories Makes Vehicle
`Difficult to Start’. Display number 2 recites ‘Battery
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`IPR2013-00417
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`Claim 24
`Claim 22
`plurality of
`component
`different
`or
`components or
`subsystem
`subsystems of the
`should be
`vehicle should be
`either
`either repaired or
`repaired or
`replaced.
`replaced.
`Claim 23
`The method of claim
`22,
`wherein the triggering
`event is a failure,
`predicted failure or fault
`code generation of the
`at least one component
`or subsystem.
`
`Claim 26
`The method of claim
`22,
`wherein the step of
`monitoring for the
`triggering event
`comprises providing at
`least one sensor that
`monitors the at least
`one component or
`subsystem.
`
`Claim 27
`The method of claim
`26,
`wherein the at least one
`sensor is part of a
`diagnostic module on
`the vehicle, further
`comprising configuring
`
`Claim 25
`The system of claim
`24,
`wherein the
`triggering event is a
`failure, predicted
`failure or fault code
`generation of the at
`least one
`component or
`subsystem.
`Claim 28
`The method of
`claim 22,
`wherein the step of
`monitoring for the
`triggering event
`comprises providing
`a plurality of
`different sensors
`that monitor the at
`least one
`component or
`subsystem.
`Claim 30
`The system of claim
`24,
`wherein said
`diagnostic module
`is arranged to
`analyze monitoring
`data provided by
`
`Disclosure in Crane (Ex. 1022)
`OK’ or ‘Battery Marginal’ or ‘Battery Replace’ along
`with ‘% CCA=xxx’. Display number 3 reads ‘Charge
`System O.K.’. Display number 4 reads ‘Service
`Charging System’.”);
`Fig. 1 (two “transmitter[s]/receiver[s]”
`communicating over a “satellite link”)
`Disclosure in Crane (Ex. 1022)
`See above
`
`Crane (Ex. 1022)
`See above
`
`See, e.g., col. 18, ll. 31-35 (“The
`management system of the present
`invention will continuously tell the
`operator of the degradation of the
`system or of an actual breakdown
`of a component that prevents the
`system from functioning
`properly.”).
`Claim 31
`The system
`of claim 24,
`wherein said
`diagnostic
`module
`comprises a
`plurality of
`different,
`sensors.
`
`See, e.g., Abstract
`(“[a] plurality of
`input sensors are
`connected to
`components of the
`powered vehicle to
`transmit condition
`information to the
`microprocessor”);
`Figs. 1-7.
`Disclosure in Crane (Ex. 1022)
`See above
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`See, e.g., col. 6, ll. 45-52 (“[T]he
`microprocessor interacts each of
`the inputs from the sensors. The
`microprocessor is programmed so
`as to interact the realtime
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`said at least one
`sensor and detect
`the triggering event
`relating to
`diagnostic analysis
`of the at least one
`component or
`subsystem of the
`vehicle.
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`parameters in the event of a single
`abnormal parameter. The
`microprocessor transmits a signal
`to the display indicative of a cause
`of the single abnormal parameter.
`The display can also indicate the
`action which is necessary so as to
`cure the cause of the single
`abnormal parameter.”).
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`the diagnostic module
`to analyze data obtained
`by the at least one
`sensor in order to
`diagnose operability of
`the at least one
`component of
`subsystem and generate
`the triggering event
`based on diagnostic
`criteria.
`Claim 29
`The system of claim 24, See above
`See, e.g., col. 18, ll. 29-40 (“The present invention provides
`wherein said diagnostic
`module is arranged to
`an automatic, realtime, continuous evaluation of systems
`analyze monitoring data
`within the powered vehicle. . . . The invention provides
`provided by said at least
`the information to the operator of the vehicle so that the
`one sensor and detect
`operator of the vehicle can decide when to fix the
`the triggering event
`problem and allows the operator of the vehicle to shop
`relating to predictive,
`around for costs.”).
`prognostic analysis of
`the at least one
`component.
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`Disclosure in Crane (Ex. 1022)
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`If Crane does not expressly disclose claim 29’s “predictive, prognostic
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`analysis,” Scholl discloses an on-board system that engages in this type of analysis.
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`(Ex. 1002, Scholl, col. 3, ll. 48-51; col. 4, ll. 17-25.) It would have been obvious to
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`combine Crane with Scholl because they disclose very similar diagnostic systems with
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`interchangeable components, and because Scholl explains that use of “prognostics”
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`adds “the ability to prevent a breakdown before it occurs.” (Id., at col. 1, ll. 30-31.)
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`Thus, claim 29 is also obvious. (Ex. 1026, Andrews Decl., ¶ 81.)
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`V.
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`Baumann Renders the Substitute Claims Obvious
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`Baumann is prior art under 35 U.S.C. §§ 102(a), (b), or (e), and, applying either
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`of the ordinary artisan’s knowledge, Scholl, or Ishihara. (Ex. 1026, Andrews Decl.,
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`¶¶ 82-92.) Baumann’s system has “[v]arious sensors,” (Ex. 1020, Baumann, at col. 5,
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`l. 15; Fig. 1), to measure engine parameters, such as “speed of rotation,” “crankshaft
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`position,” battery “voltage,” “temperature,” “intake air volume,” “throttle plate
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`setting,” and engine “starting switch,” (id. at col. 3, ll. 7-22; Fig. 1). The
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`“microcomputer system,” (id. at col. 5, ll. 12-15), compares “the diagnostic program
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`data with actual function dependent vehicle data,” (id. at col. 4, ll. 66-68), in order to
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`output to the driver a “diagnosis,” (id. at col. 5, l. 2), which includes “information
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`regarding defects which may have appeared, and which repairs should be made
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`and/or which parts ordered replaced,” (id. at col. 5, ll. 7-9). It functions “during
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`operation of the vehicle.” (Id. at col. 4, l. 14.) Baumann only fails to disclose the
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`“wireless” limitations, which are taught by Scholl and Ishihara. This chart is merely
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`exemplary (i.e., the dependent claims are anticipated similarly):
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`Claim 22
`A method for
`providing status
`data for vehicle
`maintenance,
`comprising:
`
`Claim 24
`A system for providing
`status data for vehicle
`maintenance,
`comprising:
`
`monitoring for a
`triggering event
`
`a diagnostic module
`including at least one
`
`Disclosure in Baumann (Ex. 1020)
`See, e.g., Abstract (“[T]o permit diagnosis
`of operation and function parameters in
`a motor vehicle which is equipped with
`an electronic microprocessor control
`system without the necessity of
`providing in the diagnostic equipment
`substantial additional memory
`capability, the control system includes a
`sub-program for diagnosis.”).
`See, e.g., col. 2, ll. 4-7 (“The subprogram
`in the main program permits
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`Claim 22
`on a vehicle
`during operation
`of the vehicle on
`a road 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
`
`Claim 24
`sensor for monitoring a
`plurality of different
`components or
`subsystems of the
`vehicle during operation
`of the vehicle on a road,
`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
`
`initiating a
`wireless
`transmission
`between the
`communications
`unit and a remote
`site separate and
`apart from the
`vehicle in
`response to the
`
`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
`
`Disclosure in Baumann (Ex. 1020)
`interrogation or checking of various
`sensing locations and the corresponding
`values can then be displayed or further
`processed.”); Figs. 1, 2;
`col. 3, ll. 7-22 (measurement of “speed
`of rotation,” “crankshaft position,”
`battery “voltage,” “temperature,”
`“intake air volume,” “throttle plate
`setting,” and engine “starting switch”);
`col. 4, ll. 7-20 (referencing a “diagnostic
`arrangement”; “When a diagnosis
`command, for example derived . . .
`periodically during operation of the
`vehicle based on time or distance
`travelled, or generated by the diagnostic
`program itself, is given to the
`input/output unit via the input 59 and
`the terminal 60, then a diagnosis of
`operation of engine and/or the vehicle
`is carried out . . . .”);
`col. 5, ll. 15-17. 46-50 (“Various sensors
`are connected to the microcomputer . . .
`.”; “The data supplied to the motor
`vehicle sensors are edited, e.g. suitably
`wave-shaped, filtered, digitized and the
`like, and processed for use in the
`diagnostic equipment 66 for a diagnosis
`program running therein.”).
`See, e.g., col. 5, ll. 5-9 (“Instruction and
`use tables for the diagnostic equipment
`can set forth to the operator, in addition
`to engine data, information regarding
`defects which may have appeared, and
`which repairs should be made and/or
`which parts ordered replaced.”);
`col. 5, ll. 54-61 (“The input/output
`apparatus 67, connected with the
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`Claim 22
`triggering event,
`the transmission
`including a
`diagnostic or
`prognostic
`message about
`the at least one
`component or
`subsystem;
`wherein the
`diagnostic or
`prognostic
`message includes
`an identification
`of the at least one
`component or
`subsystem and an
`identification of
`whether the at
`least one
`component or
`subsystem should
`be either repaired
`or replaced.
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`Disclosure in Baumann (Ex. 1020)
`diagnostic equipment 66, can store and
`read out a wide range of instructions or
`information to the testing operator
`which may require extensive memory
`storage. For example, a diagram for a
`trouble shooting search, a replacement
`parts list, or a service instruction for the
`vehicle can be stored and then read out,
`or displayed.”).
`
`
`Claim 24
`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, wherein the
`diagnostic or prognostic
`message includes an
`identification of the at
`least one of the plurality
`of different components
`or subsystems of the
`vehicle and an
`identification of
`whether the at least one
`of the plurality of
`different components or
`subsystems of the
`vehicle should be either
`repaired or replaced.
`
`It would have been obvious to add “a transmission device” to Baumann. Such
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`a device was not common in in the ’70s; but, by 1995, it was commonplace in vehicle
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`diagnostics systems (see, e.g., Scholl and Ishihara). (Ex. 1026, Andrews Decl., ¶ 88.)
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`And, if Baumann does not expressly disclose claim 29’s “predictive, prognostic
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`analysis,” Scholl discloses an on-board system that engages in this type of analysis.
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`(Ex. 1002, Scholl, col. 3, ll. 48-51; col. 4, ll. 17-25.) It would have been obvious to
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`combine Baumann and Scholl for the same reasons discussed above in connection
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`with Crane; and claim 29 is, thus, obvious. (Ex. 1026, Andrews Decl., ¶ 92.)
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`VI. Scholl or Ishihara Renders the Substitute Claims Obvious
`Applying either AVS’s expert’s narrow view or the BRI, the claims are obvious
`
`over Scholl or Ishihara, in view of the knowledge of one of ordinary skill, Crane,
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`Baumann, Bryant, Riviera, or Ortega. (Ex. 1026, Andrews Decl., ¶¶ 93-108.) AVS
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`concedes that either Scholl or Ishihara anticipates the existing claims; and, it would
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`have been obvious to improve them by adding (from Crane, Baumann, Bryant,
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`Riviera, or Ortega) AVS’s proposed limitations: (1) diagnosis “during operation . . . on
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`a road” and