`571-272-7822 Entered: September 25, 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
`
`- - - - - -
`
`Cases IPR2013-00414, IPR2013-00415, IPR2013-00416,
`and IPR2013-00417
`Patent Nos. 7,630,802 B2; 7,650,210 B2; 8,019,501 B2;
`and 8,036,788 B2
`- - - - - -
`
`Record of Oral Hearing
`Held: Thursday, August 14, 2014
`
`Before: JAMESON LEE, BARBARA A. PARVIS, GREGG
`ANDERSON (via video link), Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday, August 14, 2014, at
`
`1:00 p.m., Hearing Room A, at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia.
`
`
`
`
`
`
`
` 1 APPEARANCES:
` 2
` 3 ON BEHALF OF THE PETITIONER:
` 4
` 5 A. ANTONY PFEFFER, ESQ.
` 6 K. PATRICK HERMAN, ESQ.
` 7 THOMAS R. MAKIN, ESQ.
` 8 Kenyon & Kenyon LLP
` 9 One Broadway
` 10 New York, New York 10004-1007
` 11 212-425-5288
` 12
` 13 ON BEHALF OF THE PATENT OWNER:
` 14
` 15 THOMAS J. WIMBISCUS, ESQ.
` 16 SCOTT P. McBRIDE, ESQ.
` 17 CHRISTOPHER SCHARFF, ESQ.
` 18 McAndrews Held & Malloy Ltd.
` 19 500 West Madison Street
` 20 34th Floor
` 21 Chicago, Illinois 60661
` 22 312-775-8000
` 23
` 24 DAVID ROSMANN
` 25 American Vehicular Sciences LLC
`
` 2
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 P R O C E E D I N G S
` 2 (1:00 p.m.)
` 3 JUDGE LEE: Welcome to the Board. This is
` 4 actually a consolidated oral argument for four inter partes
` 5 reviews. They all have the same caption, Toyota Motor Corp.
` 6 versus American Vehicular Sciences, LLC. The numbers are IPR
` 7 2013-00414, 415, 416, and 417.
` 8 And just to go over some ground rules, the
` 9 Petitioner will argue first, Patent Owner second. And
` 10 whatever time the Petitioner reserves, the Petitioner may use
` 11 in the last go-around.
` 12 And each time counsel is up you may talk about any
` 13 issue in any one of the four cases. That's why this is a
` 14 consolidated oral argument. And each side has a total of two
` 15 hours of oral argument time.
` 16 So the Petitioner can reserve time for rebuttal
` 17 and, unfortunately, the Patent Owner has no surrebuttal. So
` 18 you can either use up all of your time or you will be wasting
` 19 some of your time at the end.
` 20 Because we can go as long as four hours, I think
` 21 perhaps during the first switch-over maybe we should take a
` 22 recess so counsel can finish setting up or use the restroom
` 23 at that opportunity. So when the Petitioner is finished and
` 24 before we start with the Patent Owner, we will take a
` 25 10-minute recess.
` 3
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 Will the counsel like to introduce your partners
` 2 and guests starting with Petitioner?
` 3 MR. PFEFFER: Antony Pfeffer from Kenyon & Kenyon,
` 4 lead counsel for Toyota Motor Corporation. Doing the
` 5 arguments today for the 414 through 416 will be my partner
` 6 Patrick Herman, also of Kenyon & Kenyon, and Mr. Tom Makin of
` 7 Kenyon & Kenyon will be handling the 417 issues today, Your
` 8 Honor.
` 9 JUDGE LEE: Thank you.
` 10 MR. WIMBISCUS: Good morning, Your Honor. Thomas
` 11 Wimbiscus on behalf of AVS, American Vehicular Sciences. I
` 12 will be arguing today along with my partner, Scott McBride.
` 13 We will split up the cases two and two.
` 14 Also with us from the McAndrews law firm is Mr.
` 15 Chris Scharff, and from American Vehicular Sciences we have
` 16 David Rosmann.
` 17 JUDGE LEE: Thank you. Welcome to the Board. Any
` 18 time you are ready, counsel for Petitioner, you may proceed.
` 19 MR. HERMAN: Good afternoon, Your Honors. Again,
` 20 my name is Patrick Herman. I'm going to be addressing the
` 21 first of the three IPR's that are going to be discussed
` 22 today, the 414, the 415, and the 416 IPR's.
` 23 And unless the Board would like to hear them in a
` 24 different order, I am going to start with the first of those,
` 25 the 414 IPR. This relates to the '802 patent. And here
` 4
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 there are two independent claims at issue. The first is
` 2 claim 1, that's a system claim, and the second is claim 7,
` 3 and that's a method claim.
` 4 And both of these generally relate to a system
` 5 that monitors components with sensors on a vehicle, includes
` 6 a processing module, and then a communications system to
` 7 automatically communicate information about the presence and
` 8 identity of non-optimally-operating components to a remote
` 9 site, and a notification system.
` 10 Now, claims 5, 6, 11 and 13 are dependents. And
` 11 claim 5 is the only dependent claim that the parties have a
` 12 particular dispute about. And that dependent claim requires
` 13 a user interactive device that provides a display on which
` 14 messages relating to the monitor components appear.
` 15 The next slide I have provided a summary of the
` 16 grounds that are at issue. First, Asano, it is Petitioner's
` 17 position that Asano anticipates all of the claims at issue
` 18 with the exception of claim 5.
` 19 JUDGE LEE: Mr. Herman, just so the court reporter
` 20 will record the number of the slides, so when we look back we
` 21 will know which one you are talking about, so instead of
` 22 saying "this slide," say the number.
` 23 MR. HERMAN: Slide 5 -- thank you, Your Honor --
` 24 slide 5 provides a summary of the grounds that are at issue.
` 25 And as you can see, it is our position that Asano anticipates
` 5
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 all of the claims with the exception of claim 5.
` 2 And that claim, which again requires a user
` 3 interactive device, is rendered obvious by the combination of
` 4 Asano and Gormley. Now, I will start with anticipation by
` 5 Asano.
` 6 Asano generally discloses a system that does a
` 7 basic onboard diagnosis and then transmits an abnormal code
` 8 from the vehicle to a remote site for further analysis. So
` 9 it is generally talking about computer load sharing.
` 10 And I'm going to focus my discussion here today on
` 11 the limitations that AVS argues are missing from Asano. And
` 12 there are three of them. So the first thing that AVS argues
` 13 is that Asano's onboard processor is not making a sufficient
` 14 or specific enough diagnosis.
` 15 They next argue that the transmission from the
` 16 vehicle in Asano to the remote site does not occur
` 17 automatically.
` 18 Last, they argue that the notification as provided
` 19 by Asano's system is insufficient.
` 20 So I will talk about the first of those disputes
` 21 first. And if we will turn to slide 6, here is a summary of
` 22 AVS' position. This is from the response. Here AVS explains
` 23 that the abnormal codes in Asano could merely be an
` 24 indication that a parameter on the vehicle is outside a
` 25 preset range.
` 6
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 Then AVS goes on to analogize Asano's abnormal
` 2 codes with fault codes that were commonly generated by
` 3 vehicles as of June 1995.
` 4 Now, Petitioner believes there are two things
` 5 apparent from this. The first is that AVS is reading the
` 6 '802 patent claims very narrowly. They are requiring the
` 7 onboard processor to make a very particular determination.
` 8 They want the onboard processor to identify the specific
` 9 parts, not necessarily the component, the specific part of
` 10 the vehicle that is failing and actually needs to be
` 11 repaired.
` 12 And they are also requiring absolute certainty for
` 13 all monitored parameters that are collected by the onboard
` 14 processor. They want that processor to be able to determine
` 15 exactly what is wrong with the vehicle. But as we will see,
` 16 the claims don't require anything like this.
` 17 Further, these arguments show that AVS is ignoring
` 18 the actual explicit disclosure of Asano. Asano expressly
` 19 describes far more than just measuring abstract parameters
` 20 with no ties to vehicle components.
` 21 So AVS is essentially replacing the words on the
` 22 page in Asano with its own view and its own expert's view of
` 23 the supposedly limited capabilities of onboard diagnostic
` 24 systems in vehicles in 1995.
` 25 But this isn't how you analyze anticipation. We
` 7
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 don't rewrite the prior art. Instead you actually have to
` 2 consider what the reference itself says. And you also see,
` 3 if you review AVS' brief, repeated discussion of the doctrine
` 4 of inherency. But this is just a red-herring and it is
` 5 nothing more than a symptom of AVS' improper analysis of the
` 6 prior art.
` 7 Toyota is not relying on the doctrine of
` 8 inherency. Each of the limitations that AVS claims is
` 9 missing from the prior art is actually expressly and
` 10 explicitly disclosed in Asano and the other references we are
` 11 talking about today.
` 12 JUDGE LEE: Mr. Herman, the Patent Owner's
` 13 argument here you highlighted is that Asano could merely be
` 14 an indication that the parameters are outside the preset
` 15 range.
` 16 But does Asano disclose a different embodiment or
` 17 implementation where it actually monitors a particular
` 18 component and tells you this is the component that is outside
` 19 of the range?
` 20 MR. HERMAN: Yes, it does. And if Your Honor
` 21 would like, I can start with that portion of my presentation.
` 22 Why don't we move on to slide 9. And as we will
` 23 see going through this, Asano actually monitors specific
` 24 vehicle components, including the engine, the transmission
` 25 and the suspension. And it monitors parameters that relate
` 8
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 specifically to those components.
` 2 And they have been chosen because those parameters
` 3 indicate that those particular components are operating
` 4 non-optimally or are failing. So Asano's system measures and
` 5 monitors a collection of components with a specific purpose
` 6 of determining that specific components, not just abstract
` 7 parameters, are operating non-optimally.
` 8 JUDGE LEE: So what is the import of the argument
` 9 you were focusing on, that they say that it could merely be
` 10 an indication of a general condition attributed to a number
` 11 of parameters? Even if that is true, it doesn't really
` 12 affect Toyota's analysis with respect to Asano in any event?
` 13 MR. HERMAN: Yes, that's right. It is our view
` 14 that is an incorrect characterization of Asano because Asano
` 15 is doing much, much more than that. That's Toyota's point.
` 16 Was that your question, Your Honor?
` 17 JUDGE LEE: Yes. I wanted to know whether that
` 18 argument carries the day for AVS, that if we agree with them
` 19 that the claim requires a specific monitoring of a specific
` 20 component, is that the end of the day or are you saying, no,
` 21 Asano still discloses a particular specific component?
` 22 MR. HERMAN: We are saying that that is not the
` 23 end of the day. So if it is the Board's view that measuring
` 24 abstract parameters by themselves is not enough to satisfy
` 25 the claims, Asano is actually disclosing more than that.
` 9
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 It is disclosing monitoring parameters not in the
` 2 abstract but for the specific purpose of determining if
` 3 components on the vehicle are operating non-optimally.
` 4 JUDGE LEE: Thank you.
` 5 MR. HERMAN: And I will try to show the Board why
` 6 that's the case. So here on slide 9 there is a passage from
` 7 Asano where Asano states that it is measuring the vehicle's
` 8 operating conditions.
` 9 You will see in slide 10 that the operating
` 10 conditions can include the specific operating conditions of
` 11 the engine. So it is not just measuring vehicle operating
` 12 conditions in the abstract. Instead it is monitoring those
` 13 operating conditions to figure out how the actual components
` 14 of the vehicle are operating.
` 15 On slide 11, Asano provides even more specifics.
` 16 Here it lists the sensors that are employed to determine the
` 17 engine operating conditions. Now, these are parameters,
` 18 cooling water temperature, battery voltage. Those are
` 19 parameters.
` 20 But the Asano system is not measuring those
` 21 parameters in the abstract. Instead Asano expressly states
` 22 that these parameters are being used onboard the vehicle for
` 23 the specific purpose of determining the engine operating
` 24 conditions. So it is monitoring these parameters and it is
` 25 doing it so it can figure out how the engine is operating.
` 10
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 Now, if you turn to slide 12, here is a figure
` 2 from Asano. This also shows that the onboard abnormality
` 3 determination relates to specific vehicle components and not
` 4 just abstract parameters.
` 5 Here in the top of the figure is a vehicle
` 6 computer that is labeled as box 105, and it is monitoring the
` 7 engine, the transmission and the suspension. Now, while
` 8 there is further diagnosis that occurs at the remote site,
` 9 this is only to specify the particular defective parts that
` 10 need repair and generate comprehensive repair instructions.
` 11 But the fact remains that Asano expressly
` 12 discloses an onboard system that uses sensors to monitor
` 13 various engine and other component parameters and uses data
` 14 from those sensors to make a basic abnormality determination
` 15 relating to the operation of the engine and other vehicle
` 16 components.
` 17 And a determination that the engine is operating
` 18 abnormally is the claim determination that a vehicle
` 19 component is operating non-optimally or is failing.
` 20 JUDGE ANDERSON: Excuse me, counsel. So is it
` 21 your position that the engine is the component that is being
` 22 monitored?
` 23 MR. HERMAN: Yes, so any of those three components
` 24 shown, for instance, here in figure 1, the engine,
` 25 transmission and suspension, are components that would fall
` 11
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 within the scope of claim 1 and the other independent claims
` 2 of the '802 patent.
` 3 Now, this disclosure that we just talked about and
` 4 the specification and the figures wasn't enough. Asano
` 5 includes even more specific details. Now, in the next slide,
` 6 slide 13, there is an excerpt from a portion of Asano where
` 7 Asano is describing the procedure it follows to generate an
` 8 abnormal code and transmit it on to a remote site.
` 9 JUDGE LEE: The next slide is slide number?
` 10 MR. HERMAN: This is 13, slide 13. And here when
` 11 describing this procedure, the procedure that Asano uses to
` 12 generate its abnormal code, Asano is providing an example
` 13 where that abnormality determination is made in connection
` 14 with the injector and the ignition timing.
` 15 So those are two very specific parts of the
` 16 vehicle. So not just the engine any more but very specific
` 17 parts of the vehicle. And that's what the abnormality
` 18 determination in this example relates to. And that's what
` 19 the abnormal code that's generated in this particular example
` 20 will relate to, these very particular parts of the vehicle.
` 21 Now, the next limitation that AVS argues is
` 22 missing from Asano is the automatically limitation. And here
` 23 AVS' argument is entirely premised on its own proposed narrow
` 24 construction of the term automatically.
` 25 On slide 14 we have reproduced AVS' proposed
` 12
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 construction. You will see it is long and incredibly wordy.
` 2 It takes a single word and turns it into a long phrase. And
` 3 it is also incredibly vague. According to AVS transmission
` 4 has to occur both without human intervention and as
` 5 appropriate. But you won't see any explanation in AVS'
` 6 briefs or declarations about what an appropriate response is.
` 7 And this language, this as appropriate language,
` 8 is not providing any boundary to the claims. It doesn't make
` 9 clear if transmission has to occur right away or if you can
` 10 wait and, if you can wait, how long. The appropriateness of
` 11 the transmission is, in fact, entirely subjective.
` 12 And this is not how you construe claims.
` 13 Construction is meant to provide clarification, not render
` 14 claims less understandable and more ambiguous.
` 15 Now, the broadest reasonable construction of the
` 16 term automatically, as the Board I think recognized in its
` 17 institution decision, simply requires transmission only
` 18 without human intervention. It does not require transmission
` 19 at some unspecified appropriate time.
` 20 But in addition to being vague, AVS' construction
` 21 is also not required by either the claims or the
` 22 specification. According to AVS, automatically cannot mean
` 23 just without human intervention because this would
` 24 purportedly eviscerate one of the purposes of the invention
` 25 claimed in the '802 patent which AVS believes is
` 13
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 to substantially prevent vehicle breakdown.
` 2 But the claims of the '802 patent are not limited
` 3 to systems that transmit only for purposes of preventing
` 4 breakdown. In fact, claims 1 and 7 can embrace transmission
` 5 for a variety of different purposes. They say nothing about
` 6 transmitting just to prevent breakdown. And also the
` 7 specification makes clear that transmission can occur for a
` 8 variety of different purposes.
` 9 If you look at slide 15 --
` 10 JUDGE LEE: Before you go there, would it be
` 11 consistent with your construction to end with just three
` 12 words, "without human intervention," would that be sufficient
` 13 or would you also qualify that in some way?
` 14 MR. HERMAN: The construction of the term
` 15 automatically by itself would be sufficient to construe that
` 16 to mean without human intervention, yes, if that term
` 17 requires construction at all.
` 18 Now, here again on slide 15, here are examples
` 19 from the '802 patent specification of transmission for
` 20 purposes other than vehicle breakdown.
` 21 So you will see at the top of the slide you can
` 22 transmit to provide the manufacturer with up-to-date
` 23 information, or you can transmit to allow the manufacturer to
` 24 schedule a recall, or you can transmit to allow the
` 25 manufacturer to update their pattern recognition training
` 14
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 database. There is no one appropriate time to make these
` 2 types of transmissions.
` 3 And the appropriateness of the timing of these
` 4 types of transmissions is potentially different from a
` 5 transmission meant to assist in the prevention of breakdown.
` 6 And these examples do not require transmission right away, if
` 7 that's what AVS thinks the term automatically means.
` 8 Now, there is no dispute that Asano discloses
` 9 automatic transmission, if that term means only without human
` 10 intervention, but even if AVS' limited narrowing construction
` 11 is adopted, Asano discloses that type of transmission anyway.
` 12 Turning to slide 16, you will see here that Asano
` 13 is describing the procedure that it follows. The first,
` 14 recognize abnormal component operation and then generate and
` 15 transmit an abnormal code. And here Asano explains that the
` 16 code is transmitted when an abnormality exists.
` 17 And on slide 17 there is a figure showing the same
` 18 procedure. And here it is the determination that an
` 19 abnormality exists that triggers the transmission of a code.
` 20 There is no manual intervention and there is no intervening
` 21 steps or any other contingency between the determination of
` 22 an abnormality and the transmission of a code.
` 23 Now, there is one other passage of Asano that's
` 24 relevant to this issue, and that's on slide 18.
` 25 JUDGE ANDERSON: Hang on a minute, counsel, before
` 15
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 you go on there, what about figure 6 is your position that
` 2 says it shows that Asano automatically transmits?
` 3 MR. HERMAN: Yes, it is our position that, yes,
` 4 figure 6 shows that Asano automatically transmits.
` 5 JUDGE ANDERSON: I mean, I want to know why. Why
` 6 does Asano show automatic transmission?
` 7 MR. HERMAN: Because it shows that the cause of
` 8 transmission is the determination that an abnormality exists.
` 9 There is no transmission unless it is first determined that
` 10 an abnormality exists.
` 11 And there is no step that's depicted in between
` 12 determining the abnormality exists. There is no waiting for
` 13 a user to press a button or waiting for some amount of time
` 14 or waiting for something else to occur. The cause of
` 15 transmission is shown and depicted to be the determination of
` 16 an abnormality. And that's reflected in the specific --
` 17 JUDGE ANDERSON: So maybe to shorten it a little
` 18 bit, there is no human intervention shown.
` 19 MR. HERMAN: Yes, that's right.
` 20 JUDGE ANDERSON: Okay. Thank you.
` 21 MR. HERMAN: And another part of Asano that is
` 22 relevant to this particular limitation is shown here on slide
` 23 18. And here Asano is explaining that it employs radio links
` 24 to transmit because transmission normally occurs while the
` 25 vehicle is moving.
` 16
`
`
`
`IPR2013-00414, IPR2013-00415, IPR2013-00416, and IPR2013-00417
`Patent 7,630,802 B2, Patent 7,650,210 B2, Patent 8,019,501 B2, and
`Patent 8,036,788 B2
`
`
` 1 So Asano is not limited to transmission when the
` 2 vehicle is off and sitting in a garage. Instead it is able
` 3 to and does transmit at the time of diagnosis when the
` 4 vehicle is moving on the road.
` 5 So in sum, AVS in connection with this limitation
` 6 is doing little more than pointing out that Asano does not
` 7 use the word automatically verbatim in its specification and
` 8 in its figures. But the words of the claim do not have to
` 9 appear verbatim in a prior art reference for it to be
` 10 anticipatory.
` 11 So here, even though Asano does not use the exact
` 12 words of the claims, it is apparent that Asano is engaging in
` 13 automatic transmission.
` 14 The third limitation that AVS argues is missing is
` 15 the notification system limitation. While Asano repeatedly
` 16 references an in-vehicle display, AVS appears to believe that
` 17 the information that is relayed to the driver by that display
` 18 is not specific enough for purposes of the '802 patent
` 19 claims. But this is not the case.
` 20 And here on slide 19 I have highlighted the
` 21 pertinent part of the claim. And you will see that all that
` 22 the claims require is notification about the presence and
` 23 identity of any non-optimally operating component. The
` 24 claims do not require display of the actual output of the
` 25 onboard diag