UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`TOYOTA MOTOR CORPORATION
`Petitioner
`
`
`v.
`
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
`
`
`
`Patent Number: 8,036,788
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`Case IPR2013-00417
`
`_________________________________________________________________
`
`
`PRELIMINARY RESPONSE OF PATENT OWNER AMERICAN
`VEHICULAR SCIENCES LLC UNDER 37 C.F.R. § 42.107
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`
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`
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`TABLE OF CONTENTS
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`
`
`TABLE OF CONTENTS ........................................................................................... i 
`
`TABLE OF AUTHORITIES .................................................................................. iii 
`
`LIST OF EXHIBITS ................................................................................................. v 
`
`I. 
`
`II. 
`
`INTRODUCTION .......................................................................................... 1 
`
`BACKGROUND ............................................................................................ 2 
`
`III.  CLAIM CONSTRUCTION ........................................................................... 5 
`
`A.  The Specification Defines “Component” And “Sensor” ....................... 5 
`
`B.  The Specification Supports American’s Additional Proposed
`Claim Constructions ............................................................................. 5 
`
`1. 
`
`2. 
`
`Claim Construction Principles ................................................... 7 
`
`“The At Least One Component Of Subsystem” ........................ 8 
`
`IV.  NO INTER PARTES REVIEW SHOULD BE INSTITUTED BECAUSE IT
`IS NOT REASONABLY LIKELY THAT ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE .................................................................. 10 
`
`A.  No Trial Should Be Instituted On Ground 1 ....................................... 10 
`
`1. 
`
`2. 
`
`3. 
`
`Scholl Does Not Anticipate Claims, 1, 3, 4, 6, 7, 8, 9,
`11, 15, 16 And 18 Because It Does Not Disclose
`Initiating A Wireless Transmission In Response To A
`Triggering Event ...................................................................... 11 
`
`Scholl Does Not Anticipate Claims 1, 3, 4, 6, 7, 8, 9,
`11, 15, 16 And 18 Because It Does Not Disclose
`Diagnostic Or Prognostic Analysis On-Board The
`Vehicle ..................................................................................... 13 
`
`Scholl Does Not Anticipate Claim 8 Because It Does
`Not Disclose A Diagnostic Module On The Vehicle
`To Diagnose Operability Of A Component ............................. 15 
`
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`
`i
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`4. 
`
`Scholl Does Not Anticipate Claim 11 Because It
`Does Not Disclose A Plurality Of Sensors That
`Monitor One Vehicle Component ............................................ 16 
`
`
`
`B.  No Trial Should Be Instituted On Ground 2 ....................................... 18 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Toyota Failed To Provide The Required Affidavit Of
`Translation ............................................................................... 18 
`
`Ishihara Does Not Anticipate Claims 1, 3, 4, 6, 7, 8,
`9, 11, 15, 16 And 18 Because It Does Not Disclose
`Diagnostic Or Prognostic Analysis On-Board The
`Vehicle ..................................................................................... 21 
`
`Ishihara Does Not Anticipate Claim 8 Because It
`Does Not Disclose A Diagnostic Module On The
`Vehicle To Diagnose Operability Of A Component ............... 23 
`
`Ishihara Does Not Anticipate Claims 9 and 15
`Because It Does Not Disclose Predicting Component
`Failure ...................................................................................... 23 
`
`C.  No Trial Should Be Instituted On Ground 3 ....................................... 26 
`
`1. 
`
`2. 
`
`Toyota Failed To Prove That Fry Is Prior Art ......................... 27 
`
`Fry Does Not Anticipate Claim 11 Because It Does
`Not Disclose A Plurality Of Sensors That Monitor
`One Vehicle Component .......................................................... 28 
`
`D.  No Trial Should Be Instituted On Ground 4 ....................................... 29 
`
`1. 
`
`2. 
`
`3. 
`
`Toyota Failed To Provide The Required Affidavit Of
`Translation ............................................................................... 29 
`
`Ishihara In Combination With Scholl Does Not
`Disclose All The Limitations Of Claims 9 And 15 ................. 30 
`
`Ishihara Teaches Away From Claims 9 And 15 ...................... 30 
`
`V. 
`
`CONCLUSION ............................................................................................. 32 
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`ii
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`TABLE OF AUTHORITIES
`
`
`
`Cases 
`Haemonetics Corp. v. Baxter Healthcare Corp.,
`607 F.3d 776 (Fed. Cir. 2010) ................................................................................ 7
`
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) .............................................................................. 7
`
`In re Haruna,
`249 F.3d 1327 (Fed. Cir. 2001) ..................................................................... 31, 32
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ........................................................... 12, 13, 17, 28
`
`Jack v. Trans World Airlines, Inc.,
`854 F. Supp. 654 (N.D. Cal. 1994) ....................................................................... 20
`
`Net MoneyIn, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ..................................................................... 25, 26
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..........................................................................7, 8
`
`SynQor, Inc. v. Artesyn Techs., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) ..................................................................... 25, 26
`
`Takeda Chem. Indus., Ltd. v. Alphapharm Pty. Ltd.,
`492 F.3d 1350 (Fed. Cir. 2007) ..................................................................... 31, 32
`
`Townsend Eng’g Co. v. HiTec Co.,
`1 U.S.P.Q.2d 1987 (N.D. Ill. 1986) ...................................................................... 20
`
`Transclean Corp. v. Bridgewood Servs.,
`290 F.3d 1364 (Fed. Cir. 2002) ............................................................................ 12
`
`Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
`587 F.3d 1339 (Fed. Cir. 2009) ....................................................................... 8, 10
`
`Warner-Lambert Co. v. Purepac Pharm. Co.,
`503 F.3d 1254 (Fed. Cir. 2007) .............................................................................. 7
`
`
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`iii
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`Warner-Lambert Co. v. Purepac Pharm. Co.,
`503 F.3d 1254 (Fed. Cir. 2007) .............................................................................. 7
`
`
`
`Statutes 
`
`35 U.S.C. § 102(a) ...................................................................................... 10, 26, 27
`
`35 U.S.C. § 102(b) ................................................................................................... 18
`
`35 U.S.C. § 102(e) ................................................................................................... 10
`
`35 U.S.C. § 103(a) ................................................................................................... 29
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`35 U.S.C. § 325(d) ................................................................................................... 10
`
`Other Authorities 
`
`MPEP § 2111.01 ........................................................................................................ 7
`
`MPEP § 2145(X)(D)(2) ........................................................................................... 30
`
`Rules 
`
`37 C.F.R. § 1.131 ..................................................................................................... 27
`
`37 C.F.R. § 1.68 ....................................................................................................... 19
`
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.107(c) ............................................................................................... 27
`
`37 C.F.R. § 42.2 ....................................................................................................... 19
`
`37 C.F.R. § 42.62 ..................................................................................................... 20
`
`37 C.F.R. § 42.63(b) ................................................................................................ 18
`
`
`
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`
`iv
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`LIST OF EXHIBITS
`
`Exhibit 2001
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`U.S. Patent No. 5,809,437
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`
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`
`
`v
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`I.
`INTRODUCTION
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`
`
`Patent Owner American Vehicular Sciences LLC (“American”) submits the
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`following preliminary response to the Petition filed by Toyota Motor Corporation
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`(“Toyota”) requesting inter partes review of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16
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`and 18 of U.S. Patent No. 8,036,788 (“788 Patent”). This filing is timely under 35
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`U.S.C. § 313 and 37 C.F.R. § 42.107 because it is being filed within three months
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`of the July 17, 2013 mailing date of the Notice granting the Petition a July 8, 2013
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`filing date.
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`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition filed
`
`under section 311 . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged . . . .” 35 U.S.C. §
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`314(a). Here, the 788 patent relates generally to a system and method for
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`monitoring for a “triggering event” that relates to the vehicle’s diagnostic or
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`prognostic analysis of the vehicle’s components or subsystems, and initiating a
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`wireless transmission between the vehicle and a remote site in response to the
`
`triggering event. Toyota cites three alleged anticipatory references—Scholl,
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`Ishihara and Fry. As a threshold matter, Fry is not prior art to the claims of the 788
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`patent. Moreover, among other things, Scholl and Ishihara do not teach all the
`
`claim limitations. As such, and for additional reasons discussed below, none of
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`
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`1
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
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`Toyota’s proposed grounds for inter partes review gives rise to a reasonable
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`likelihood that Toyota will prevail with respect to any of the challenged claims of
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`the 788 patent.
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`American therefore respectfully requests that the Board decline to institute
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`inter partes review of the 788 patent.1
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`II. BACKGROUND
`The application that issued as the 788 patent was filed on August 7, 2007.
`
`(Ex. 1001 at 1.) It is part of a chain of applications that claim priority to an
`
`application filed on June 7, 1995. (Id.) Both the 1995 priority application and the
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`788 patent disclose a revolutionary on-board system and method relating to vehicle
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`maintenance. (See id. at claim 1; see also Ex. 2001.) More specifically, the claims
`
`recite a system and method “for providing status data for vehicle maintenance,
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`comprising . . . monitoring for a triggering event . . . relating to a diagnostic or
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`prognostic analysis” on a vehicle and “transmit[ting] . . . a diagnostic or prognostic
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`message” relating to that analysis to a “remote site separate and apart from the
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`vehicle,” such as a “dealer[ship]” or manufacturer
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`1 In its Preliminary Patent Owner’s Response, American has set forth preliminary
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`through a “wireless
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`positions in response to grounds recited in Toyota’s Petition. Should the Board
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`decide to institute a trial, American reserves the right to set forth additional
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`reasons, arguments and evidence in support of patentability.
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`
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`2
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`transmission.” (Id. at claims 1, 2; see also Ex. 2001.)
`
`
`
`The innovative system and method disclosed and claimed by the 788 patent
`
`was a significant advancement over the prior art. Prior art systems typically did
`
`not conduct diagnostic analysis on the vehicle, but rather sent raw data from the
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`vehicle to a remote location for processing. (Ex. 1001 at 11:25-28 (“An important
`
`function that can be performed by the diagnostic system herein is to substantially
`
`diagnose the vehicle’s own problems rather then forwarding raw data to a central
`
`site for diagnosis.”).) In contrast, the invention of the 788 patent, requires that the
`
`raw data be processed on the vehicle for diagnostic or prognostic purposes. When
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`a triggering event relating to that analysis, e.g., failure or predicted failure of a
`
`component or subsystem of the vehicle, occurs then a diagnostic or prognostic
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`message is transmitted to a remote site, such as a dealership or manufacturer. (Id.;
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`see also id. at claim 1.) The 788 specification explains some of the advantages of
`
`this system/method:
`
`An advantage of the ability to transmit diagnostic and prognostic
`information from a vehicle to a remote site is that performance data
`from the components or subsystems being monitored can be collected.
`Since each sensor obtains a value of a measurable characteristic of the
`component or subsystem and these values are analyzed, e.g., by the
`diagnostic module 33, to determine that the component or subsystem
`has a fault condition, a diagnostic or prognostic message relating to
`the determination of the fault condition of the component or system is
`
`
`
`3
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`thus generated by the diagnostic module 33 and transmitted to the
`remote site via the communications unit 32. At the remote site, it now
`becomes possible to receive messages from multiple vehicles and thus
`compile statistics on a failure rate of the components or subsystems,
`most likely by the manufacturer as noted above. Additionally or
`alternatively, it is possible to notify a driver, vehicle owner,
`manufacturer or dealer of the fault condition of the component or
`subsystem . . . .
`
`
`
`(Ex. 1001 at 73:1-18; see also id. at 71:31-72:17.)
`
`
`
`Claim 1 is representative of the independent claims at issue:
`
`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.
`
` (Id. at claim 1.)
`
`
`
`4
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`

`

`Patent Owner’s Preliminary Response
`IPR2013-00417
`III. CLAIM CONSTRUCTION
`A. The Specification Defines “Component” And “Sensor”
`As outlined in Toyota’s Petition, the specification of the 788 patent provides
`
`
`
`definitions for two claim terms, “component” (claims 1, 4) and “sensor” (claims 4,
`
`7, 11). (Pet. at 5-6.) According to the specification, those terms mean:
`
` “component”: “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
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`its operating state.” (Ex. 1001 at 8:5-8.)
`
` “sensor”: “any measuring, detecting or sensing device mounted on a vehicle
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`or any of its components including new sensors mounted in conjunction with
`
`the diagnostic module in accordance with this invention.” (Id. at 8:19-24.)
`
`B.
`
`The Specification Supports American’s Additional Proposed
`Claim Constructions
`
`In addition to the above terms, American also respectfully requests that the
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`Board construe the following additional term as outlined below:
`
`Claim Language
`
`Context Of The Claim
`
`American’s Proposed
`
`Language
`
`Construction
`
`“the at least one
`
`“configuring the
`
`“the at least one
`
`component of subsystem”
`
`diagnostic module to
`
`component or subsystem”
`
`(Id. at claims 8, 9.)
`
`analyze data obtained by
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`
`
`5
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`Claim Language
`
`Context Of The Claim
`
`American’s Proposed
`
`Language
`
`Construction
`
`
`
`the at least one sensor in
`
`order to diagnose
`
`operability of the at least
`
`one component of
`
`subsystem and generate a
`
`triggering event”
`
`(Id. at claim 8; see also
`
`claim 9.)
`
`Toyota failed to propose a construction for this, or any other term, other than
`
`the two above. Instead, Toyota simply stated “when the broadest reasonable
`
`construction standard is applied as required, there is no indication in the ’788
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`patent that any other terms in the claims should be given anything other than their
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`plain and ordinary meaning.” (Pet. at 6.) Because American’s proposed
`
`construction is consistent with the claim language and the specification, the Board
`
`should reject Toyota’s construction and construe the terms as proposed by
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`American.
`
`
`
`6
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`1.
`“[W]ords of a claim ‘are generally given their ordinary and customary
`
`Claim Construction Principles
`
`
`
`meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
`
`banc). “[T]he ordinary and customary meaning of a claim term is the meaning that
`
`the term would have to a person of ordinary skill in the art in question at the time
`
`of the invention . . . .” Id. at 1313; MPEP § 2111.01 (8th Ed., Rev. 9). “In
`
`construing the words of the claim according to their ordinary meaning, one should
`
`“give[] full meaning to every word of the entire claim term.” Warner-Lambert Co.
`
`v. Purepac Pharm. Co., 503 F.3d 1254, 1263 (Fed. Cir. 2007) (emphasis added);
`
`see also Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed.
`
`Cir. 2010) (“[The] notice function [served by patent claims] would be undermined,
`
`however, if courts construed claims so as to render physical structures and
`
`characteristics specifically described in those claims superfluous.”).
`
`When construing the claims, the Board should consult the specification.
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`Thus, even though “claims under examination before the PTO are given their
`
`broadest reasonable interpretation,” that construction must be “consistent with the
`
`specification.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir.
`
`2012) (emphasis added); see also 37 C.F.R. § 42.100(b); MPEP § 2111.01. That is
`
`because, “claim language should be read in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art.” Abbott, 696 F.3d at 1149. “Indeed,
`
`
`
`7
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`‘the specification is always highly relevant to the claim construction analysis.
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`Usually it is dispositive, it is the single best guide to the meaning of a disputed
`
`term.’” Id. (quoting Phillips, 415 F.3d at 1315).
`
`“The At Least One Component Of Subsystem”
`
`2.
`Dependent claims 8 recites, in relevant part, “configuring 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 . . . .” (Ex. 1001 at claim 8;
`
`see also claim 9.) American proposes that the claim language “the at least one
`
`component of subsystem” be construed to mean “the at least one component or
`
`subsystem.”
`
`The claim language “the at least one component of subsystem” contains a
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`clear and obvious typographical error. The “of” should have been written as an
`
`“or.” During claim construction, “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.” Ultimax
`
`Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir.
`
`2009). Here, all the intrinsic evidence indicates that “the at least one component of
`
`subsystem” should read “the at least one component or subsystem.”
`
`
`
`8
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`

`

`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`The language of the surrounding claims indicates that claims 8 and 9 contain
`
`a clear and obvious typographical error. For example, claims 8 and 9 depend from
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`claim 7. Claim 7 recites, in relevant part, “providing at least one sensor that
`
`monitors the at least one component or subsystem.” (Ex. 1001 at claim 7
`
`(emphasis added).) Claims 8 and 9 use virtually identical language—“the at least
`
`one component of subsystem.” Because of the use of the word “the,” it is obvious
`
`that the antecedent basis for the limitations of claim 8 and 9 is in a prior claim.
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`The prior claim (claim 7) uses the word “or,” not “of.” Accordingly, it is obvious
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`that the use of the word “of” in claims 8 and 9 is a typographical error.
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`This conclusion is also supported by other intrinsic evidence. The other
`
`claims, like claim 7, consistently recite “component or subsystem” or “components
`
`or subsystems.” (See id. at claim 1, 4, 6, 11, 14, 15, 16, 21.) The specification
`
`likewise consistently refers to “components or subsystems” or “component or
`
`subsystem,” not “components of subsystems” or “component of subsystem.” (See
`
`id. at e.g., Abstract, 3:20-5:4, 8:45-46, 14:42-48, 68:23-24, 68:38, 69:5-6, 72:1-
`
`73:17.) Indeed, aside from claims 8 and 9, there is no reference in the specification
`
`to “component of subsystem.” (See generally id.) And, there is nothing in the
`
`prosecution history that would suggest that “component of subsystem” means
`
`anything other than “component or subsystem.” (See generally Ex. 1007.)
`
`
`
`9
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`Accordingly, because the use of the word “of” in claims 8 and 9 is an
`
`“obvious typographical error,” and changing “of” to “or” “is not subject to
`
`reasonable debate,” “the at least one component of subsystem” language of claims
`
`8 and 9 should be construed as “the at least one component or subsystem.”
`
`Ultimax, 587 F.3d at 1353.
`
`IV. NO INTER PARTES REVIEW SHOULD BE INSTITUTED BECAUSE
`IT IS NOT REASONABLY LIKELY THAT ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`
`Because Toyota does not have a reasonable likelihood of prevailing on any
`
`of its proposed grounds of unpatentability, Toyota’s Petition for inter partes
`
`review should be denied.
`
`A. No Trial Should Be Instituted On Ground 1
`In Ground 1 of its Petition, Toyota asserts that claims 1, 3, 4, 6, 7, 8, 9, 11,
`
`15, 16 and 18 are anticipated under 35 U.S.C. §§ 102(a) and (e) by U.S. Patent No.
`
`5,400,018 to Scholl, et al. (“Scholl”). Scholl, titled “Method of Relaying
`
`Information Relating to the Status of a Vehicle,” was disclosed to the Patent Office
`
`and considered by the examiner during prosecution. (See Ex. 1007 at 293); see 35
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`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 or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.”). Because Scholl generally
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`
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`10
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`relates to a prior art vehicle monitoring method in which humans analyze vehicle
`
`data for component failures, it is not surprising that the Patent Office issued the
`
`788 patent over Scholl. (See Ex. 1002 at Figs. 1-2; Ex. 1001 at 1-2.)
`
`For at least the reasons below, Toyota has not shown that Scholl discloses all
`
`the limitations of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16 and 18. Because Toyota has
`
`not demonstrated a reasonable likelihood that those claims are anticipated by
`
`Scholl, the Board should not institute a trial based on Ground 1.
`
`1.
`
`Scholl Does Not Anticipate Claims, 1, 3, 4, 6, 7, 8, 9, 11, 15,
`16 And 18 Because It Does Not Disclose Initiating A
`Wireless Transmission In Response To A Triggering Event
`
`Independent claims 1 and 4, and as a result dependent claims 3, 6, 7, 8, 9,
`
`11, 15, 16 and 18, recite “a vehicle having a wireless communications unit” that
`
`“initiat[es] a wireless transmission” to a “remote site separate and apart from the
`
`vehicle in response to the triggering event.” (Ex. 1001 at claim 1 (emphasis
`
`added); see also claim 4.) In other words, the occurrence of the triggering event
`
`causes the initiation of a wireless transmission between the vehicle and a remote
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`site.
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`Scholl does not teach initiating a wireless transmission to a remote site in
`
`response to a triggering event on the vehicle. While Scholl does disclose that
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`“fault code[s] [are] transmitted over the satellite communication link 212 to a
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`remote location,” Scholl does not disclose that this transmission is initiated in
`
`
`
`11
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`

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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`response to a triggering event on the vehicle. (Ex. 1002 at 6:20-22.) Indeed, none
`
`of the passages pointed to by Toyota discloses that a wireless transmission is
`
`initiated in response to a triggering event. (See Pet. at 14-15.) Thus, Toyota has
`
`failed to show that Scholl expressly discloses initiating a wireless transmission to a
`
`remote site in response to a triggering event.
`
`Scholl’s failure to disclose initiating a wireless transmission to a remote site
`
`in response to a triggering event is significant. Initiating a wireless transmission
`
`upon the occurrence of a triggering event helps achieve an object of the claimed
`
`invention—to reduce repair costs and occurrences of vehicle breakdown. (See,
`
`e.g., Ex. 1001 at 71:31-56.)
`
`Toyota likewise cannot prove that Scholl inherently discloses the claimed
`
`wireless transmission. To be inherent, the alleged prior art reference “must
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`necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood
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`Servs., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (emphasis added). “Inherency . . .
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`may not be established by probabilities or possibilities. The mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient.” In re
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`Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added). Thus, in order to
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`show that a particular feature is inherent in the reference, it must be shown to be
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`necessarily present, not just that it may be present, or even that it is probably
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`present. See id.
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`Patent Owner’s Preliminary Response
`IPR2013-00417
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`Here, the exacting standard for inherency has not been met. Toyota appears
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`to argue that Figure 8 teaches initiating a wireless transmission in response to a
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`triggering event because it purportedly shows producing a fault code and then
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`transmitting the fault code to a remote location over satellite communication data
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`link. (See Ex. 1008 at ¶ 42.) But, Scholl is silent about the timing of any
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`transmission between the vehicle and the remote site. Accordingly, it is equally
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`plausible that the transmission occurs at a predetermined time, e.g., once a day,
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`etc., unrelated to the actual occurrence of the triggering event, as opposed to being
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`initiated as a response to a triggering event. See Robertson, 169 F.3d at 745.
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`Indeed, transmission at predetermined times is consistent with the purpose of
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`Scholl’s method—“cutting the costs associated with the use of a satellite
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`communication network.” (Ex. 1002 at 4:38-40.)
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`Because Scholl does not disclose, either expressly or inherently, initiating a
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`wireless transmission to a remote site in response to a triggering event, a trial on
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`claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16 and 18 based on Scholl should not be instituted.
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`2.
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`Scholl Does Not Anticipate Claims 1, 3, 4, 6, 7, 8, 9, 11, 15,
`16 And 18 Because It Does Not Disclose Diagnostic Or
`Prognostic Analysis On-Board The Vehicle
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`Independent claims 1 and 4, and as a result dependent claims 3, 6, 7, 8, 9,
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`11, 15, 16 and 18, recite “a triggering event relating to a diagnostic or prognostic
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`
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`13
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`analysis of at least one of a plurality of different components or subsystems of the
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`vehicle.” (Ex. 1001 at claims 1, 4 (emphasis added).)
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`The method described in Scholl is different from the system and method
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`claimed in 788 patent. Scholl generally relates to monitoring trucks that are at, for
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`example, a work site such as a mine. (Ex. 1002 at 2:45-51.) In contrast to the
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`complete on-board diagnostic or prognostic system claimed by the 788 patent,
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`Scholl’s method requires extensive analysis by an off-site human “expert.” (See
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`generally id.)
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`In Scholl, the trucks are equipped with sensors to monitor various vehicle
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`parameters. (Id. at e.g., 3:48-4:37.) “Fault codes” are generated in response to, for
`
`example, “predetermined conditions” such as “a parameter operating outside its
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`preset range.” (Id. 4:5-16; see also e.g., 6:15-20; 6:61-65.) The “fault codes” are
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`“transmitted to a remote location for analysis by an expert.” (Id. at 6:65-7:1; see
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`also e.g., 4:43-53; 6:20-26.) If needed, the expert can request that the vehicle send
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`additional data to the off-site expert for analysis. (Id. at 4:51-53, 6:23-27, 7:2-4.)
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`Based on the fault code and any additional data received, the expert “may issue a
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`set of repair instructions.” (Id. at 2:62-63 (emphasis added); see also e.g., 4:66-
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`68.) These repair instructions could be sent to a number of different locations, e.g.,
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`a service center, a dealer or the vehicle. (Id. at e.g., 2:64-66, 3:44-47.)
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`
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`14
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`
`Scholl does not disclose “a diagnostic or prognostic analysis of at least one of
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`a plurality of different components or subsystems of the vehicle” as claimed by the
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`788 patent. In Scholl, information from the vehicle “is transmitted across the
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`satellite communications network 212 to an expert at one of the remote locations.”
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`(Id. at 4:43-48; see also id. at 6:66-7:5.) The human expert analyzes the
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`information and may then request that the vehicle send additional data. (Id. at
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`4:47-65; 7:2-5.) Based on information received and the vehicle’s history, the
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`expert identifies the problem and generates repair instructions. (Id.)
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`Scholl therefore addresses a method where data is analyzed and a diagnosis
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`or prognosis is made by an off-site human, not by a diagnostic or prognostic
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`system on-board the vehicle. Thus, Scholl does not anticipate claims 1, 3, 4, 6, 7,
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`8, 9, 11, 15, 16, and 18, and no trial should be instituted based on Scholl.
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`3.
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`Scholl Does Not Anticipate Claim 8 Because It Does Not
`Disclose A Diagnostic Module On The Vehicle To Diagnose
`Operability Of A Component
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`Claim 8 depends from claim 7, which in turn depends from claim 1. Claim 8
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`recites:
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`The method of claim 7, wherein the at least one sensor is
`8.
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`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 diagnose operability of the at least one
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`15
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`Patent Owner’s Preliminary Response
`IPR2013-00417
`component of subsystem and generate the triggering event based on
`diagnostic criteria.
`
`
`
`(Ex. 1001 at claim 8 (emphasis added).)
`
`
`
`Scholl does not teach “a diagnostic module on the vehicle” that “diagnose[s]
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`operability.” As discussed above, in Scholl “fault codes” are generated at the
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`vehicle. (Ex. 1002 at 4:5-16; see also e.g., 6:15-20; 6:61-65.) The Scholl “fault
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`codes” do not diagnose whether or not a component is operable. Rather, they
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`merely indicate if “a parameter [is] operating outside of its preset range.” (Id.)
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`After a Scholl “fault code” is generated, it is “transmitted to a remote location for
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`analysis by an expert.” (Ex. 1002 at 6:65-7:1; see also e.g., 4:43-53; 6:20-26.)
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`Based on the Scholl fault code and any