Trials@uspto. gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORP.
`
`Petitioner
`
`V.
`
`LEROY G. HAGENBUCH
`
`Patent Owner
`
`Case IPR2013-00638
`
`Patent 8,014,917
`
`Before JAMESON LEE, MICHAEL W. KIM, and ADAM V. FLOYD,
`Administrative Patent Judges.
`
`FLOYD, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`OWNER EX. 2051, page 1
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`

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`Case IPR2013-00638
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`Patent 8,014,917
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`I. BACKGROUND
`
`Pursuant to 35 U.S.C. § 311, Toyota Motor Corp. (“Toyota” or “Petitioner”)
`
`filed a petition (“Pet.”) to institute an inter partes review of claims 4, 9-17, 21, and
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`26-38 (the “challenged claims”) of US. Patent No. 8,014,917 (EX. 1001, “the ’917
`
`patent”). LeRoy G. Hagenbuch (“Hagenbuch” or “Patent Owner”) filed a
`
`Preliminary Response (“Prelim Resp.”). Patent Owner contends that the Petition
`
`should be denied as to all challenged claims. We conclude that Petitioner has
`
`shown, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail with
`
`respect to claims 4, 9-17, 21, and 26-38.
`
`The ’917 patent is currently involved in district court litigation, Hagenbuch
`
`v. Toyota Motor Sales, U. S.A., Inc, No. 13-cv-6713 (ND. 111. 2013). Prelim.
`
`Resp. 2. In addition, Petitioner has filed an earlier petition to institute an inter
`
`partes review of claims 1-3, 5-8, 18-20, and 22-25 of the ’917 patent. This first
`
`petition has been granted. See Toyota Motor Corp. v. Hagenbuch, IPR2013-
`
`00483, Paper 9.
`
`A. The ’91 7 Patent
`
`The ’917 patent generally relates to identifying anomalies in an operation of
`
`a vehicle, and more particularly, to collecting and analyzing data derived during
`
`vehicle operation, so as to diagnose a cause of operational anomalies. EX. 1101,
`
`col. 1, 11. 21-25. At the time of the invention, it was known to include sensors for
`
`tracking the vital signs of the vehicle (i.e., indicators of the vehicle’s health). Id. at
`
`col. 1, 11. 29-30. Such sensors may include an oil pressure gauge, a water
`
`temperature gauge, an electrical system charging/discharging gauge, a brake
`
`system condition sensor, and a transmission shift indicator. Id. at col. 1, 11. 31-35.
`
`It was also known, at the time of invention, to employ sensors to monitor vehicle
`
`OWNER EX. 2051, page 2
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`

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`Case IPR2013-00638
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`Patent 8,014,917
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`parameters related to a task being performed by the vehicle, so as to establish how
`
`effectively the vehicle is performing. Id. at col. 1, 11. 41-50. Task-related
`
`parameters could include load carried by the vehicle, grade of the road, loads
`
`hauled per hour, and tons hauled per hour. Id. at col. 1, 11. 50-53. In general, task-
`
`related parameters provide indicia of work done by the vehicle, where work is
`
`proportional to a weight of the vehicle multiplied by a distance it is carried. Id. at
`
`col. 1, 11. 53-56. Production performance of the vehicle generally is evaluated in
`
`an amount of work done in a unit of time—e.g., miles per hour, tons per hour, and
`
`the like. Id. at col. 1, 11. 56-59.
`
`The ’917 patent integrates monitoring and recording of vehicle production
`
`data with vehicle vital sign data. Id. at col. 1, l. 64—col. 2, l. 9. As depicted in
`
`Figure 2B, reproduced below, processor 41 receives both work-related data 67 and
`
`vital sign data 73.
`
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`
`Figure 2B of the ’917 patent.
`
`OWNER EX. 2051, page 3
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`Case IPR2013-00638
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`Patent 8,014,917
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`Processor 41 chronologically stores work-related data into memory 83 such
`
`that, once full, new data begin overwriting the oldest data (i.e., memory 83 is
`
`buffered). Id. at Figs. 5A, 5B; col. 12, l. 37—col.13, l. 34. If processor 41 senses a
`
`vital sign that is one of the ten most extreme readings, it stores that extreme
`
`reading along with corresponding work-related data into memory 87, such that it
`
`will not be overwritten unless a more extreme reading is encountered (i.e., memory
`
`87 is non-buffered). Id. at col. 13, 11. 23-37, 38-50. Likewise, vital signs that reach
`
`a critical value are stored in memory 89 with their corresponding work-related
`
`data. Id. at col. 13, 11. 4-22. By utilizing vital signs to identify when a vehicle is in
`
`a poor state of health, one may be able to determine a cause of the poor health by
`
`examining work-related data pertaining to a recent use of the vehicle. Id. at col. 2,
`
`l. 13—col. 3, l. 16.
`
`In the event of a crash, processor 41 copies data from memory 83 into
`
`memory 85, along with vehicle deceleration measurements, for preservation. Id. at
`
`col. 11, l. 59—col. 12, l. 2.
`
`In addition, data continues to be acquired and stored
`
`into memories 83 and 85. Id. at col. 3, 11. 17-23; col. 25, 11. 10-30. Additionally, in
`
`the event of a crash, a distress signal automatically is sent out to alert other
`
`personnel that aid may be required. Id. at col. 7, 11. 35-41.
`
`OWNER Ex. 2051, page 4
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`

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`Case IPR2013-00638
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`Patent 8,014,917
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`B. Exemplary Claim
`
`Claims 9, 26, and 35 are the independent claims of the ’917 patent at issue.
`
`Claim 9 is exemplary of the claims and recites:
`
`9. An apparatus for recording operation of a vehicle, the apparatus
`comprising:
`
`for monitoring production-related parameters of the
`sensors
`vehicle, Where the parameters include ground speed of the
`vehicle, a position of a throttle for an engine of the vehicle and
`a degree of braking by a braking system of the vehicle;
`
`a first memory for capturing information from one or more of the
`sensors for monitoring production-related parameters;
`
`a second memory for receiving the information from the first
`
`memory;
`
`sensors for monitoring vital signs of the vehicle, Where the vital
`signs include a collision of the vehicle;
`
`a processor in communication With the production-related and vital
`sign sensors and the first and second memories for transferring
`into the second memory the information captured by the first
`memory in response to detection of the collision of the vehicle,
`Where the information includes data from one or more of the
`
`production-related parameters before detection of the collision
`and data from one or more of the vital signs sensors after
`detection of the collision; and
`
`a transmitter for automatically transmitting a distress signal
`response to detection of the collision of the vehicle.
`
`in
`
`OWNER EX. 2051, page 5
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`

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`Case IPR2013-00638
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`Patent 8,014,917
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`C. The Prior Art1
`
`Toyota relies upon the following prior art references:
`
`Japanese Patent Publication No. H03-085412 (EX. 1102), published April
`
`10, 1991—translation EX. 1 103 (“Aoyanagi”);
`
`Japanese Patent Publication No. S5 8-16399 (EX. 1104), published January
`
`31, 1983—translation EX. 1 105 (“Oishi”);
`
`International Patent Publication No. WO 90/03 899 (EX. 1106), published
`
`April 19, 1990—translation EX. 1107 (“Vollmer”);
`
`US. Patent No. 4,839,835 (EX. 1108) (“Hagenbuch ’835”), issued June 13,
`
`1989;
`
`US. Patent No. 5,430,432 (EX. 1109) (“Camhi”), issued July 4, 1995; and
`
`US. Patent No. 4,939,652 (EX. 1110) (“Steiner”), issued July 3, 1990.
`
`D. Evidence
`
`Additionally, Toyota relies upon the following evidence:
`
`The declaration of David McNamara (EX. 1111) (“McNamara Decl.”);
`
`G.B. Hamilton & M. Kirshenblatt, Real-Time Vehicle Systems Monitoring,
`
`3 Microcomputers in Civil Engineering 45 (1988) (EX. 1112);
`
`Trevor 0. Jones & Wallace K. Tsuha, Fully Integrated Truck Information
`
`and Control 1 ‘ystems (TIACS), SAE Technical Paper 831775 (1983) (EX. 1113);
`
`Daniel Sellers & Thomas J. Benard, An Update on the OmniTRACSr Two-
`
`Way Satellite Mobile Communications System and its Application to the Schneider
`
`National Truckload Fleet, Proceedings of the 1992 International Congress on
`
`1 Petitioner relies upon three prior art references that are written in foreign
`languages. Throughout this Decision, we reference the English translations of
`these prior art references.
`
`OWNER EX. 2051, page 6
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`Case IPR2013-00638
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`Patent 8,014,917
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`Transportation Electronics, Society of Automotive Engineers, Dearbom, MI, SAE
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`P-260 (1992) (EX. 1114); and
`
`LeRoy G. Hagenbuch, Truck/Mobile Equipment Performance Monitoring
`
`Management Information Systems (MIS), SAW Technical Paper 861249 (1992)
`
`(EX. 1 1 15).
`
`E. The Assertea’ Grounds
`
`Toyota contends that the challenged claims are unpatentable under 35 U.S.C.
`
`§ 103 based on the following specific grounds (Pet. 8-5 8):
`
`—w—
`
`————
`
`Aoyanagi, Oishi, and Camhi
`
`Aoyanagi, Vollmer, and Camhi
`
`Aoyanagi and Hagenbuch ’835
`
`
`
`Aoyanagi, Hagenbuch ’835, and Steiner
`
`F. Claim Construction
`
`Petitioner proposes constructions for the claim phrases “monitoring
`)7 (4
`)7 (4
`production-related parameters, monitoring Vital sign parameters,
`)7 (4
`
`a load on the
`
`engine,
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`a second memory,” and “a permanent memory.” Pet. 6-7. Patent Owner
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`proposes constructions for “capturing,” “recording,” “permanent memory,” and “a
`
`7
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`OWNER EX. 2051, page 7
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`Patent 8,014,917
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`load on the engine.” Prelim. Resp. 6-8. Claim terms, however, only need be
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`construed to the extent necessary to resolve the controversy. In this case, claim
`)7 (4
`)7 (4
`)7 (4
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`terms “monitoring,
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`a load on the engine,
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`capturing,
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`recording,” and
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`“permanent memory,” affect the determination of obviousness. As will be
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`discussed below, there is a question as to whether the prior art references disclose
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`these claim limitations.
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`Although claims of an unexpired patent are given their broadest reasonable
`
`interpretation in an inter partes review, 37 C.F.R. § 42.100(b), the Board’s review
`
`of the claims of an expired patent is similar to that of a district court’s review. In
`
`re Rambus, Inc, 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`
`generally are given their ordinary and customary meanings, as understood by a
`
`person of ordinary skill in the art, at the time of the invention, having taken into
`
`consideration the language of the claims, the specification, and the prosecution
`
`history of record because the expired claims are not subject to amendment.
`
`Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “In some cases,
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`the ordinary meaning of claim language as understood by a person of skill in the
`
`art may be readily apparent even to lay judges, and claim construction in such
`
`cases involves little more than the application of the widely accepted meaning of
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`commonly understood words.” Id.
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`1. “Monitoring”
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`Both claims 1 and 18 recite “monitoring production-related parameters” and
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`“monitoring vital sign parameters.” Similarly, claim 26 recites “sensors for
`
`monitoring” production-related and vital sign parameters. Toyota proposes that
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`“monitoring” should be construed as sampling data from sensors. Pet. 6. Patent
`
`Owner does not address Toyota’s claim constructions. Prelim. Resp. 11. In view
`
`of the specification, we determine that Toyota’s construction is too narrow.
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`OWNER Ex. 2051, page 8
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`Case IPR2013-00638
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`Patent 8,014,917
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`The dictionary defines “monitor” as “to watch, keep track of, or check
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`usually for a special purpose.” MERRIAM WEBSTER COLLEGIATE DICTIONARY 752
`
`(10th ed. 1997). The claims utilize the term “monitoring” in a manner consistent
`
`with the plain and ordinary meaning of that term (e. g., “monitoring production
`
`related parameters” and “sensors for monitoring”2). Although the specification
`
`repeatedly references electronically monitoring sensors, it also states that a vehicle
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`operator may “monitor each of the sensors.” EX. llOl, col. 6, 11. 1-5. Petitioner’s
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`construction includes “sampling data from sensors,” which at least suggests an
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`automated process involving a computer processor. Such an automated process
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`would be “monitoring” parameters, but the term “monitoring” is not limited to
`
`such a process, as it would encompass the vehicle operator looking at a gauge or
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`light. Thus, for the purposes of this Decision, we determine that:
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`“Monitoring” is construed as “watching or keeping track of, or checking.”
`
`2. A load on the engine
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`The phrase “a load on the engine” appears in claims 4 and 21. Petitioner
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`proposes that “a load on the engine” is any condition or parameter placing a
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`demand on the engine that affects the amount of work the engine does. Pet. 6-7.
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`Petitioner contends that, although the specification does not discuss “a load on the
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`engine,” Petitioner’s construction is consistent with the specification, which
`
`describes several sensors that a person of ordinary skill in the art would understand
`
`to indicate a load on the engine, such as throttle position, engine fuel consumption,
`
`inclinometer, and load sensor. Id. at 7 (citing EX. llOl, col. 6, 11. 30-41).
`
`Petitioner also contends that its construction is consistent with how a person of
`
`ordinary skill in the art would understand “a load on the engine.” Id. at 7 (citing
`
`2 The phrase “sensors for monitoring” appears in claim 26.
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`OWNER EX. 2051, page 9
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`Patent 8,014,917
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`Ex. 1111 11 32). On the other hand, Patent Owner asserts that Petitioner’s claim
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`construction is overly broad and proposes the construction, “the power drawn from
`
`the engine.” Prelim. Resp. 7-8. Patent Owner asserts that its proposed
`
`construction is the plain and ordinary meaning of an “engine load,” and cites as
`
`support two Toyota patents, US. Patent Nos. 8,322,247 and 7,447,586. Id. at 8
`
`(citing Ex. 2035, col. 10, 11. 25-28; Ex. 2036, col. 9, 11. 58-63).
`
`Beginning with the language of the claims, independent claims 1 and 9 each
`
`recite “monitoring production-related parameters of the vehicle, including .
`
`.
`
`. a
`
`position of a throttle for an engine of the vehicle.” Claims 4 and 21, which
`
`respectively depend from claims 1 and 9, each further recite “wherein the
`
`production-related parameters include a load on the engine.”
`
`Turning next to the specification, we could not locate the phrase “a load on
`
`the engine,” or any similar phrase. As Petitioner points out, the specification does
`
`discuss throttle position 67B, engine fuel consumption 67C, inclinometer 67F, and
`
`load sensor 67K, and contends that a person of ordinary skill in the art would
`
`understand these engine-related items indicate “a load on the engine.” Pet. 7
`
`(citing Ex. 1111 11 32). Patent Owner contends that engine-related items Petitioner
`
`cites do not by themselves monitor “a load on the engine.” Prelim. Resp. 33-34.
`
`For example, Petitioner persuasively notes that the same throttle position can
`
`correspond to a wide array of loads on the engine depending on the incline of the
`
`road or the weight of the vehicle. Id. at 33.
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`Lastly, neither party contends that the prosecution history sheds light on the
`
`construction of “a load on the engine,” leaving only extrinsic evidence as the last
`
`consideration. Petitioner relies upon the declaration of Mr. McNamara. Pet. 7
`
`(citing Ex. 1111 11 32). However, Mr. McNamara’s opinion of the claim
`
`construction of “a load on the engine,” is a legal opinion and entitled to no weight.
`
`10
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`OWNER Ex. 2051, page 10
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`Case IPR2013-00638
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`Patent 8,014,917
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`Symamec Corp. v. Computer ASSOCS. 11117., Inc, 522 F.3d 1279, 1289 n.3 (Fed.
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`Cir. 2008) (“To the extent that the testimony merely gives the expert’s opinion as
`
`to claim construction, we attribute it no weight”). However, Mr. McNamara also
`
`testifies that a person of ordinary skill in the art would understand that things such
`
`as throttle position could be used to indicate a load of the engine. Although we
`
`take Mr. McNamara’s opinion into consideration, we find it lacking in detail. For
`
`example, under Mr. McNamara’s opinion, it is unclear as to whether one must take
`
`into account throttle position along with fuel consumption, inclinometer, and load
`
`to monitor the load on the engine, or whether measuring each separately is enough.
`
`And if measuring separately is enough, Mr. McNamara does not address
`
`adequately the issue that the same throttle position can correspond to a wide array
`
`of loads on the engine.
`
`Patent Owner proffers two pieces of extrinsic evidence, Toyota patents US.
`
`Patent Nos. 8,322,247 and 7,447,586. Id. at 8 (citing Ex. 2035, col. 10, 11. 25-28;
`
`Ex. 2036, col. 9, 11. 58-63). The citation to the ’586 patent reads:
`
`The external load factor A is a value that indicates the degree of
`engine power that is being used for drive of the auxiliaries 90, etc.,
`namely, the degree of engine external load. For example, the external
`load factor A has a large value when the compressor 90a is being
`driven, or when electrical load has increased.
`
`Ex. 2036, col. 9, 11. 58-63. This description is not relevant to the construction of “a
`
`load on the engine,” as it relates only to the “external load factor,” which is limited
`
`to engine power utilized for auxiliary loads, such as a compressor. The citation to
`
`the ’247 patent, however, appears more on point, as it reads:
`
`The signal representing the load of the engine may indicate the power
`being supplied by the engine to the wheels of the vehicle and may be
`expressed as a percentage of the maximum power of the engine.
`
`11
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`OWNER Ex. 2051, page 11
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`Patent 8,014,917
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`Ex. 2035, col. 10, 11. 25-28. The sentence in the ’247 patent addresses the load on
`
`the engine, but it does not define it explicitly. We also consider the plain and
`
`ordinary meaning of the term “load,” which is “power output (as of a power plant)
`
`or power consumption (as by a device).” MERRIAM WEBSTER COLLEGIATE
`
`DICTIONARY 682 (10th ed. 1997).
`
`Based upon the limited3 evidence before us, for the purposes of this
`
`Decision, we adopt the ordinary and customary meaning of “a load on the engine.”
`
`“A load on the engine” is at least a portion of the power output from or
`
`being consumed by the engine.
`
`3. Capturing and Recording
`
`Patent Owner proposes that “capturing” be defined as buffering data into a
`
`temporary, volatile memory, whereas “recording” is the process of saving data into
`
`a non-volatile memory. Prelim. Resp. 6. Thus, Patent Owner’s proposed
`
`construction requires that “capturing” requires buffering data, i.e., placing data into
`
`a memory that is continually updated with newly received data displacing older
`
`data. Moreover, Patent Owner’s proposed construction of “capturing” also
`
`requires the memory be volatile, i.e., requiring power to maintain the stored data.
`
`In contrast, Patent Owner’s proposed construction of “recording” requires the
`
`memory be non-volatile, i.e., maintaining its data even when unpowered, and is
`
`silent with respect to whether the memory is buffered.
`
`As will be discussed, Patent Owner’s proposed constructions of “capturing”
`
`and “recording” are based solely on extrinsic evidence. This extrinsic evidence is
`
`3 The Board notes that neither party has adequately explained how a person of skill
`in the art would have understood “a load on the engine,” or how one would have
`monitored it. For example, is the power output from the engine the same as that
`consumed in the process?
`
`12
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`OWNER Ex. 2051, page 12
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`Patent 8,014,917
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`inconsistent with the specification, which uses “capturing” and “recording”
`
`synonymously to refer to storing data in memory, irrespective of whether the
`
`memory is buffered, non-buffered, volatile, or non-volatile. See Phillips, 415 F.3d
`
`at 1317 (Extrinsic evidence is “less significant than the intrinsic record in
`
`determining the .
`
`.
`
`. meaning of claim language”) (quotations and citations
`
`omitted).
`
`Claims 1 and 18 each recite “capturing the production-related parameters of
`
`the vehicle before detection of the collision and the vital sign parameters after
`
`detection of the collision.” Claims 9 and 26 each recite “a processor .
`
`.
`
`. for
`
`transferring into the second memory the information captured by the first memory
`
`in response to detection of the collision of the vehicle.” Claim 35 recites
`
`“recording one or more positions of the throttle and a condition of the load
`
`preceding the detection of the collision.” Patent Owner does not assert that its
`
`construction of “capturing” and “recording” is supported by the language of the
`
`claims themselves, the specification, or the prosecution history. Instead, Patent
`
`Owner relies upon extrinsic evidence. Prelim. Resp. at 6 (citing Ex. 2002, 51036;
`
`Ex. 2029, 49 C.F.R. § 563.5). Prior to examining Patent Owner’s extrinsic
`
`evidence, we first look to the intrinsic record.
`
`The plain and ordinary meanings of “recording” and “capturing” are similar.
`
`“Record” means “to set down in writing: furnish written evidence of” MERRIAM
`
`WEBSTER COLLEGIATE DICTIONARY 977 (10th ed. 1997). “Capturing” means “to
`
`record in a permanent file (as in a computer).” Id. at 170. The specification
`
`references “capturing” in two passages. Most notably:
`
`If a failure mode is detected .
`
`.
`
`. historical data stored in the
`
`chronology memory 83 of FIGS. 2B and 5A is captured .
`placed in the memory 89 .
`.
`. for future access .
`.
`.
`.
`
`.
`
`. and
`
`l3
`
`OWNER Ex. 2051, page 13
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`Case IPR2013-00638
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`Patent 8,014,917
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`EX. 1101, col. 13, 11. 17-22; see also id. at col. 9, 11. 38-44 (“[A]nother important
`
`aspect of the invention .
`
`.
`
`. includes a device for detecting a failure mode of the
`
`vehicle and capturing a chronology of the values of the production parameters
`
`immediately prior to the occurrence of the failure mode. The chronology is
`
`captured in a memory .
`
`.
`
`. for later retrieval”). Both passages are inconsistent with
`
`Patent Owner’s construction of “capturing” to require temporary memory, as data
`
`are “captured” and placed in memory 89 without limitation on the length of time
`
`the data are stored. That is, memory 89 is not a buffer memory (i.e., memory in
`
`which new data are overwriting old data continuously).
`
`The specification appears to use “recording” synonymously with
`
`“capturing.” For example, “[i]f a crash .
`
`.
`
`. is detected, then readings .
`
`.
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`. are
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`recorded to memory 85 .
`
`.
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`.
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`Id. at col. 11, 11. 60-62. As discussed above, the
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`specification also uses the term “captured” in describing non-buffered memory 89.
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`Thus, both “recording” and “capturing” are used in conjunction with non-buffered
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`memory (i.e., 85 or 89).
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`Moreover, “recording” also is used in conjunction with buffered memory 83.
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`“FIG. 5A is a memory map [of memory 83] .
`
`.
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`. recording events leading up to the
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`detection of a failure mode.” Id. at col. 4, 11. 13-16; see also id. at col 11, 11. 14-17
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`(“[I]nputs from the sensors .
`
`.
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`. are recorded in the RAM [i.e., random access
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`memory] 47 that is continually updated.” 4). Thus, the specification uses the term
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`“recorded” when data are written to buffered memory 83 (i.e., memory that is
`
`updated continually), as well as when data are being written into non-buffered
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`memory 89. Therefore, the specification appears to use the plain and ordinary
`
`4 While memory 47 contains both buffered and non-buffered portions, here the
`specification is referencing the buffered (i.e., continuously updated) portion.
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`meaning of “capturing” and “recording,” which is to store data into memory—
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`irrespective of whether the memory is buffered.
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`Lastly, we note that there is no explicit or implicit disclosure of volatile or
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`non-volatile memory in the specification. That is, the words “volatile” and “non-
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`volatile” do not appear in the specification. Further, the specification does not
`
`discuss whether data are retained in memory when there is no power. The
`
`specification makes numerous references to Hagenbuch ’835. See, e.g., id. at col.
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`1, l. 44; col. 6, ll. 22, 66; col. 11, l. 13. Notably, Hagenbuch ’835 specifies using
`
`non-volatile memory 107 to archive data. EX. 1108, col. 24, 11. 50-55. Thus, the
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`inventor, Hagenbuch, knew to distinguish non-volatile from volatile memory. No
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`such distinction is found in the ’91 7 patent.
`
`We note that the prosecution history is not in evidence, and we turn to two
`
`pieces of extrinsic evidence proffered by Patent Owner. First, Patent Owner cites
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`49 C.F.R. § 563,5 which sets forth national requirements directed toward event data
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`recorders used in automobiles and defines “capture” as “the process of buffering
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`data in a temporary, volatile storage medium where it is continuously updated.”
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`EX. 2029, 224. By contrast, 49 C.F.R. § 563 defines “record” as the process of
`
`saving captured data into a non-volatile device for subsequent retrieval. Id. Thus,
`
`49 C.F.R. § 563 distinguishes “capture” from “record” on the basis that the former
`
`stores data in buffered and volatile memory, whereas, the latter stores data in non-
`
`volatile memory. Second, Patent Owner also cites to the Federal Register notice
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`promulgating 49 C.F.R. § 563 which repeats the definitions found in § 563, as
`
`evidence of how the industry uses the terms “capture” and “record.” EX. 2002,
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`51036. Both of these definitions of “capturing” and “recording,” though consistent
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`5 Patent Owner erroneously refers to 37 C.F.R. § 563. Prelim. Resp. 6.
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`with those proposed by Patent Owner, are inconsistent with the manner in which
`
`they are used in the specification. As discussed above, the specification does not
`
`define “capturing” to require temporary (i.e., buffered) and volatile memory. In
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`fact, the specification uses the term “capturing” when describing data placed in a
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`non-buffered memory for later retrieval (e. g., memory 85) and makes no mention
`
`of whether memory 85 is volatile or non-volatile. Likewise, the specification does
`
`not define “recording” to require non-volatile memory, and uses the term when
`
`describing data placed in both buffered memory and non-buffered memory.
`
`Based upon the evidence before us, for the purposes of this Decision, we
`
`adopt the common and ordinary meaning of “capturing” and “recording,” which
`
`are synonymous.
`
`“Capturing” and “recording” each mean “to store data into memory.”
`
`4. Permanent memory
`
`Petitioner proposes that “permanent memory,” as recited in each of claims
`
`10 and 27, be construed as a set of memory addresses that are not overwritten
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`continuously. Pet. 7. Patent Owner proposes further limiting the construction to
`
`require a non-volatile memory. Prelim. Resp. 6. The plain and ordinary meaning
`
`of “permanent” (i.e., “continuing or enduring without fundamental or marked
`
`change”) is consistent with both parties’ definitions, albeit Patent Owner’s
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`proposal would result in more permanence than Petitioner’s. See e. g, MERRIAM
`
`WEBSTER COLLEGIATE DICTIONARY 865 (10th ed. 1997) (definition of
`
`“permanent”). That is, non-buffered memory is continuing or enduring, in that it is
`
`not overwritten continuously. Patent Owner’s additional requirement of non-
`
`volatile memory would add additional permanence, in that the memory could
`
`endure a loss of power.
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`Petitioner contends that the specification describes “permanent” memory as
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`address locations within RAM 47. Pet. 7 (citing EX. 1101, col. 9, 11. 51-57).
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`Specifically, the passage cited by Petitioner states that RAM 47 contains
`
`memory 89, which “preserves the data until an operator of the system removes it.”
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`Id. at col. 9, 11. 56-57. However, Patent Owner points out that the cited passage
`
`does not use the word “permanent” in describing the RAM memory. Prelim.
`
`Resp. 7. Patent Owner further contends that the specification describes
`
`temporarily storing data and, in the event of an accident, permanently storing the
`
`data in another memory. Id. at 7 (citing EX. 1101, col. 10, 11. 1-5) (“In keeping
`
`with the invention .
`
`.
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`. parameters that are monitored, temporarily stored in a
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`memory and then permanently stored with vital sign data when a failure mode is
`
`detected.”). This is the only use of “permanently” in the specification, and while it
`
`falls well short of a definition, it strongly suggests that the only difference between
`
`temporarily and permanently storing data is whether the data are buffered (i.e.,
`
`continuously overwritten). There is no suggestion that the volatility of the memory
`
`plays a role in defining whether the memory is “permanent.” Indeed, the
`
`temporary storage of data occurs in memory 83, whereas the permanent storage of
`
`data, in the event of an accident, occurs in memory 85. EX. 1101, Fig. 2B. Both
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`memories 83 and 85 are contained within RAM 47. Id. at col. 12, 11. 37-39. Thus,
`
`Patent Owner’s assertion that “permanent memory” also must be non-volatile (i.e.,
`
`memory that retains its data even when it loses electrical power) is not supported
`
`by the specification because RAM 47 contains both temporary and permanent
`
`memory, and RAM 47 is either volatile or non-volatile, not both.
`
`Based upon the evidence before us, for the purposes of this Decision, we use
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`the following construction of “permanent memory.”
`
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`“Permanent memory” is “memory that is not overwritten continuously (i.e.,
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`non-buffered).”
`
`II. ANALYSIS
`
`As an initial matter, Patent Owner argues that the Petition should be denied
`
`under 35 U.S.C § 325(d) because the Patent Office has considered the same issues
`
`during the prosecution of application 12/727,535 (“the ’537 application”), which
`
`issued as the ’917 patent. Prelim. Resp. 9-31. Specifically, Patent Owner argues
`
`that during prosecution, two references (“Camhi”6 and “Sorden”7) were considered
`
`fully, and are substantially the same as the Aoyanagi and Oishi/Vollmer references,
`
`respectively. Id. at 10-29. We are not persuaded by Patent Owner’s argument for
`
`a number of reasons.
`
`First, Patent Owner does not allege that the Patent Office considered the
`
`combination of Camhi and Sorden. Second, Sorden was considered in application
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`11/410,648 (“the ’648 application,” issued as US. Patent No. 7,765,039), whereas
`
`Camhi was considered during prosecution of the ’537 application (a divisional of
`
`the ’648 application). Third, Patent Owner does not allege that the claims of the
`
`’648 application, to which Sorden was applied, contained the same limitations as
`
`the ’91 7 patent claims at issue. Lastly, Patent Owner preViously represented to the
`
`Examiner during prosecution of the ’537 application that Camhi could be
`
`distinguished on the grounds that Camhi does not disclose: monitoring and
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`recording the on/off condition of the brake; generating a distress signal when a
`
`crash is detected; recording information after detecting a collision; and storing
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`6 US. Patent No. 5,430,432 (EX. 2012) (“Camhi”), issued July 4, 1995.
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`7 US. Patent No. 5,311,197 (EX. 2013) (“Sorden”), issued May 10, 1994.
`
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`throttle position upon the detection of a collision. EX. 2016, 11-12. If Patent
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`Owner’s prior representations are correct, Camhi is not substantially the same as
`
`Aoyanagi. This can be inferred from the fact that Patent Owner does not attempt
`
`to distinguish Aoyanagi on the same basis.
`
`Likewise, Patent Owner previously represented to the Examiner during
`
`prosecution of the ’648 application that Sorden does not disclose: capturing
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`vehicle parameters after the detection of a collision; collecting tire pressure and
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`vehicle speed data; downloading data to a remote location; automatically
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`transmitting the maximum speed of the vehicle in the event of a collision; and
`
`capturing information about the position of the throttle prior to a collision.
`
`EX. 2019, 10-13. Again, the fact that Patent Owner does not attempt to distinguish
`
`either Oishi or Vollmer on the same basis strongly suggests the references are not
`
`substantially the same as Sorden.
`
`In any event, in deciding whether to institute inter partes review, we are not
`
`required to defer to a prior determination in the Patent and Trademark Office, even
`
`if the Office issued the same claims over the same prior art references.
`
`35 U.S.C. § 325(d) (“In determining whethe