Trials@uspto.gov
`571-272-7822
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` Paper 10
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`Entered: February 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RAYMARINE, INC.
`Petitioner
`
`v.
`
`NAVICO HOLDING AS
`Patent Owner
`
`
`
`Case IPR2013-00496
`Patent 8,305,840
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`BRYAN F. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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` Paper 10
`
`
`Entered: February 11, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RAYMARINE, INC.
`Petitioner
`
`v.
`
`NAVICO HOLDING AS
`Patent Owner
`
`
`
`Case IPR2013-00496
`Patent 8,305,840
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`BRYAN F. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2013-00496
`Patent 8,305,840
`
`
`I.
`INTRODUCTION
`Raymarine, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 3, 10-11, 24, 26, 29, 31, 33, 44, 46-53, 56-62, and 69 of
`U.S. Patent No. 8,305,840 (Ex. 1001, “the ’840 patent”). Paper 2 (“Pet.”). In
`response, Navico Holding AS (“Patent Owner”) filed a Patent Owner Preliminary
`Response on November 13, 2013. Paper 8 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a) which provides as follows:
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Pursuant to 35 U.S.C. § 314, the Board authorizes an inter partes review to
`be instituted as to claims 3, 10-11, 24, 26, 29, 31, 33, 44, 46-53, 56-62, and 69 of
`the ’840 patent.
`
`A. Related Proceedings
`
`Petitioner indicates that the ’840 patent is involved in Navico, Inc. v.
`Raymarine, Inc., Case No. 4:13-cv-251 (N.D. Okla., filed Apr. 29, 2013). Pet. 1.
`Patent Owner indicates that the ’840 patent also is involved in Navico, Inc. v.
`Raymarine, Inc., Inv. No. 337-TA-2981 (International Trade Commission). Paper
`6. Petitioner has filed two additional petitions seeking inter partes review of the
`’840 patent (IPR2013-00355 and IPR2013-00497).
`2
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`Case IPR2013-00496
`Patent 8,305,840
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`B. The ’840 Patent
`The ’840 patent is described in the decision to institute in co-pending inter
`partes review IPR2013-00355. We incorporate that description here.
`
`C. Exemplary Claim
`
`The challenged claims are all dependent claims depending from independent
`claims 1 and 23. Claim 1 is exemplary of the claimed subject matter of the ’840
`patent, and is reproduced as follows:
`1. A sonar assembly for imaging an underwater environment
`beneath a watercraft traveling on a surface of a body of water, the
`sonar assembly comprising:
`a housing mountable to the watercraft;
`a single linear downscan transducer element positioned within
`the housing, the linear downscan transducer element having a
`substantially rectangular shape configured to produce a fan-shaped
`sonar beam having a relatively narrow beamwidth in a direction
`parallel to a longitudinal length of the linear downscan transducer
`element and a relatively wide beamwidth in a direction perpendicular
`to the longitudinal length of the transducer element, the linear
`downscan transducer element being positioned with the longitudinal
`length thereof extending in a fore-to-aft direction of the housing;
`wherein the linear downscan transducer element is positioned
`within the housing to project fan-shaped sonar beams in a direction
`substantially perpendicular to a plane corresponding to the surface of
`the body of water, said sonar beams being repeatedly emitted so as to
`sequentially insonify different fan-shaped regions of the underwater
`environment as the watercraft travels; and
`a sonar signal processor receiving signals representative of
`sonar returns resulting from each of the fan-shaped sonar beams and
`processing the signals to produce sonar image data for each fan-
`shaped region and to create an image of the underwater environment
`3
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`Case IPR2013-00496
`Patent 8,305,840
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`as a composite of images of the fan-shaped regions arranged in a
`progressive order corresponding to the travel of the watercraft.
`
`
`D. Prior Art Relied Upon
`
`(Ex. 1004)
`(Ex. 1007)
`(Ex. 1006)
`(Ex. 1005)
`
`Petitioner relies upon the following prior art references:
`Adams
`
`US 5,184,330
`Feb. 2, 1993
`Chiang
`
`US 6,842,401
`Jan. 11, 2005
`Boucher ’798
`US 6,904,798
`Jun. 14, 2005
`Boucher ’552
`US 7,961,552
`Jun. 14, 2011
`
`DE JONG, C.D. ET AL., HYDROGRAPHY (1st ed. 2002) (“Hydrography,”
`Ex. 1003).
`
`DEROOS, BRADLEY G. ET AL., TECHNICAL SURVEY AND EVALUATION OF
`UNDERWATER SENSORS AND REMOTELY OPERATED VEHICLES (May 1993)
`(“DeRoos,” Ex. 1008).
`
`RAYMARINE, E-SERIES NETWORKED DISPLAY: REFERENCE MANUAL (March
`2006), (“E-Series,” Ex. 1009).
`
`E.
`
`The Asserted Grounds
`
`
`
`
`
`Petitioner asserts that the challenged claims are unpatentable based on the
`following grounds:
`Basis
`Reference[s]
`Hydrography and Adams § 103
`
`Claims challenged
`3, 10-11, 26, 29, 31, 33, 44,
`46, 49-53, 56-62, and 69
`3, 10-11, 26, 29, 31, 33, 44,
`46, 49-53, 56-62, and 69
`3, 10-11, 26, 29, 31, 33, 44,
`46, 49-53, 56-62, and 69
`
`Hydrography, Boucher
`’552, and Adams
`Hydrography, Boucher
`’798, DeRoos, and
`
`§ 103
`
`§ 103
`
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`Patent 8,305,840
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`
`Adams
`Hydrography, Adams,
`Chiang, and E-Series
`Hydrography, Boucher
`’552, Adams, Chiang,
`and E-Series
`Hydrography, Boucher
`’798, DeRoos, Adams,
`Chiang, and E-Series
`
`§ 103
`
`§ 103
`
`§ 103
`
`24 and 47-48
`
`24 and 47-48
`
`24 and 47-48
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given their
`broadest reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable construction
`standard, claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The following terms are construed in the decision to institute in co-pending
`inter partes review IPR2013-00355: a single linear downscan transducer element
`(independent claims 1 and 23); sequentially insonify different fan-shaped regions
`of the underwater environment; composite of images of the fan-shaped regions;
`and the linear downscan transducer element being positioned with the longitudinal
`length thereof extending in a fore-to-aft direction of the housing. For the purpose
`of this decision, we adopt the constructions of those terms recited therein.
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`Patent 8,305,840
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`As to the term, “configuration settings defining a predefined set of display
`images that may be presented,” not expressly construed previously, the following
`claim construction applies.
`
`configuration settings defining a predefined set of display images that may
`be presented (Claim 29)
`Petitioner does not construe “configuration settings defining a predefined set
`of display images that may be presented.” Patent Owner argues that the phrase
`means “pre-stored configuration settings that include pre-set display image
`arrangements of separate display images of different data that may be presented.”
`Prelim. Resp. 19-20.
`Patent Owner argues that an embodiment of the invention disclosed at col. 8,
`lines 53-59, and col. 15, lines 50-56 supports its construction. However, those
`passages state that the invention “may” include, for example, pre-set display image
`arrangements that enable plug-n-play capabilities. Although claims are interpreted
`in light of the specification, limitations from the specification are not read into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). On the record
`before us, the specification paragraph cited by Patent Owner provides multiple
`instances of such permissive language. The claim language does not require or
`even mention the proposed language relating to pre-storing, image arrangements,
`separate display images, and different data. The phrase needs no express definition
`because its ordinary and customary meaning can be understood without further
`explanation.
`All other terms are given their ordinary and customary meaning that those
`
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`Patent 8,305,840
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`terms would have to a person of ordinary skill in the art in light of the ’840 patent
`specification.
`
`B. Claims 3, 10-11, 26, 29, 31, 33, 44, 46, 49-53, 56-62, and 69 – Obvious over
`Hydrography and Adams
`
`Petitioner argues that claims 3, 10-11, 26, 29, 31, 33, 44, 46, 49-53, 56-62,
`and 69 are unpatentable under 35 U.S.C. § 103(a) over Hydrography and Adams.
`Pet. 13-34. Upon review of Petitioner’s analysis and supporting evidence, and
`taking into account Patent Owner’s preliminary response, we determine that
`Petitioner has demonstrated that there is a reasonable likelihood that it would
`prevail with respect to claims 3, 10-11, 26, 29, 31, 33, 44, 46, 49-53, 56-62, and 69
`on the ground that these claims are unpatentable over Hydrography and Adams.
`Hydrography teaches: “Modern echo sounders usually offer a choice of two
`to three transmitting frequencies . . . .” Ex. 1003, 320. Further, Hydrography
`provides formulas for designing rectangular transducers that show beamwidths are
`dependent on the transducer dimensions and the desired wavelengths used.
`Adams teaches: “A frequency of 455 KHz was chosen for the elements in
`the preferred embodiment because element size is inversely related to frequency,”
`and “to take advantage of the principle that elements are physically smaller at
`higher frequencies for a given beam pattern [e.g., beamwidth].” Ex. 1004, 5:3-5
`and 11:20-26.
`Claims 3 and 31 recite “the selectable operating frequencies include about
`455 kHz and 800 kHz.” Petitioner argues that one skilled in the art would have
`recognized that including 800 kHz, in addition to 455 kHz taught by Adams, as a
`selectable frequency would be done to adjust the beamwidth to a desired size by
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`Patent 8,305,840
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`selecting a corresponding frequency, as taught by Adams and Hydrography. Pet.
`23-24. Petitioner provides reasons to combine the teachings of Hydrography with
`the teachings of Adams. Pet. 15-16.
`
`Patent Owner argues that Adams fails to describe selectable operating
`frequencies, including about 455 kHz and 800 kHz, but instead teaches a single
`operating frequency of 455 kHz. Prelim. Resp. 25. Patent Owner’s focus on
`Adams alone is not persuasive, because Petitioner challenges the patentability of
`the claims based on the combination of Hydrography and Adams. Patent Owner
`does not dispute that Hydrography teaches selecting from multiple operating
`frequencies. Indeed, Petitioner relies on the teachings of Hydrography for meeting
`the selectable operating frequencies limitation. Pet. 23.
`Moreover, Patent Owner’s other arguments as to Adams are not persuasive.
`Based on the record before us, Petitioner asserts, relying on expert testimony, that
`one of ordinary skill in the art would have adjusted the beamwidth to a desired size
`[such as 800kHz] by selecting a corresponding frequency. Pet. 23-24 (citing Ex.
`1011 ¶ 35-40.) Thus, one of ordinary skill in the art would have considered the
`specific operating frequency to be a result-effective variable that can be optimized.
`In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (rule that discovery of optimum
`values of a variable in a known process would have been within the level of
`ordinary skill in the art must be supported by a showing that the variable is in fact
`result-effective); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
`(“‘[I]t is not inventive to discover the optimum or workable ranges by routine
`experimentation.’ Only if the ‘results of optimizing a variable’ are ‘unexpectedly
`good’ can a patent be obtained for the claimed critical range.” (internal citations
`
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`Case IPR2013-00496
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`
`omitted)). Patent Owner has not shown otherwise.
`Thus, we are not persuaded by Patent Owner’s arguments that Adams fails
`to teach “the selectable operating frequencies include about 455 kHz and 800
`kHz.”
`Patent Owner argues, with respect to claim 29, that Adams does not teach
`“the sonar module further comprises configuration settings defining a predefined
`set of display images that may be presented.” Prelim. Resp. 36. Petitioner argues
`that Adams teaches “[v]arious display modes such as the ¾ View shown in FIG.
`10, the straight-on view shown in FIG. 11, and the side view shown in FIG. 12, are
`selectable [configuration settings] by the user and will be disclosed in greater detail
`below.” Pet. 28 (citing Ex. 1004, 12:20-23).
`Patent Owner’s arguments regarding this claim term are based on its narrow
`construction. In light of the discussion above in section II. A., Patent Owner’s
`argument is not commensurate in scope with the claim language. We do not
`construe the claim limitation beyond the words of the claim. Petitioner has shown
`sufficiently that the display modes of Adams are configuration settings, and that
`the different views available represent a predefined set of images that may be
`presented. See, e.g., Ex. 1004, 12:20-23.
`Patent Owner argues that Adams fails to teach or suggest the sonar signal
`processor is further configured to implement a notice or alarm regarding proximity
`of other watercraft, as required by claim 60. Prelim. Resp. 46. Petitioner relies on
`Adams to teach this limitation: “An audio output is provided which, under control
`of the microprocessor, will alert the user to the occurrence of a preselected set of
`alarm conditions.” Pet. 33 (citing Ex. 1004, 12:64-66.) Petitioner argues that
`
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`Case IPR2013-00496
`Patent 8,305,840
`
`Adams describes bottom and fish alarm facilities. Id. “[I]t is proper to take into
`account not only specific teachings of the reference but also the inferences which
`one skilled in the art would reasonably be expected to draw therefrom.” In re
`Preda, 401 F.2d 825, 826 (CCPA 1968). In showing that Adams teaches alarms
`related to proximate objects such as fish and the bottom of the water, Petitioner has
`shown sufficiently that the understanding of one of ordinary skill in the art would
`include implementing a proximity alarm regarding other watercraft. Thus,
`Petitioner has established a reasonable likelihood of prevailing on the ground of
`unpatentability of claim 60 over Hydrography and Adams.
`Claim 61 recites “the processor, in combination with a memory, stores
`incoming transducer data or screen images for future playback or transfer.” With
`respect to claim 61, Patent Owner argues that Adams describes enlarging sonar
`images to correspond to a new depth scale, and not storing “‘incoming transducer
`data or screen images for future playback or transfer.’” Prelim. Resp. 40. Patent
`Owner’s arguments are not persuasive. Petitioner points out that Adams teaches
`that
`
`“[e]ven prior displayed target data from prior sonar returns is updated
`or reformatted to relate to the new depth scale, thereby eliminating
`discontinuities in the display. Target data from such prior returns is
`recalled from memory and rescaled, and the entire screen is changed
`to correspond to the new depth scale.”
`
`
`Pet. 33 (quoting Ex. 1004, 5:42-47, emphasis omitted).
`
`
`Petitioner has shown sufficiently that the target data is stored and recalled
`for playback at a new depth scale. Patent Owner has not explained why storing
`
`10
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`Case IPR2013-00496
`Patent 8,305,840
`
`target data is not “storing data,” as required by claim 61, or why recalling target
`data to the screen is not “playback,” as required by claim 61.
`
`C. Claims 24 and 47-48 — Obvious over Hydrography, Adams, Chiang, and
`E-Series
`
`Petitioner argues that claims 24 and 47-48 are unpatentable under 35 U.S.C.
`§ 103(a) over Hydrography and Adams. Pet. 46-51. Patent Owner made no
`specific arguments regarding this challenge. Upon review of Petitioner’s analysis
`and supporting evidence, and taking into account Patent Owner’s preliminary
`response, we conclude that Petitioner has demonstrated that there is a reasonable
`likelihood that it would prevail with respect to claims 24 and 47-48 on the ground
`that these claims are unpatentable over Hydrography, Adams, Chiang, and
`E-Series.
`
`D. Other Asserted Grounds
`Petitioner asserts that (1) claims 3, 10-11, 26, 29, 31, 33, 44, 46, 49-53,
`56-62, and 69 are unpatentable under 35 U.S.C. § 103 over Hydrography in view
`of Boucher ’552 and Adams (Pet. 34-40), (2) claims 3, 10-11, 26, 29, 31, 33, 44,
`46, 49-53, 56-62, and 69 are unpatentable under 35 U.S.C. § 103 over
`Hydrography in view of Boucher ’798, DeRoos, and Adams (id. at 40-46), (3)
`claims 24 and 47-48 are unpatentable under 35 U.S.C. § 103 over Hydrography in
`view of Boucher ’552, Adams, Chiang, and E-Series (id. at 51-54), and (4) claims
`24 and 47-48 are unpatentable under 35 U.S.C. § 103 over Hydrography in view of
`Boucher ’798, DeRoos, Adams, Chiang, and E-Series (id. at 54-58). We exercise
`our discretion and determine that those grounds of unpatentability are redundant to
`
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`Case IPR2013-00496
`Patent 8,305,840
`
`the grounds of unpatentability on which we initiate inter partes review.
`Accordingly, we do not authorize inter partes review on the remaining grounds of
`unpatentability asserted by Petitioner against claims 3, 10-11, 24, 26, 29, 31, 33,
`44, 46-53, 56-62, and 69 of the ’840 patent. See 37 C.F.R. § 42.108(a).
`
`III. SUMMARY
`For the foregoing reasons, we determine that the information presented in
`the Petition establishes that there is a reasonable likelihood that Petitioner would
`prevail with respect to claims 3, 10-11, 24, 26, 29, 31, 33, 44, 46-53, 56-62, and 69
`of the ’840 patent.
`The Board has not made a final determination on the patentability of any
`challenged claims.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 3, 10-11, 24, 26, 29, 31, 33, 44, 46-53, 56-62, and 69
`of the ’840 patent for the following grounds:
`1. Claims 3, 10-11, 26, 29, 31, 33, 44, 46, 49-53, 56-62, and 69 as unpatentable
`under 35 U.S.C. § 103 over Hydrography and Adams; and
`2. claims 24 and 47-48 as unpatentable under 35 U.S.C. § 103 over
`Hydrography in view of Adams, Chiang, and E-Series;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; the trial is commencing
`on the entry date of this decision; and
`
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`Case IPR2013-00496
`Patent 8,305,840
`
`
`FURTHER ORDERED that an initial conference call with the Board is
`scheduled for 2:00 PM Eastern Time on February 27, 2014; the parties are directed
`to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66 (Aug. 14,
`2012), for guidance in preparing for the initial conference call, and should be
`prepared to discuss any proposed changes to the Scheduling Order entered
`herewith and any motions the parties anticipate filing during the trial.
`
`
`
`
`
`
`13
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`Case IPR2013-00496
`Patent 8,305,840
`
`For PETITIONER:
`
`
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`For PATENT OWNER:
`
`
`Michael D. McCoy
`ALSTON & BIRD LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`
`
`
`
`
`
`
`14
`
`
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