`
`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`TOYOTA MOTOR NORTH AMERICA, INC., SUBARU OF AMERICA
`INC., AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH
`AMERICA INC., FORD MOTOR COMPANY, JAGUAR LAND ROVER
`NORTH AMERICA LLC, and VOLVO CARS OF NORTH AMERICA
`LLC
`Petitioners
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00280
`Patent 6,324,463
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,324,463
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
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`
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`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, submits the
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`following preliminary response to the petition.
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`TABLE OF CONTENTS
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`INTRODUCTION .................................................................................. 1
`I.
`II. CLAIM CONSTRUCTION .................................................................. 2
`A. “enabling the system “ (claim 1) / “enabling…the controller”
`(claim 2) ...................................................................................................... 2
`B. “when the controller is enabled” (claim 2) / “when the controller
`is initially enabled” (claim 4) .................................................................... 3
`C. “thereby engaging the system” (claim 1) .......................................... 4
`D. “engaging the cruise control system” (claim 21) ............................. 5
`E. “indicating to the operator the unset status of the present speed”
`(claim 15) .................................................................................................... 6
`F. “displaying a symbol indicative of an unset state of the preset
`speed” (claim 21) ....................................................................................... 7
`G. “activating the cruise control system at a desired cruising speed”
`(claim 12) .................................................................................................... 8
`H. “activating the cruise control system” (claim 15) ............................ 9
`I. “when[/after] the cruise control system is deactivated” (claims 12,
`13, and 21) .................................................................................................. 9
`III. ARGUMENT .................................................................................... 10
`A. The Board Should Deny All Alleged Grounds Of Patentability
`Based On Partially Translated References ........................................... 10
`B. Unexplained Redundancy ................................................................ 11
`IV. CONCLUSION. ................................................................................ 12
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 1
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`I.
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`INTRODUCTION
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`This petition, along with the other four petitions simultaneously filed
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`by Petitioners, represent a clear attempt to abuse the inter partes review
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`process – a focused and time-sensitive evaluation of the validity of patent
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`claims. The Board should reject all five petitions filed by Petitioners and
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`refuse to endorse their inappropriate, game-the-system tactics.
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`Between Friday, December 20, 2013 and Monday, December 23,
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`2013, Petitioners, as a group, filed five separate petitions for inter partes
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`review of certain claims of U.S. Patent No. 6,324,463 (“‘463 Patent”).
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`IPR2014-00279; IPR2014-00280; IPR2014-00281; IPR2014-289; and
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`IPR2014-00291. The five petitions make no mention of each other and are
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`replete with intra-petition and inter-petition redundancies amongst the more
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`than 180 separate alleged grounds of invalidity. For example, with regard to
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`claim 1 alone, Petitioners have alleged five separate grounds of anticipation
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`and four separate grounds of obviousness across five different petitions.
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`
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`Further, Petitioners attempt to mislead the USPTO, crafting the
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`petitions to make them appear like filings from separate parties. For
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`example, not one of the petitions identifies any of the four other petitions
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`under the required notice of related matters under 37 C.F.R. § 42.8(b)(2),
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`and, in each petition, one of the Petitioners is designated as “the Petitioner”
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`1
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 2
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`while labeling the other four as “co-Petitioners.” Similarly, counsel for each
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`petition is the same group of seven attorneys, but each petition designates a
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`different attorney as lead counsel.
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`
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`Accordingly, Petitioners are insisting that, absent joinder of the five
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`proceedings, fifteen different Administrative Law Judges consider the same
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`claim construction arguments and various overlapping and redundant alleged
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`grounds of invalidity. To the extent the Board does not deny the petition
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`outright for a clear abuse of process, the most efficient path forward is for
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`the Board to join the five petitions and deny all redundant alleged grounds of
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`unpatentability.
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`II. CLAIM CONSTRUCTION
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`A. “enabling the system “ (claim 1) / “enabling…the
`controller” (claim 2)
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`“Enabling the system” and “enabling the controller” should be
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`construed as “putting the speed controller of the cruise control system into
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`an operative condition.” Claim 1 recites, “a speed controller that
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`automatically maintains the vehicle speed at a preset speed” and “an enable
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`switch associated with said controller for enabling the system.” Claim 2
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`recites, “a cruise control enable switch associated with the controller for
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`enabling the disabling the controller.” Thus, pressing or otherwise actuating
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`2
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
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`Page 3
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`the enable switch puts the speed controller in an operative condition, in that
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`the speed controller will automatically maintain the vehicle at a preset speed.
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`Petitioners propose that “enabling” means “turning on.” Petition at 7-
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`8. This proposed construction is too vague to provide any benefit when
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`evaluating the validity of the claims. For example, one could say that when
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`turning on a vehicle’s ignition switch, all systems of the vehicle are “turned
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`on.” In claim 1, the “enable switch,” which is “associated with said [speed]
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`controller,” is more specifically directed to “enabling the [cruise control]
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`system” by putting the speed controller in an operative condition. Similarly,
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`in claim 2, the cruise control enable switch is specifically directed to the
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`state of the controller -- “enabling…the controller.”
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`Therefore, consistent with the intrinsic evidence, “enabling the
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`system” and “enabling…the controller” should be construed as “putting the
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`speed controller of the cruise control system in an operative condition.”
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`B. “when the controller is enabled” (claim 2) / “when the
`controller is initially enabled” (claim 4)
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`For similar reasons as stated above with regard to the “enabling”
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`terms, “when the controller is [initially] enabled” should be construed as
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`“when the controller is [initially] put in an operative condition.”
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`3
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 4
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`C. “thereby engaging the system” (claim 1)
`In the context of claim 1, “thereby engaging the system” should be
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`construed as “as a result, activating the speed controller of the cruise control
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`system to automatically maintain the vehicle speed at the preset speed.”
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`Claim 1 requires a “set speed input” that is used to set a preset speed
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`for the vehicle. The set speed input is associated with the controller so that,
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`when the preset speed is set with the set speed input, the speed controller
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`automatically maintains the vehicle speed at the preset speed. The
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`specification describes an embodiment of the invention in which digital
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`information regarding the speed at which the vehicle is traveling is written to
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`a digital memory “when the set button is pressed.” ‘463 Patent, 3:54-57.
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`Thus, using the set speed input results in “activating the speed controller of
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`the cruise control system to automatically maintain the vehicle speed at the
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`preset speed.”
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`Petitioners propose that “engaging the system” in claim 1 means
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`“operating the cruise control system to automatically control the vehicle at
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`the preset speed.” Petition at 7. This proposed construction is incorrect for
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`at least two reasons. First, “operating the cruise control system” is an overly
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`broad generalization of the claimed invention. The claimed “cruise control
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`system” has many components, one of which (the “speed controller”)
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`4
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
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`automatically maintains the vehicle at a preset speed. To require that the
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`entire cruise control system is operated to automatically control the vehicle
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`at the preset speed is incorrect legally and technically (for example, the
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`claimed “feedback system,” which is a component of the claimed cruise
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`control system of claim 1, does not control the vehicle speed). Second, the
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`claim requires “engaging the system” as a result of using the set speed input
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`to set the preset speed. However, the set speed input does not itself maintain
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`the vehicle at a preset speed; the claimed speed controller performs that
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`function. Thus, use of the set speed input “activates” the speed controller to
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`automatically maintain the vehicle speed at the preset speed.
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`Therefore, consistent with the intrinsic evidence, “thereby engaging
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`the system” should be construed as “as a result, activating the speed
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`controller of the cruise control system to automatically maintain the vehicle
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`speed at the preset speed.”
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`D. “engaging the cruise control system” (claim 21)
`In the context of claim 21, “engaging the cruise control system”
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`means “putting the cruise control system into an operative state.”
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`Claim 21 is a method claim including the steps of “engaging the
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`cruise control system” followed by “setting the preset speed.” While the
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`steps of a claimed method should not be limited to a particular order (MPEP
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`5
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
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`2111.01), it is appropriate to require that the step of “engaging the cruise
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`control system” precedes the step of “setting the preset speed,” because the
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`invention requires that the cruise control system is engaged prior to setting
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`the preset speed (which can only be set, and is only utilized, during use of
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`the cruise control system). Thus, “engaging the cruise control system”
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`requires “putting the cruise control system into an operative state.”
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`Petitioners propose that “engaging the cruise control system” means
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`“operating the cruise control system to automatically control the vehicle at
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`the preset speed.” Petition at 7. However, this construction cannot be
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`correct given the step of “setting the preset speed” – how could the vehicle
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`speed be controlled at the preset speed if the preset speed has not yet been
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`set?
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`Therefore, consistent with the intrinsic evidence, “engaging the cruise
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`control system” should be construed as “putting the cruise control system
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`into an operative state.”
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`E. “indicating to the operator the unset status of the present
`speed” (claim 15)
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`“Indicating to the operator the unset status of the preset speed” should
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`be construed as “displaying a visual indication that preset speed has not been
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`set.”
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`6
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 7
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`Claim 15 recites the step of “after activating the cruise control system,
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`but before setting the preset speed, indicating to the operator the unset status
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`of the preset speed.” The specification states, “[w]hen the cruise control
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`system is first activated, the preset display 16 will blink the number zero
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`indicating an ‘unset’ state of cruise control.” ‘463 Patent, 4:4-6. In another
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`embodiment, “the LED 50, corresponding to the 0 mph mark, remains lit to
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`indicate the cruise control status,” the system is on and the cruise speed is
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`unset. Id. at 4:44-46. Thus, according to the invention, “indicating to the
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`operator the unset status of the preset speed’ requires “displaying a visual
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`indication that the preset speed has not been set.”
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`Petitioners’ proposed construction, “a state or status in which there is
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`no preset speed for the cruise control system” is wrong for at least the reason
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`that it adds “for the cruise control system.” Petition at 8.
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`Therefore, consistent with the intrinsic evidence, “indicating to the
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`operator the unset status of the preset speed” should be construed as
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`“displaying a visual indication that preset speed has not been set.”
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`F. “displaying a symbol indicative of an unset state of the
`preset speed” (claim 21)
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`For similar reasons as stated above with regard to the “indicating”
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`term, “displaying a symbol indicative of an unset state of the preset speed”
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`7
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
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`Page 8
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`should be construed as “displaying a symbol indicating that the preset speed
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`has not been set.”
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`G. “activating the cruise control system at a desired
`cruising speed” (claim 12)
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`In the context of claim 12, “activating the cruise control system at a
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`desired cruising speed” should be construed as “causing the cruise control
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`system to maintain the speed at which the vehicle is traveling at the desired
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`cruising speed.”
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`Petitioners’ proposed construction, “activating the cruise control”
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`means “turning on the cruise control,” should be rejected for at least two
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`reasons. Petition at 8-9. First, for some unknown reason, the claim term
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`selected by Petitioners, “activating the cruise control,” does not include the
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`term “system” after “cruise control.” Second, the invention makes clear that
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`simply turning the cruise control system “on” does not mean that the vehicle
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`will automatically travel at the desired cruising speed. The cruise control
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`system must be enabled and set at the desired cruising speed.
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`Therefore, consistent with the intrinsic evidence, “activating the cruise
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`control system at a desired cruising speed” should be construed as “causing
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`the cruise control system to maintain the speed at which the vehicle is
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`traveling at the desired cruising speed.”
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`8
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 9
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`H. “activating the cruise control system” (claim 15)
`In the context of claim 15, “activating the cruise control system at a
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`desired cruising speed” should be construed as “putting the cruise control
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`system in an operative condition.”
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`Claim 15 is directed to a specific state of the cruise control system --
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`“after activating the cruise control system, but before setting the preset
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`speed.” Thus, the cruise control system has been put in an operative
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`condition, but the preset speed is not set.
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`Petitioners’ proposed construction, “activating the cruise control”
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`means “turning on the cruise control,” should be rejected for at least the
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`reason that the term selected by Petitioners, “activating the cruise control,”
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`does not include the term “system” after “cruise control.” Petition at 8-9.
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`Therefore, consistent with the intrinsic evidence, “activating the cruise
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`control system” should be construed as “putting the cruise control system in
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`an operative condition.”
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`I. “when[/after] the cruise control system is deactivated”
`(claims 12, 13, and 21)
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`For similar reasons as stated above with regard to the “activating the
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`cruise control” term, “when[/after] the cruise control system is deactivated”
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`9
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 10
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`should be construed as “when/[after] the cruise control system has been put
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`in an inoperative condition.”
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`III. ARGUMENT
`A. The Board Should Deny All Alleged Grounds Of
`Patentability Based On Partially Translated References
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`The Board should deny all alleged grounds of unpatentability based
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`on partially translated foreign language documents.
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`Petitioners allege that certain claims of the ‘463 Patent are
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`unpatentable in view of the full text of Diamante Owner’s Manual (Ex.
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`1003), Preview Distance Control Manual (Ex. 1005) and Celsior Owner’s
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`Manual (Ex. 1009). All of these documents are written entirely in Japanese.
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`The Diamante Owner’s Manual is over 170 pages long, and Petitioners have
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`provided a translation of only 14 pages. The Preview Distance Control
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`Manual is 78 pages long, and Petitioners have provided a translation of 15
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`pages. The Celsior Owner’s Manual is 261 pages long, and Petitioners have
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`provided a translation of only 15 pages.
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`It is clear that Petitioners are relying on the full text of these Japanese
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`language documents. Under MPEP 706.02, “[i]f the document is in a
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`language other than English and the examiner seeks to rely on that
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`document, a translation must be obtained so that the record is clear as to
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`10
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 11
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`the precise facts the examiner is relying upon in support of the rejection.”
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`Here, Petitioners have selectively cited and translated approximately 45
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`pages of over 500 pages of Japanese language documents. Since Petitioners
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`bear the burden of proving invalidity, it should not be Patent Owner’s
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`burden to have the remaining 450 pages of Japanese language documents
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`translated so that the Board may have a full view of all cited references.
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`Accordingly, the Board should deny all alleged grounds of
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`unpatentability based in whole or in part on partial translations of Diamante
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`Owner’s Manual, Preview Distance Control Manual, and Celsior Owner’s
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`Manual.
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`B. Unexplained Redundancy
`Petitioners allege that claims 2-5, 26-28 and 34-36 are anticipated by
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`the partial translations of Diamante and Celsior. However, Petitioners do
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`not offer any explanation as to why these references are redundant of each
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`other, at least with respect to these claims. Further, Petitioners allege that
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`claims 12, 15, 16 and 21 are anticipated by Diamante, and alternatively,
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`obvious over Diamante in view of another cited reference. However,
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`Petitioners do not offer any explanation as to why the obviousness
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`allegations are not redundant of the allegations of anticipation. Accordingly,
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`the Board should deny all redundant alleged grounds of unpatentability.
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`11
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 12
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`IV. CONCLUSION.
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`
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`For at least the foregoing reasons, Petitioners have failed to
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`demonstrate a reasonable likelihood of prevailing on the rejections of the
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`claims proposed in the Petition. Accordingly, denial of the Petitioners’
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`request for inter partes review is respectfully requested.
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`The Patent Trial and Appeal Board is hereby authorized to charge any
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`fees associated with this proceeding to Deposit Account 50-4075 (Customer
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`Respectfully submitted,
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`By: /John R. Kasha/
`John R. Kasha
`Registration No. 53,100
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`No. 67050).
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`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
`Date: April 7, 2014
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`JRK
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`Customer No. 67050
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`12
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`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
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`Page 1
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R § 1.550(f), a copy of Patent Owner’s
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`Preliminary Response to Petition for Inter Partes Review of U.S. Patent No.
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`6,324,463, filed by Cruise Control Technologies LLC on April 7, 2014, was
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`duly served via electronic mail upon Toyota-CCT-IPR@sughrue.com –
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`counsel of record for Petitioners Toyota Motor North America, Inc., Subaru
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`of America Inc., American Honda Motor Co., Inc., Nissan North America
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`Inc., Ford Motor Company, Jaguar Land Rover North America LLC, and
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`Volvo Cars of North America LLC (collectively “Petitioners”).
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`Respectfully submitted,
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`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cruise Control
`Technologies LLC
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`
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`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
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