UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`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.
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, submits the
`
`following preliminary response to the petition.
`
`
`
`
`
`____________
`
`
`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.
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, submits the
`
`following preliminary response to the petition.
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`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
`
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 1
`
`
`I.
`
`INTRODUCTION
`
`This petition, along with the other four petitions simultaneously filed
`
`by Petitioners, represent a clear attempt to abuse the inter partes review
`
`process – a focused and time-sensitive evaluation of the validity of patent
`
`claims. The Board should reject all five petitions filed by Petitioners and
`
`refuse to endorse their inappropriate, game-the-system tactics.
`
`Between Friday, December 20, 2013 and Monday, December 23,
`
`2013, Petitioners, as a group, filed five separate petitions for inter partes
`
`review of certain claims of U.S. Patent No. 6,324,463 (“‘463 Patent”).
`
`IPR2014-00279; IPR2014-00280; IPR2014-00281; IPR2014-289; and
`
`IPR2014-00291. The five petitions make no mention of each other and are
`
`replete with intra-petition and inter-petition redundancies amongst the more
`
`than 180 separate alleged grounds of invalidity. For example, with regard to
`
`claim 1 alone, Petitioners have alleged five separate grounds of anticipation
`
`and four separate grounds of obviousness across five different petitions.
`
`
`
`Further, Petitioners attempt to mislead the USPTO, crafting the
`
`petitions to make them appear like filings from separate parties. For
`
`example, not one of the petitions identifies any of the four other petitions
`
`under the required notice of related matters under 37 C.F.R. § 42.8(b)(2),
`
`and, in each petition, one of the Petitioners is designated as “the Petitioner”
`
`
`
`1
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 2
`
`while labeling the other four as “co-Petitioners.” Similarly, counsel for each
`
`petition is the same group of seven attorneys, but each petition designates a
`
`different attorney as lead counsel.
`
`
`
`Accordingly, Petitioners are insisting that, absent joinder of the five
`
`proceedings, fifteen different Administrative Law Judges consider the same
`
`claim construction arguments and various overlapping and redundant alleged
`
`grounds of invalidity. To the extent the Board does not deny the petition
`
`outright for a clear abuse of process, the most efficient path forward is for
`
`the Board to join the five petitions and deny all redundant alleged grounds of
`
`unpatentability.
`
`II. CLAIM CONSTRUCTION
`
`A. “enabling the system “ (claim 1) / “enabling…the
`controller” (claim 2)
`
`“Enabling the system” and “enabling the controller” should be
`
`construed as “putting the speed controller of the cruise control system into
`
`an operative condition.” Claim 1 recites, “a speed controller that
`
`automatically maintains the vehicle speed at a preset speed” and “an enable
`
`switch associated with said controller for enabling the system.” Claim 2
`
`recites, “a cruise control enable switch associated with the controller for
`
`enabling the disabling the controller.” Thus, pressing or otherwise actuating
`
`
`
`2
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 3
`
`the enable switch puts the speed controller in an operative condition, in that
`
`the speed controller will automatically maintain the vehicle at a preset speed.
`
`Petitioners propose that “enabling” means “turning on.” Petition at 7-
`
`8. This proposed construction is too vague to provide any benefit when
`
`evaluating the validity of the claims. For example, one could say that when
`
`turning on a vehicle’s ignition switch, all systems of the vehicle are “turned
`
`on.” In claim 1, the “enable switch,” which is “associated with said [speed]
`
`controller,” is more specifically directed to “enabling the [cruise control]
`
`system” by putting the speed controller in an operative condition. Similarly,
`
`in claim 2, the cruise control enable switch is specifically directed to the
`
`state of the controller -- “enabling…the controller.”
`
`Therefore, consistent with the intrinsic evidence, “enabling the
`
`system” and “enabling…the controller” should be construed as “putting the
`
`speed controller of the cruise control system in an operative condition.”
`
`B. “when the controller is enabled” (claim 2) / “when the
`controller is initially enabled” (claim 4)
`
`For similar reasons as stated above with regard to the “enabling”
`
`terms, “when the controller is [initially] enabled” should be construed as
`
`“when the controller is [initially] put in an operative condition.”
`
`
`
`3
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 4
`
`
`C. “thereby engaging the system” (claim 1)
`In the context of claim 1, “thereby engaging the system” should be
`
`construed as “as a result, activating the speed controller of the cruise control
`
`system to automatically maintain the vehicle speed at the preset speed.”
`
`Claim 1 requires a “set speed input” that is used to set a preset speed
`
`for the vehicle. The set speed input is associated with the controller so that,
`
`when the preset speed is set with the set speed input, the speed controller
`
`automatically maintains the vehicle speed at the preset speed. The
`
`specification describes an embodiment of the invention in which digital
`
`information regarding the speed at which the vehicle is traveling is written to
`
`a digital memory “when the set button is pressed.” ‘463 Patent, 3:54-57.
`
`Thus, using the set speed input results in “activating the speed controller of
`
`the cruise control system to automatically maintain the vehicle speed at the
`
`preset speed.”
`
`Petitioners propose that “engaging the system” in claim 1 means
`
`“operating the cruise control system to automatically control the vehicle at
`
`the preset speed.” Petition at 7. This proposed construction is incorrect for
`
`at least two reasons. First, “operating the cruise control system” is an overly
`
`broad generalization of the claimed invention. The claimed “cruise control
`
`system” has many components, one of which (the “speed controller”)
`
`
`
`4
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 5
`
`automatically maintains the vehicle at a preset speed. To require that the
`
`entire cruise control system is operated to automatically control the vehicle
`
`at the preset speed is incorrect legally and technically (for example, the
`
`claimed “feedback system,” which is a component of the claimed cruise
`
`control system of claim 1, does not control the vehicle speed). Second, the
`
`claim requires “engaging the system” as a result of using the set speed input
`
`to set the preset speed. However, the set speed input does not itself maintain
`
`the vehicle at a preset speed; the claimed speed controller performs that
`
`function. Thus, use of the set speed input “activates” the speed controller to
`
`automatically maintain the vehicle speed at the preset speed.
`
`Therefore, consistent with the intrinsic evidence, “thereby engaging
`
`the system” should be construed as “as a result, activating the speed
`
`controller of the cruise control system to automatically maintain the vehicle
`
`speed at the preset speed.”
`
`D. “engaging the cruise control system” (claim 21)
`In the context of claim 21, “engaging the cruise control system”
`
`means “putting the cruise control system into an operative state.”
`
`Claim 21 is a method claim including the steps of “engaging the
`
`cruise control system” followed by “setting the preset speed.” While the
`
`steps of a claimed method should not be limited to a particular order (MPEP
`
`
`
`5
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 6
`
`2111.01), it is appropriate to require that the step of “engaging the cruise
`
`control system” precedes the step of “setting the preset speed,” because the
`
`invention requires that the cruise control system is engaged prior to setting
`
`the preset speed (which can only be set, and is only utilized, during use of
`
`the cruise control system). Thus, “engaging the cruise control system”
`
`requires “putting the cruise control system into an operative state.”
`
`Petitioners propose that “engaging the cruise control system” means
`
`“operating the cruise control system to automatically control the vehicle at
`
`the preset speed.” Petition at 7. However, this construction cannot be
`
`correct given the step of “setting the preset speed” – how could the vehicle
`
`speed be controlled at the preset speed if the preset speed has not yet been
`
`set?
`
`Therefore, consistent with the intrinsic evidence, “engaging the cruise
`
`control system” should be construed as “putting the cruise control system
`
`into an operative state.”
`
`E. “indicating to the operator the unset status of the present
`speed” (claim 15)
`
`“Indicating to the operator the unset status of the preset speed” should
`
`be construed as “displaying a visual indication that preset speed has not been
`
`set.”
`
`
`
`6
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 7
`
`
`Claim 15 recites the step of “after activating the cruise control system,
`
`but before setting the preset speed, indicating to the operator the unset status
`
`of the preset speed.” The specification states, “[w]hen the cruise control
`
`system is first activated, the preset display 16 will blink the number zero
`
`indicating an ‘unset’ state of cruise control.” ‘463 Patent, 4:4-6. In another
`
`embodiment, “the LED 50, corresponding to the 0 mph mark, remains lit to
`
`indicate the cruise control status,” the system is on and the cruise speed is
`
`unset. Id. at 4:44-46. Thus, according to the invention, “indicating to the
`
`operator the unset status of the preset speed’ requires “displaying a visual
`
`indication that the preset speed has not been set.”
`
`Petitioners’ proposed construction, “a state or status in which there is
`
`no preset speed for the cruise control system” is wrong for at least the reason
`
`that it adds “for the cruise control system.” Petition at 8.
`
`Therefore, consistent with the intrinsic evidence, “indicating to the
`
`operator the unset status of the preset speed” should be construed as
`
`“displaying a visual indication that preset speed has not been set.”
`
`F. “displaying a symbol indicative of an unset state of the
`preset speed” (claim 21)
`
`For similar reasons as stated above with regard to the “indicating”
`
`term, “displaying a symbol indicative of an unset state of the preset speed”
`
`
`
`7
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 8
`
`should be construed as “displaying a symbol indicating that the preset speed
`
`has not been set.”
`
`G. “activating the cruise control system at a desired
`cruising speed” (claim 12)
`
`In the context of claim 12, “activating the cruise control system at a
`
`desired cruising speed” should be construed as “causing the cruise control
`
`system to maintain the speed at which the vehicle is traveling at the desired
`
`cruising speed.”
`
`Petitioners’ proposed construction, “activating the cruise control”
`
`means “turning on the cruise control,” should be rejected for at least two
`
`reasons. Petition at 8-9. First, for some unknown reason, the claim term
`
`selected by Petitioners, “activating the cruise control,” does not include the
`
`term “system” after “cruise control.” Second, the invention makes clear that
`
`simply turning the cruise control system “on” does not mean that the vehicle
`
`will automatically travel at the desired cruising speed. The cruise control
`
`system must be enabled and set at the desired cruising speed.
`
`Therefore, consistent with the intrinsic evidence, “activating the cruise
`
`control system at a desired cruising speed” should be construed as “causing
`
`the cruise control system to maintain the speed at which the vehicle is
`
`traveling at the desired cruising speed.”
`
`
`
`8
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 9
`
`
`H. “activating the cruise control system” (claim 15)
`In the context of claim 15, “activating the cruise control system at a
`
`desired cruising speed” should be construed as “putting the cruise control
`
`system in an operative condition.”
`
`Claim 15 is directed to a specific state of the cruise control system --
`
`“after activating the cruise control system, but before setting the preset
`
`speed.” Thus, the cruise control system has been put in an operative
`
`condition, but the preset speed is not set.
`
`Petitioners’ proposed construction, “activating the cruise control”
`
`means “turning on the cruise control,” should be rejected for at least the
`
`reason that the term selected by Petitioners, “activating the cruise control,”
`
`does not include the term “system” after “cruise control.” Petition at 8-9.
`
`Therefore, consistent with the intrinsic evidence, “activating the cruise
`
`control system” should be construed as “putting the cruise control system in
`
`an operative condition.”
`
`I. “when[/after] the cruise control system is deactivated”
`(claims 12, 13, and 21)
`
`For similar reasons as stated above with regard to the “activating the
`
`cruise control” term, “when[/after] the cruise control system is deactivated”
`
`
`
`9
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 10
`
`should be construed as “when/[after] the cruise control system has been put
`
`in an inoperative condition.”
`
`III. ARGUMENT
`A. The Board Should Deny All Alleged Grounds Of
`Patentability Based On Partially Translated References
`
`The Board should deny all alleged grounds of unpatentability based
`
`on partially translated foreign language documents.
`
`Petitioners allege that certain claims of the ‘463 Patent are
`
`unpatentable in view of the full text of Diamante Owner’s Manual (Ex.
`
`1003), Preview Distance Control Manual (Ex. 1005) and Celsior Owner’s
`
`Manual (Ex. 1009). All of these documents are written entirely in Japanese.
`
`The Diamante Owner’s Manual is over 170 pages long, and Petitioners have
`
`provided a translation of only 14 pages. The Preview Distance Control
`
`Manual is 78 pages long, and Petitioners have provided a translation of 15
`
`pages. The Celsior Owner’s Manual is 261 pages long, and Petitioners have
`
`provided a translation of only 15 pages.
`
`It is clear that Petitioners are relying on the full text of these Japanese
`
`language documents. Under MPEP 706.02, “[i]f the document is in a
`
`language other than English and the examiner seeks to rely on that
`
`document, a translation must be obtained so that the record is clear as to
`
`
`
`10
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 11
`
`the precise facts the examiner is relying upon in support of the rejection.”
`
`Here, Petitioners have selectively cited and translated approximately 45
`
`pages of over 500 pages of Japanese language documents. Since Petitioners
`
`bear the burden of proving invalidity, it should not be Patent Owner’s
`
`burden to have the remaining 450 pages of Japanese language documents
`
`translated so that the Board may have a full view of all cited references.
`
`Accordingly, the Board should deny all alleged grounds of
`
`unpatentability based in whole or in part on partial translations of Diamante
`
`Owner’s Manual, Preview Distance Control Manual, and Celsior Owner’s
`
`Manual.
`
`B. Unexplained Redundancy
`Petitioners allege that claims 2-5, 26-28 and 34-36 are anticipated by
`
`the partial translations of Diamante and Celsior. However, Petitioners do
`
`not offer any explanation as to why these references are redundant of each
`
`other, at least with respect to these claims. Further, Petitioners allege that
`
`claims 12, 15, 16 and 21 are anticipated by Diamante, and alternatively,
`
`obvious over Diamante in view of another cited reference. However,
`
`Petitioners do not offer any explanation as to why the obviousness
`
`allegations are not redundant of the allegations of anticipation. Accordingly,
`
`the Board should deny all redundant alleged grounds of unpatentability.
`
`
`
`11
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 12
`
`
`IV. CONCLUSION.
`
`
`
`For at least the foregoing reasons, Petitioners have failed to
`
`demonstrate a reasonable likelihood of prevailing on the rejections of the
`
`claims proposed in the Petition. Accordingly, denial of the Petitioners’
`
`request for inter partes review is respectfully requested.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any
`
`fees associated with this proceeding to Deposit Account 50-4075 (Customer
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /John R. Kasha/
`John R. Kasha
`Registration No. 53,100
`
`No. 67050).
`
`
`
`
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
`Date: April 7, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`JRK
`
`Customer No. 67050
`
`
`
`
`
`
`
`12
`
`
`
`Case No.: IPR2014-00280 Attorney’s Docket No.: CCT0002-IPR
`Patent No: 6,324,463
`
`Page 1
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R § 1.550(f), a copy of Patent Owner’s
`
`Preliminary Response to Petition for Inter Partes Review of U.S. Patent No.
`
`6,324,463, filed by Cruise Control Technologies LLC on April 7, 2014, was
`
`duly served via electronic mail upon Toyota-CCT-IPR@sughrue.com –
`
`counsel of record for Petitioners 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 (collectively “Petitioners”).
`
`Respectfully submitted,
`
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cruise Control
`Technologies LLC
`
`
`
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
