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`REQUEST FOR INTER PARTES REVIEW
`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of
`
`Docket No: PR00010
`
`C. Kumar N. Patel
`
`Issued: November 27, 2001
`
`U.S. Patent No. 6,324,463
`
`Application No. 09/310,527
`
`Filing Date: May 12, 1999
`
`
`
`For: CRUISE CONTROL INDICATOR
`
`
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,324,463 UNDER 35 U.S.C. §§311-319, 37 C.F.R. § 42
`
`Mail Patent Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Toyota
`
`Motor North America, Inc. (“Toyota” or “Petitioner”) and co-Petitioners (listed
`
`below), respectfully request Inter Partes Review of claims 1-5, 12-16, 18, 19, 21,
`
`25-28, and 34-36 of U.S. Patent No. 6,324,463 (Ex. 1001, “the ‘463 patent”),
`
`which was filed on May 12, 1999 and issued on November 27, 2001 to C. Kumar
`
`N. PATEL and is currently assigned to Cruise Control Technologies LLC (“Patent
`
`Owner”) according to the US Patent and Trademark Office assignment records.
`
`

`

`Request for Inter Partes Review
`U.S. Patent No. 6,324,463
`
`There is a reasonable likelihood that Petitioner will prevail with respect to at least
`
`one of the claims challenged in this Petition.
`
`ii
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`

`

`Request for Inter Partes Review
`U.S. Patent No. 6,324,463
`
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................ 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)............................1
`
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ........................................1
`
`LEAD AND BACK-UP COUNSEL .......................................................................2
`
`SERVICE INFORMATION ....................................................................................3
`
`II.
`
`PAYMENT OF FEES — 37 C.F.R. § 42.103 ......................................................................... 4
`
`III.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ................................................. 4
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a) ................................................4
`
`Prior Art Patents and Printed Publications...............................................................4
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .................................................................................................................6
`
`IV.
`
`SUMMARY OF THE '463 PATENT ...................................................................................... 7
`
`A.
`
`B.
`
`Brief Description ......................................................................................................7
`
`Summary of the Prosecution History of the '463 patent ..........................................9
`
`V.
`
`CLAIM CONSTRUCTION ................................................................................................... 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`“engaging the system” (claim 1) and “engaging the cruise control
`system” (claim 21) .................................................................................................11
`
`“enabling” (claims 1 and 2) and “enabled” (claims 2 and 4) .................................12
`
`“unset status of the preset speed” (claim 15) and "unset state of the
`preset speed" (claim 21) .........................................................................................12
`
`“activating the cruise control” (claims 12 and 15) and
`"deactivated" (claims 12, 13, and 21) ....................................................................13
`
`iii
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`

`

`Request for Inter Partes Review
`U.S. Patent No. 6,324,463
`
`VI.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '463 PATENT IS UNPATENTABLE ...................................................... 13
`
`A.
`
`Grounds 1-4 in view of Mitsubishi References .....................................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Ground 1: Claims 1-5, 12-16, 21, 25-28, and 34-36 of the
`‘463 patent are anticipated under 35 U.S.C. §102(b) by
`Diamante Owner's Manual .........................................................................15
`
`Ground 2: Claims 15, 16 and 21 of the ‘463 patent are
`obvious under 35 U.S.C. §103(a) by Diamante Owner's
`Manual in view of Preview Distance Control Manual...............................37
`
`Ground 3: Claim 12 of the ‘463 patent is obvious under 35
`U.S.C. §103(a) by Diamante Owner's Manual in view of
`Watanabe....................................................................................................39
`
`Ground 4: Claims 18 and 19 of the ‘463 patent are
`anticipated under 35 U.S.C. §102(b) by Watanabe ...................................41
`
`B.
`
`Ground 5: Claims 2-5, 26-28, and 34-36 of the ‘463 patent are
`anticipated under 35 U.S.C. §102(a) by Celsior (Ex. 1009) ..................................43
`
`VII. CONCLUSION....................................................................................................................... 59
`
`
`
`
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`
`iv
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`

`

`Request for Inter Partes Review
`U.S. Patent No. 6,324,463
`
`
`EXHIBITS
`
`
`
`Exhibit
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`
`
`
`
`
`
`
`
`
`
`Description
`U.S. Patent No. 6,324,463
`File History of U.S. Patent No. 6,324,463
`Diamante Owner's Manual
`Certified English Translation of Diamante Owner’s Manual (Cited
`Portions)
`Preview Distance Control Manual
`Certified English Translation of Preview Distance Control Manual
`Japanese Patent Application Publication No. JP 8-192663
`(“Watanabe”)
`Certified English Translation of Watanabe
`Celsior Owner's Manual
`Certified English Translation of Celsior Owner’s Manual (Cited
`Portions)
`Declaration of Dr. Paul Green in Support of Petitioner's Request for
`Inter Partes Review
`Declaration of Yoji Nakane in Support of Request for Inter Partes
`Review
`Declaration of Yoshinobu Yamauchi in Support of Request for Inter
`Partes Review
`Declaration of Hideki Yamashita in Support of Request for Inter
`Partes Review
`
`v
`
`

`

`
`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`
`The following is a list of Petitioners (and additional real parties-in-interest
`
`for each party in parentheses): Toyota Motor North America, Inc. (Toyota Motor
`
`Corporation); Subaru of America Inc. (Fuji Heavy Industries Inc.); American
`
`Honda Motor Co., Inc. (Honda Motor Co., Ltd. and Honda Patents and
`
`Technologies N.A., LLC); Nissan North America Inc.; Ford Motor Company;
`
`Jaguar Land Rover North America, LLC; and Volvo Cars of North America, LLC.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’463 patent is
`
`the subject of a series of patent infringement lawsuits brought by the assignee,
`
`Cruise Control Technologies, LLC (“CCT”), each of which may affect, or be
`
`affected by, a decision in this proceeding: CCT v. BMW of North America, LLC,
`
`Case No. 1:12-cv-01754-GMS (D. Del.), filed December 21, 2012; CCT v.
`
`Chrysler Group, LLC, Case No. 1:12-cv-01755-GMS (D. Del.), filed December
`
`21, 2012; CCT v. Ford Motor Company, Case No. 1:12-cv-01756-GMS (D. Del.),
`
`filed December 21, 2012; CCT v. General Motors LLC, Case No. 1:12-cv-01757-
`
`GMS (D. Del.), filed December 21, 2012; CCT v. Jaguar Land Rover North
`
`America LLC, Case No. 1:12-cv-01758-GMS (D. Del.), filed December 21, 2012;
`
`
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`CCT v. Mercedes-Benz USA LLC, Case No. 1:12-cv-01759-GMS (D. Del.), filed
`
`December 21, 2012; CCT v. Porsche Cars North America, LLC, Case No. 1:12-cv-
`
`01760-GMS (D. Del.), filed December 21, 2012; CCT v. Subaru of America Inc.,
`
`Case No. 1:12-cv-01761-GMS (D. Del.), filed December 21, 2012; CCT v. Volvo
`
`Cars of North America LLC, Case No. 1:12-cv-01762-GMS (D. Del.), filed
`
`December 21, 2012; CCT v. American Honda Motor, Case No. 1:13-cv-00082-
`
`GMS (D. Del.), filed January 15, 2013; CCT v. Hyundai Motor America, Case No.
`
`1:13-cv-00084-GMS (D. Del.), filed January 15, 2013; CCT v. Nissan North
`
`America, Inc., Case No. 1:13-cv-00085-GMS (D. Del.), filed January 15, 2013;
`
`CCT v. Toyota Motor North America, Inc., Case No. 1:13-cv-00086-GMS (D.
`
`Del.), filed January 15, 2013; and CCT v. Volkswagen Group of America, Inc.,
`
`Case No. 1:13-cv-00087-GMS (D. Del.), filed January 15, 2013. The ’463 patent
`
`is the subject of Ex Parte Reexamination No. 90/012,841. The following
`
`proceeding relates to the ’463 patent and has concluded: CCT v. Audi of America,
`
`LLC, Case No. 1:12-cv-01753-GMS (D. Del.), filed December 21, 2012.
`
`C. LEAD AND BACK-UP COUNSEL
`
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`William H. Mandir (Reg No 32,156)
`2
`
`BACK-UP COUNSEL
`John F. Rabena (Reg No 38,584)
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`(wmandir@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`T: 202-293-7060, F: 202-293-7068
`BACK-UP COUNSEL
`Matthew D. Satchwell (Reg No
`58,870)
`(matthew.satchwell@dlapiper.com)
`DLA Piper LLP (US)
`203 North LaSalle Street, Suite 1900
`Chicago, Illinois 60601
`T: 312-368-2111
`BACK-UP COUNSEL
`Wab Kadaba (Reg No 45,865)
`(wkadaba@kilpatricktownsend.com)
`Kilpatrick Townsend & Stockton
`LLP
`1100 Peachtree Street NE, Suite
`2800
`Atlanta, GA 30309-4528
`T: 404-532-6959, F: 404-541-3258
`
`(jrabena@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`T: 202-293-7060, F: 202-293-7068
`BACK-UP COUNSEL
`John M. Caracappa (Reg No 43,532)
`(jcaracap@steptoe.com)
`Steptoe & Johnson LLP
`1330 Connecticut Ave. NW,
`Washington, DC 20036,
`T: 202-429-6267, F: 202-261-0597
`
`BACK-UP COUNSEL
`Matthew J. Moore (Reg No 42,012)
`(matthew.moore@lw.com)
`Latham & Watkins LLP
`555 Eleventh St., N.W., Suite 1000
`Washington, DC 20004
`T: 202-637-2278, F: 202-637-2201
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
`
`Petition.
`
`D. SERVICE INFORMATION
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel, above. Service of any documents via
`
`hand-delivery may be made at the postal mailing addresses listed above.
`
`3
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`Petitioners also consent to electronic service by email at Toyota-CCT-
`
`IPR@sughrue.com.
`
`II.
`
`
`
`PAYMENT OF FEES — 37 C.F.R. § 42.103
`
`Petitioners authorize the Patent and Trademark Office to charge Deposit
`
`Account No. 19-4880 for the fees set in 37 C.F.R. § 42.15(a) for this Petition for
`
`Inter Partes Review, and further authorize payment for any additional fees to be
`
`charged to this Deposit Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
`
`Petitioners certify that the '463 patent (Ex. 1001) is available for Inter Partes
`
`Review and that Petitioners are not barred or estopped from requesting an Inter
`
`Partes Review challenging the patent claims on the grounds identified in this
`
`Petition.
`
`B. Prior Art Patents and Printed Publications
`
`
`
`Claims 1-36 of the '463 patent (Ex. 1001) have an effective filing date no
`
`earlier than May 12, 1998, the filing date of U.S. Provisional Application No.
`
`60/085,183. Petitioners rely upon the following patents and printed publications,
`
`4
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`none of which was considered during the prosecution of the ‘463 patent, and each
`
`of which is prior art to the '463 patent under 35 U.S.C. § 102(a) and/or (b):
`
`Ex. 1003 - Diamante Owner's Manual, published in 1995 and therefore
`
`available as prior art under 35 U.S.C. § 102(b) (Ex. 1004 - certified translation of
`
`cited portions of Diamante Owner's Manual);
`
`Ex. 1005 - Preview Distance Control Manual, published in 1995 and
`
`therefore available as prior art under 35 U.S.C. § 102(b) (Ex. 1006 - certified
`
`translation of cited portions of Preview Distance Control Manual);
`
`Ex. 1007 - Japanese Patent Application Publication No. JP 8-192663
`
`(“Watanabe”), published on July 30, 1996 and therefore available as prior art under
`
`35 U.S.C. § 102(b) (Ex. 1008 - certified translation of Watanabe); and
`
`Ex. 1009 - Celsior Owner's Manual, published in 1997 and therefore
`
`available as prior art under 35 U.S.C. § 102(b) based on the non-provisional filing
`
`date of the '463 patent, and is available under 35 U.S.C. § 102(a) if the '463 patent
`
`can rely on the filing date of the provisional application (Ex. 1010 - certified
`
`translation of cited portions of Celsior Owner's Manual).
`
`5
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`C. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`
`
`Petitioners request Inter Partes Review of claims 1-5, 12-16, 18, 19, 21, 25-
`
`28, and 34-36 of the ‘463 patent (Ex. 1001) on the grounds set forth in the table
`
`below and request that each of the claims be found unpatentable. An explanation
`
`of how claims 1-5, 12-16, 18, 19, 21, 25-28, and 34-36 are unpatentable under the
`
`statutory grounds identified below, including the identification of where each
`
`element is found in the prior art references and the relevance of each of the prior
`
`art references, is provided in the form of detailed claim charts. Additional
`
`explanation and support for each ground of rejection is set forth in the Declaration
`
`of Dr. Paul Green (Ex. 1011). Declarations are also provided in connection with
`
`the Diamante and Celsior manuals and related documents, establishing these
`
`documents as prior art under 35 U.S.C. § 102(a) and 35 U.S.C. § 102(b),
`
`respectively (Ex. 1012, Ex. 1013, and Ex. 1014). Verifications of translations are
`
`also provided for the foreign language documents (Ex. 1004, Ex. 1006, and Ex.
`
`1008).
`
`Ground
`
`'463 Patent
`Claims
`Ground 1 Claims 1-5, 12-
`
`Basis for Rejection
`
`Anticipated under 35 U.S.C. §102(b) by
`
`6
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`16, 21, 25-28,
`
`Diamante Owner's Manual (Ex. 1003)
`
`and 34-36
`
`Ground 2 Claims 15, 16,
`
`Obvious under 35 U.S.C. §103(a) by Diamante
`
`and 21
`
`Owner's Manual (Ex. 1003) in view of Preview
`
`Distance Control Manual (Ex. 1005)
`
`Ground 3 Claim 12
`
`Obvious under 35 U.S.C. §103(a) by Diamante
`
`Owner's Manual (Ex. 1003) in view of Watanabe
`
`(Ex. 1007)
`
`Ground 4 Claims 18 and 19 Anticipated under 35 U.S.C. §102(b) by
`
`Watanabe (Ex. 1007)
`
`Ground 5 Claims 2-5, 26-
`
`Anticipated under 35 U.S.C. §102(a) by Toyota
`
`28, and 34-36
`
`Celsior Owner’s Manual, hereinafter “Celsior”
`
`(Ex. 1009)
`
`
`
`IV. SUMMARY OF THE '463 PATENT
`
`A. Brief Description
`
`The ‘463 patent is directed to a method and apparatus for indicating the
`
`operational status and parameters of a vehicle cruise control system. (Ex. 1001 at
`
`7
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
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`Abstract). As shown in FIG. 1 (reproduced below), a preset cruise control speed is
`
`displayed in display 16. Other embodiments include an analog display of the
`
`preset cruise control speed. (See id. at FIG. 2; See also Ex. 1011 at para. 23).
`
`
`
`
`
`In the “digital” cruise control system of the ‘463 patent, preset speed
`
`information is continuously displayed after the system is disengaged, even when
`
`temporarily disengaged, e.g., by pressing on the brakes or accelerating. (See Ex.
`
`1001 at 3:60-4:14). As a result, the system provides the operator a clear indication
`
`of the preset speed to which the vehicle will return when the command to resume
`
`speed is applied or when the vehicle is no longer accelerating. (See id.; See also
`
`Ex. 1011 at para. 24).
`
`8
`
`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`B. Summary of the Prosecution History of the '463 patent
`
`In the only Office Action of September 7, 2000, various claims were
`
`objected to for informalities, and rejected under 35 U.S.C. §112, second
`
`paragraph as being indefinite. (Office Action of September 7, 2000 (Ex.
`
`1002) at pp. 2-3). Additionally, claims 1-11 and 25-35 were rejected under
`
`35 U.S.C. §102(e) as being anticipated by Suzuki et al. (US 5,949,346),
`
`while claims 12-24 and 36 were rejected under 35 U.S.C. §103(a) as being
`
`unpatentable over Suzuki in view of Tomecek (US 4,132,284). (Id. at pp. 3
`
`and 7). Notably, unlike the prior art cited in this petition, Suzuki was not
`
`directed to cruise control, a fact relied upon by the applicant to overcome the
`
`rejection. (See Amendment filed March 12, 2001 (Ex. 1002) at pp. 6-8; See
`
`also Ex. 1011 at para. 25).
`
`In response to the Office Action, the applicant amended claims 2, 6, 7,
`
`12, 22, 24, 26, and 34 to address the claim objections and the rejection under
`
`35 U.S.C. §112, second paragraph, e.g., to replace “capable of” with “for,”
`
`and to provide proper antecedent support. (See Amendment filed March 12,
`
`2001 (Ex. 1002) at pp. 1-4). Furthermore, the applicant traversed the prior
`
`art rejections arguing that Suzuki displays actual speed information and
`
`9
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`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`speed limit information, but not a cruise control system or a display of cruise
`
`control speed indicator. (See id. at pp. 6-8). Thus, the file history is clear in
`
`distinguishing a display of a cruise control speed from an actual speed
`
`display. (See id). Thereafter, the '463 patent claims were allowed in the
`
`Notice of Allowance issued on June 11, 2011 (Ex. 1002; See also Ex. 1011
`
`at para. 26).
`
`V. CLAIM CONSTRUCTION
`
`A claim subject to Inter Partes Review is given its "broadest reasonable
`
`construction in light of the specification of the patent in which it appears." 37
`
`C.F.R. § 42.100(b). This means that the words of the claim are given their plain
`
`meaning from the perspective of one of ordinary skill in the art unless that meaning
`
`is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`
`1989). Petitioners submit that a person of ordinary skill in the art of control
`
`systems and their display capabilities at the time of the alleged invention would
`
`have had a Bachelor’s degree in engineering or equivalent coursework and at least
`
`two years of experience in automotive control systems and user interfaces for
`
`vehicles.
`
`10
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`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`Petitioners further submit, for the purposes of Inter Partes Review only, that
`
`the claim terms are presumed to take on their broadest reasonable interpretation in
`
`light of the specification of the '463 patent. Petitioners submit that the following
`
`terms may need to be construed in connection with this IPR:
`
`A. “engaging the system” (claim 1) and “engaging the cruise control
`system” (claim 21)
`
`The ‘463 patent uses numerous terms to describe various states of the cruise
`
`control system. Among them, the term “engaged” is used throughout the
`
`specification to specifically describe an operating state of the cruise control system
`
`to control the speed of vehicle to the preset speed. (See, e.g., Ex. 1001 at FIG. 4).
`
`For example, at column 5, lines 13-15, the ‘463 patent discloses that when the
`
`cruise control “is engaged,… the automobile accelerates to the preset speed.”
`
`Furthermore, at column 1, lines 46-48, the '463 patent describes a system "engaged
`
`at a set speed" to mean "the car's speed is automatically controlled at the
`
`memorized speed." Thus, based on its plain meaning in light of the specification,
`
`one of ordinary skill in the art would consider “engaging the system” (claim 1) and
`
`“engaging the cruise control system” (claim 21) to mean “operating the cruise
`
`11
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`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`control system to automatically control the vehicle at the preset speed.” (See Ex.
`
`1011 at para. 28).
`
`B. “enabling” (claims 1 and 2) and “enabled” (claims 2 and 4)
`
`The claims distinguish an “enabling” of the cruise control system from an
`
`“engaging,” which is construed above. (See, e.g., id. at claim 1). For example,
`
`according to claim 1, the cruise control system is "enabl[ed]" by an enable switch
`
`and "engag[ed]" by a set speed input. Furthermore, in claim 4, the controller is
`
`“initially enabled” and, in claim 2, the cruising speed is selected “when the
`
`controller is enabled.” The specification clearly uses the term “enabled” to mean a
`
`“system on” state for the cruise control system. (See id. at 4:39-46). Thus,
`
`“enabling” means “turning on” and “enabled” means “turned on.” (See Ex. 1011 at
`
`para. 29).
`
`C. “unset status of the preset speed” (claim 15) and "unset state of the
`preset speed" (claim 21)
`
`The terms "status" and "state" are used interchangeably in the claims and are
`
`therefore synonymous in the '463 patent. (See, e.g., id. at claims 15 and 22). As
`
`such, "unset state" and "unset status" of the preset speed have the same meaning
`
`12
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`

`

`Request for Inter Partes Review
`of U.S. Patent No. 6,324,463
`
`
`
`
`
`
`for purposes of this proceeding, i.e., a state or status in which there is no preset
`
`speed for the cruise control system. (See Ex. 1011 at para. 30).
`
`D. “activating the cruise control” (claims 12 and 15) and "deactivated"
`(claims 12, 13, and 21)
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`Both claims 12 and 15 recite an "activating" of the cruise control system,
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`with claim 15 clearly using this term to mean a turning on of the cruise control
`
`system ("before setting the preset speed, activating the cruise control system").
`
`(Id. at claim 15). Furthermore, the specification utilizes the term "activated" to
`
`also refer to a turning on of the system ("When the cruise control system is first
`
`activated, the preset display 16 will blink the number zero indicating an 'unset'
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`state of the cruise control"). (Id. at 4:4-6). Accordingly, in light of the
`
`specification and the plain meaning of this term, "activating the cruise control"
`
`means "turning on the cruise control." For similar reasons, "deactivated" as recited
`
`in claims 12, 13, and 21 means "turned off." (See Ex. 1011 at para. 31).
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '463 PATENT IS UNPATENTABLE
`
`A. Grounds 1-4 in view of Mitsubishi References
`
`
`
`The disclosures of the Diamante Owner's Manual (Ex. 1003 and Ex. 1004
`
`(certified translation)), the Diamante Preview Distance Control Manual (Ex. 1005
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`and Ex. 1006 (certified translation)), and Watanabe (Ex. 1007 and Ex. 1008
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`(certified translation)) (hereinafter "Mitsubishi References") are closely related,
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`and therefore discussed together herein. In particular, Watanabe is a publication of
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`a Japanese patent application assigned to Mitsubishi Motors Corporation, and the
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`two manuals are for the same vehicle manufactured by Mitsubishi Motors
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`Corporation. The Owner's Manual is a general manual for the 1995 Mitsubishi
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`Diamante, and the Preview Distance Control Manual is specific to the adaptive
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`cruise control system included in the 1995 Mitsubishi Diamante. (See Ex. 1011 at
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`paras. 33 and 34).
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`(L-R: Watanabe (Ex. 1008 at FIG. 2), Diamante Owner's Manual (Ex. 1004 at p.
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`88), Preview Distance Control Manual (Ex. 1006 at p. 0-2)).
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`1. Ground 1: Claims 1-5, 12-16, 21, 25-28, and 34-36 of the ‘463
`patent are anticipated under 35 U.S.C. §102(b) by Diamante
`Owner's Manual
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`
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`As detailed in the discussion and claim charts below, and the Declaration of
`
`Dr. Paul Green (Ex. 1011), the disclosure in the Diamante Owner's Manual (Ex.
`
`1003 and Ex. 1004 (certified translation)), which was not before the Examiner
`
`during the original prosecution of the '463 patent, meets all of the limitations of
`
`claims 1-5, 12-16, 21, 25-28, and 34-36.
`
`
`
`Specifically, the Diamante Owner's Manual discloses a cruise control system
`
`for vehicles that automatically maintains the vehicle speed at a set cruise control
`
`speed (claims 1-5, 12-16, 21, 25-28, and 34-36), a center message display for
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`displaying a cruise control screen (i.e., preview distance control display) including
`
`the set cruise control speed (claims 1-5, 12-16, 21, 25-28, and 34-36), a cruise
`
`control indicator light for indicating whether the cruise control system is operating
`
`to maintain the vehicle at the set cruise control speed (claims 26 and 27) and
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`therefore activated (claim 34(g)), and a main switch to turn the system on and to
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`indicate an on/off status of the system (claims 1, 2, 4, 15, 21, and 34). (See Ex.
`
`1004 at pp. 86, 88, and 89; See also Ex. 1011 at para. 36).
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`One skilled in the art would understand that the Diamante Owner's Manual
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`includes a memory to store the preset speed (claims 1, 2, 26, and 34) by virtue of
`
`controlling the vehicle according to a pre-set speed and continuously displaying the
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`pre-set speed. (See Ex. 1004 at pp. 86, 88, and 89; See also Ex. 1011 at para. 37).
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`Furthermore, the Diamante Owner’s Manual provides that cruise control can be
`
`canceled and subsequently re-engaged to “return[] to the preset speed prior to the
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`cancellation.” (Ex. 1004 at p. 87). As such, one skilled in the art would
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`understand that a memory is required to store the pre-set speed in order to return
`
`thereto at a later time. (Ex. 1011 at para. 37). Notwithstanding, the ‘463 patent
`
`itself admits that “the conventional cruise control system is provided with a
`
`memory function that stores the set control speed.” (Ex. 1001 at 1:26-27; See also
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`Ex. 1011 at para. 37).
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`
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`Additionally, the Diamante Owner's Manual discloses a combination of
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`different indicators and visual symbols that can alert the operator of the vehicle to
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`different statuses of the cruise control system. For example, as described and
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`shown on page 52 of the Diamante Owner's Manual, a mode switch is provided so
`
`that an operator can display the cruise control screen on the center message display
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`at any time, including after the cruise control system is initially turned on (claims 4
`
`and 15). The screen includes a contour of a vehicle with no speed therein if there
`
`is no set cruise control speed, e.g., when the cruise control system is initially
`
`turned on by operation of the main switch (claims 4 and 15) (Ex. 1011 at para. 38):
`
`(Ex. 1004 at p. 52)
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`
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`Accordingly, if the cruise control system is turned on by operation of the
`
`main switch, the main switch is illuminated and the cruise control screen is
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`displayed with no speed included in the contour of the vehicle, thereby indicating
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`that the cruise control system is on and no cruise control speed has been set (claims
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`4, 12, 15, 16, and 21). (See id. at pp. 52, 86, and 89; See also Ex. 1011 at para. 39).
`
`
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`Furthermore, according to the Diamante Owner's Manual, the set cruise
`
`control speed is saved after cruise control is temporarily disengaged by pressing
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`the brakes (claim 12). (See id. at p. 87). As such, the set cruise control speed is
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`displayed at a time after braking during which the vehicle is not being maintained
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`at substantially the set speed (claim 12) (Ex. 1011 at para. 40).
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`
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`The tables below show how each limitation of claims 1-5, 12-16, 21, 25-28,
`
`and 34-36 is met by the Diamante Owner's Manual (Ex. 1011, claim charts at pp.
`
`22-46).
`
`Claim 1 of the ‘463 patent
`1. A cruise control system for
`vehicle having a human
`operator, comprising:
`
`[1(a)] a speed controller that
`automatically maintains the
`vehicle speed at a preset
`speed;
`[1(b)] an enable switch
`associated with said controller
`for enabling the system;
`
`Anticipated by Diamante Owner's Manual
`
`
`
`Ex. 1004 at p. 86.
`See disclosures cited in response to claim 1
`preamble.
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`Ex. 1004 at p. 86.
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`[1(c)] a set speed input in
`communication with said
`controller for manually
`setting the speed of the
`vehicle at said preset speed,
`thereby engaging the system;
`
`[1(d)] a memory which stores
`information indicative of said
`preset speed; and
`
`Id.
`
`Id. at p. 87.
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`
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`[1(e)] a feedback system for
`communicating said
`information in said memory
`to the operator of the vehicle.
`
`Claim 2 of the ‘463 patent
`2. A cruise control system for
`a variable speed vehicle
`controlled by a human
`operator, comprising:
`[2(a)] a speed controller for
`automatically maintaining the
`vehicle at a substantially
`constant cruising speed
`selected by the operator;
`[2(b)] a cruise control enable
`switch associated with the
`controller for enabling and
`disabling the controller;
`
`Id. at p. 90.
`
`See also Decl. of Paul Green (Ex. 1011) at para.
`37.
`
`
`
`
`
`
`
`Id. at p. 88.
`Anticipated by Diamante Owner's Manual
`See disclosures cited in response to claim 1
`preamble.
`
`See disclosures cited in response to claim [1(a)].
`
`See disclosures cited in response to claim [1(b)]
`See also:
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`Ex. 1004 at p. 87.
`See disclosures cited in response to claim [1(c)]
`
`See disclosures cited in response to claim [1(d)].
`
`See disclosures cited in response to claim [1(e)].
`
`See also:
`
`
`[2(c)] a set speed input in
`communication with the
`controller for selecting the
`cruising speed of the vehicle
`when the controller is
`enabled;
`[2(d)] a memory that stores
`information representative of
`the selected cruising speed;
`and
`[2(e)] a feedback system that
`substantially continuously
`communicates the selected
`cruising speed information to
`the operator of the vehicle
`until either the operator
`selects a subsequent cruising
`speed or the controller is
`disabled.
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`
`
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`Ex. 1004 at p. 91.
`
`See also:
`
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`Id. at p. 91.
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`Id. at p. 87.
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`
`
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`Claim 3 of the ‘463 patent
`3. The cruise control system
`of claim 2, wherein the
`feedback system includes a
`digital display.
`
`
`Id. at p. 92.
`Anticipated by Diamante Owner's Manual
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`Id. at p. 88.
`Anticipated by Diamante Owner's Manual
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`Claim 4 of the ‘463 patent
`4. The cruise control system
`of claim 3, wherein the digital
`display displays a
`predetermined signal when
`the controller is initially
`enabled to indicate the state
`of the controller.
`
`
`Id. at p. 89.
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`
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`Id. at p. 52.
`
`See also:
`
`
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`
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`Claim 5 of the ‘463 patent
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`
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`Id. (emphasis added).
`
`See also Decl. of Paul Green (Ex. 1011) at paras.
`38 and 39.
`Anticipated by Diamante Owner's Manual
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`5. The cruise control system
`of claim 3, wherein the digital
`display displays information
`indicative of the selected
`cruising speed of the vehicle.
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`
`
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`Ex. 1004 at p. 88.
`Claim 12 of the ‘463 patent Anticipated by Diamante Owner's Manual
`12. A method for visually
`See disclosures cited in response to claim 1
`communicating to the human
`preamble.
`operator of a vehicle having a
`
`cruise control system a
`See also:
`cruising speed at which the
`
`vehicle is set, comprising:
`
`
`Ex. 1004 at p. 88.
`
`[12(a)] determining the speed
`at which the vehicle is
`traveling;
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`
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`
`
`[12(b)] activating the cruise
`control system at a desired
`cruising speed;
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`Id. at p. 93 (emphasis added).
`See disclosures cited in response to claim [1(b)].
`
`See also:
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`[12(c)] displaying a symbol
`indicative of the speed at
`which the cruise control
`system is activated;
`
`Ex. 1004 at 86.
`See disclosures cited in response to claim [1(e)].
`
`See also:
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`[12(d)] m