UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA, LLC,
`VOLVO CARS OF NORTH AMERICA, LLC, TOYOTA MOTOR NORTH
`AMERICA, INC., AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH
`AMERICA, INC., AND SUBARU OF AMERICA, INC.
`Petitioner
`
`
`
`
`
`v.
`
` CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`
`____________
`
`Case No. IPR2014-00281
`Patent 6,324,463
` ____________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2014-00281
`U.S. Patent No. 6,324,463
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`TABLE OF CONTENTS
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`
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`Claim 1 – Narita discloses an “enable switch,” both expressly and inherently, and a
`
`Claim 15 – Narita discloses “before setting the preset speed, activating the cruise control
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`Claim 18 – Narita discloses “upon braking the vehicle, discontinuing maintaining the
`vehicle at substantially the preset speed while keeping the data corresponding to the
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`Claims 12 and 13 – PO ignores that the limitations of these method claims can be met by
`teaching the removing/discontinuing step upon occurrence of either of the two presented
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`I. INTRODUCTION ........................................................................................ 1
`II. NARITA ANTICIPATES AND/OR IN COMBINATION WITH THE
`PRIOR ART RENDERS OBVIOUS CLAIMS 1-3, 5, 12-19, 21-26, AND 28 ... 1
`GROUND A: NARITA ANTICIPATES CLAIMS 1-3, 5, 12-16, 18-19, 21, 25-26 AND 28
`1
`“memory which stores information” ............................................................................ 2
`Claim 2 – PO relies solely on its arguments with respect to Claim 1 ................................. 5
`options ...................................................................................................................... 5
`system” ..................................................................................................................... 6
`preset speed in a memory device” ................................................................................ 6
`Claim 19 – Narita discloses that the set lamp indicator turns off upon braking ................ 7
`deactivated, displaying a symbol indicative of an unset state of the preset speed” ........... 8
`of the preset speed” .................................................................................................... 9
`GROUNDS B-D: NARITA IN VIEW OF THE KNOWLEDGE OF ONE OF
`RENDER CLAIMS 17 AND 22-24 OBVIOUS ................................................................ 9
`GROUND E: NARITA IN VIEW OF THE ADMITTED PRIOR ART RENDERS
`CLAIMS 1-3, 5, 12 AND 15 OBVIOUS ........................................................................ 10
`GROUND F: NARITA IN VIEW OF THE NHTSA REPORT RENDERS CLAIMS 1-3,
`5, 12 AND 15 OBVIOUS .............................................................................................. 11
`
`Claim 21 – Narita discloses “discontinuing display … after the cruise control system is
`deactivated or a new present speed is selected” and “after the cruise control system is
`
`Claim 26 – Narita discloses “a memory device operable to store information representative
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`ORDINARY SKILL AND NARITA IN VIEW OF BEISWENGER OR NAGASHIMA
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`U.S. Patent No. 6,324,463
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`III. NAGASHIMA ............................................................................................... 12
`GROUND G: NAGASHIMA ANTICIPATES CLAIMS 18, 19, 26 AND 29-31 ............ 13
`a symbol indicative of the preset speed” ..................................................................... 13
`similarity of Nagashima and the ‘463 Patent .......................................................... 14
`IV. CONCLUSION ........................................................................................... 15
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`Claim 18 – Nagashima teaches “keeping data … in a memory device” and “displaying …
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`Claim 26 – PO reads limitations into the claim that are not required and ignores the
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`ii
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`IPR2014-00281
`U.S. Patent No. 6,324,463
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`I.
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`INTRODUCTION
`In an attempt to avoid the express teachings of the prior art, Patent Owner
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`(“PO”) incorrectly reads the teachings of both Narita and Nagashima and/or ignores the
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`findings of the Board’s Institution Decision. Read in the proper context, as the Board did
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`in its Institution Decision, the Challenged Claims are anticipated and/or obvious in view
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`of the prior art as presented in the Petition.
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`II. NARITA ANTICIPATES AND/OR IN COMBINATION WITH THE
`PRIOR ART RENDERS OBVIOUS CLAIMS 1-3, 5, 12-19, 21-26, AND 28
`Many of PO’s arguments with respect to Narita rely on the erroneous
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`assumption that the conventional aspects of Narita’s invention as described in Fig. 4
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`is somehow materially different than the conventional system in Fig. 1. This
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`assumption neglects the fact that conventional aspects are common to both Fig. 1 and
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`Fig. 4. Indeed, Narita expressly states that “[i]n FIG. 4, the portions of the
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`configuration that are the same as FIG. 1 are given the same reference numerals and
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`descriptions thereof are omitted.” Ex. 1004, Narita at 5. The invention merely
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`improves on certain aspects while leaving others the same. Thus, the discussion in
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`Narita surrounding the conventional system applies equally to the invention of Narita.
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`GROUND A1: Narita Anticipates Claims 1-3, 5, 12-16, 18-19, 21, 25-26 and 28
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`As an initial matter, Petitioner notes that PO does not challenge in any respect
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`1 References to the Ground in this Reply refer to the labels used in the Institution
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`Decision Order and used by PO in its Response. See e.g., Paper 17 (“Inst. Dec.”) at 39.
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`IPR2014-00281
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`the fact that Narita anticipates independent Claim 25. Consequently, Petitioner
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`requests cancellation of Claim 25 based on the grounds set forth in the Petition and
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`the Institution Decision. Paper 1 (“Pet.”) at 29; see also Inst. Dec. at 24-25.
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`Likewise, PO does not challenge that Narita anticipates the limitations added
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`by dependent Claims 3, 5, 14, 16 and 28. PO apparently relies on its arguments with
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`respect to the corresponding independent claims (i.e., Claims 1, 13, 15 and 26).
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`Petitioner, therefore, will not address the additional limitations of these dependent
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`claims. As described below, independent Claims 1, 13, 15 and 26 are anticipated by
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`Narita and, therefore, Claims 3, 5, 14 16 and 28 are also anticipated.
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`Claim 1 – Narita discloses an “enable switch,” both expressly and
`inherently, and a “memory which stores information”
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`PO’s primary arguments with respect to Narita are two-fold: (1) Narita does
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`not disclose an “enable switch”; and, (2) Narita does not disclose “memory.” Neither
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`of these arguments is supported by a proper reading of Narita.
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`First, PO does not contest that the “main switch” described in the
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`conventional system of Narita enables the cruise control system and constitutes an
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`enable switch. Instead, PO argues that Petitioner is improperly relying on a
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`combination of the conventional system with the invention of Narita. Paper 26 (“PO
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`Resp.”) at 4. 2 This is incorrect because the invention of Narita includes all aspects of
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`2 Petitioner also notes that the case relied upon by PO, and the cases cited therein, are
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`factually distinct from the present circumstances. For example, none of those cases or
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`the conventional system depicted in Figs. 1-3. Indeed, it merely improves on the
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`conventional system by providing a display that cancels the stored vehicle speed
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`display at the time the system is canceled instead of always displaying the stored
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`vehicle speed. Ex. 1004, Narita at 4.
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`As noted above, Narita notes that Fig. 4 is the same as that of the conventional
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`system depicted in Fig. 1 unless noted otherwise. The operation of the conventional
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`vehicle speed automatic control device depicted in Fig. 1 is described in Fig. 3 and
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`“begins with turning on the main switch.” Id. at 3. Looking to Fig. 3, it is clear that the
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`main switch remains “on” during operation of the speed automatic control device in
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`the conventional system. Similarly, but put in perspective of Narita’s invention in
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`describing Fig. 4, the vehicle speed automatic control device is operable only “after
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`turning on power,” i.e., after turning on the main switch. Id. at 5; see also Ex. 1012,
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`Crawford Suppl. Decl. at ¶ 4.
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`Petitioner attempts to detract from the above by noting that Fig. 5 of Narita
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`describes operation of the command switches (set, resume). PO Resp. at 5. While
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`correct, PO ignores that the command switches of Fig. 5 are only operable “after
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`turning power on” to the controller 7, i.e., “turning on the main switch.” Petitioner’s
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`expert concurred in this reading of Narita. Ex. 1011, Crawford Decl. at ¶27; see also Ex.
`
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`the prior art at issue discusses a situation in which the “invention” of the prior art
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`reference is an improvement to a pre-existing conventional system.
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`1012, Crawford Suppl. Decl. at ¶ 4. PO chose not to question Mr. Crawford on his
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`opinion or to provide any contrary testimony from an expert of its own. As such, Mr.
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`Crawford’s expert testimony is unrebutted. Therefore, the “main switch” of Narita
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`discloses the “enable switch” of the ‘463 Patent because it turns the vehicle speed
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`automatic control device on and off. On this basis alone, Narita teaches an “enable
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`switch” and anticipates Claim 1.3
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`Next, with respect to the “memory” limitation, PO once again does not dispute
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`that the “conventional” device described in Narita, and cited by Petitioner, meets the
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`“memory” limitation of Claim 1. Instead, PO argues that the “conventional” system is
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`not part of Narita’s inventive device. As discussed above, this is incorrect because
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`Narita’s invention encompasses the “conventional” device plus the improvement.
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`Specifically, the microcomputer 9 of Fig. 4 is the same as the microcomputer of Fig.
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`1. See Ex. 1004, Narita at 5 (“In FIG. 4, the portions of the configuration that are the
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`same as FIG. 1 are given the same reference numerals and descriptions thereof are
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`omitted.”). The microcomputer 9 of Fig. 4, therefore, has embedded in it a “vehicle
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`3 Second, in the event that the main switch of Narita is found not to be present in
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`Narita, the ignition switch, inherent to Narita, meets this limitation because it would
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`provide power to, and enable, the vehicle automatic speed control device and
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`associated command switches. Pet. at 14 (citing Ex. 1011, Crawford Decl. at ¶ 28); see
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`also Ex. 1012, Crawford Suppl. Dec. at ¶¶ 5-6.
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`4
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`speed storage part that stores the vehicle speed,” just as the microcomputer 9 of Fig.
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`1. Ex. 1004, Narita at 2. And, as noted by PO (Paper 26 at 6), one of ordinary skill in
`
`the art would have understood that the speed is stored in memory of the
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`microcomputer. Ex. 1011, Crawford Decl. at ¶ 30. And PO has not questioned this
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`opinion or proffered any contrary expert opinion. Therefore, Narita teaches a
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`“memory” as required by Claim 1.
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`Based on the foregoing, Narita anticipates Claim 1 and, therefore, Petitioner
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`respectfully requests cancellation of Claim 1.
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`Claim 2 – PO relies solely on its arguments with respect to Claim 1
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`Because PO merely incorporates its arguments with respect to Claim 1,
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`Petitioner adopts its arguments from claim 1 above with respect to “enable switch”
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`and “memory.” Therefore, Narita anticipates Claim 2.
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`Claims 12 and 13 – PO ignores that the limitations of these method
`claims can be met by teaching the removing/discontinuing step upon
`occurrence of either of the two presented options
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`PO only argues that Narita does not teach the removing and discontinuing
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`steps of claims 12 and 13, respectively, when the system is deactivated. However, this
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`is only half of the analysis as these claims limitations are met where a reference
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`teaches either of the two recited options. PO does not contend otherwise. Instead,
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`PO wholly ignores that Narita clearly teaches, at a minimum, removing and
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`discontinuing the stored vehicle speed display when a new cruising speed is selected
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`i.e., the newly selected speed is displayed instead of the previous stored speed. Ex.
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`5
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`1004, Narita at 6, Fig. 5; see also Pet. at 15-16 (citing same), 22-25; Inst. Dec. at 19-20.
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`This express teaching of Narita anticipates both the removing and discontinuing
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`limitations. PO’s failure to address these limitations is a concession that the limitations
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`are present in Narita. In addition, as discussed below with respect to claim 21, Narita
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`also teaches removing and discontinuing the display when the system is “deactivated.”
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`Therefore, Claims 12 and 13 are anticipated by Narita.
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`Claim 15 – Narita discloses “before setting the preset speed, activating
`the cruise control system”
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`PO’s arguments here are based on its arguments regarding the “enable switch”
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`for Claim 1, and Petitioner adopts its arguments from claim 1 above regarding the
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`same. Specifically, Narita describes a “main switch” must be turned on prior to
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`operation of the vehicle speed automatic control device. Ex. 1004, Narita at 3; see also
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`id. at 5 (“FIG. 5 is a diagram illustrating display changes in the speedometer… after
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`turning on power”).4 Therefore, Narita anticipates Claim 15.
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`Claim 18 – Narita discloses “upon braking the vehicle, discontinuing
`maintaining the vehicle at substantially the preset speed while keeping
`the data corresponding to the preset speed in a memory device”
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`PO asserts that neither the Petition nor Petitioner’s declarant addressed this
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`4 In the event Narita does not have an additional, separate switch to turn the device
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`on, at a minimum, an ignition switch, inherent to all vehicles, would otherwise
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`necessarily operate to enable the vehicle speed automatic control device. Ex. 1012,
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`Crawford Suppl. Decl. at ¶¶ 5-6.
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`U.S. Patent No. 6,324,463
`limitation of Claim 18. However, page 27 of the Petition refers to the following
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`portion of Narita: “[O]perating the br[ake]s at time t12 during constant speed travel,
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`the change in the actual vehicle speed due to the deceleration is displayed on the
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`actual vehicle speed display unit 36 while the stored vehicle speed continues to be
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`displayed as is on the stored vehicle speed display unit 37.” Pet. at 27 (citing Ex.
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`1004, Narita at 6) (emphasis added). Citing to this exact portion of Narita, the Board
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`found that “between time t12 and t13, stored vehicle speed display unit 37 continues to
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`display the preset speed of 70 km/hr as stored in the vehicle speed storage part.”
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`Inst. Dec. at 23 (emphasis added). PO ignores this express finding of the Board
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`without explanation as to why it was incorrect. Therefore, Narita anticipates Claim 18.
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`Claim 19 – Narita discloses that the set lamp indicator turns off upon
`braking
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`PO contends that the symbol
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`indicative of the preset speed
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`is not
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`distinguishable in Narita because the 70 km/hr in the stored vehicle display unit 37 of
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`Fig. 6 of Narita does not change upon braking. This is a mischaracterization of Narita.
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`Two things are clear in Narita: (1) when the device is engaged, the stored and actual
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`vehicle speed display units in the speedometer will display substantially the same
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`number and together will be indicative of the stored speed (Ex. 1004, Narita at 5, Fig.
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`6); (2) when the brake is depressed, the actual vehicle speed displayed will be lowered
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`while the stored vehicle speed display will remain the same (Id. at 6, Fig. 6; see also
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`Paper 1 at 27). Thus, upon braking, the appearance of the entire speedometer display,
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`which comprises a symbol indicative of the preset speed, will be distinguishable from
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`the appearance of the speedometer when the stored speed is being maintained.
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`Alternatively, the “set indicator in meter,” i.e., the cruise lamp, and the speed
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`display units are presented to the driver of the vehicle. Ex. 1011, Crawford Decl. at ¶ 33;
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`Ex. 1012, Crawford Suppl. Decl. at ¶¶ 7-8. While the stored speed is being maintained,
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`the cruise lamp remains lit. Narita at Fig. 6. Upon braking, the stored vehicle speed
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`symbol would be distinguishable because the cruise lamp associated with the stored
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`vehicle speed display unit would no longer be lit. Pet. at 27; Ex. 1012, Crawford Suppl.
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`Decl. at ¶ 9. Therefore, Narita anticipates Claim 19.
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`Claim 21 – Narita discloses “discontinuing display … after the cruise
`control system is deactivated or a new present speed is selected” and
`“after the cruise control system is deactivated, displaying a symbol
`indicative of an unset state of the preset speed”
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`As to the first disputed limitation, Petitioner incorporates its statements above
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`with respect to claims 12 and 13, which each contain a substantially similar limitation.
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`As to the second limitation, PO offers unsupported attorney argument that
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`activation of the failsafe does not “turn off” the cruise control system. However,
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`Narita clearly states that activation of the failsafe “cancel[s]” the cruise control
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`system. Ex. 1004, Narita at 7 (“the system is canceled due to movement by the
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`failsafe…. When the system is canceled due to movement by the failsafe… actual
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`vehicle speed decreases.”); see also Fig. 7. And to a person of ordinary skill in the art,
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`cancelling the cruise control system by operation of a failsafe that has detected system
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`U.S. Patent No. 6,324,463
`abnormalities means turning the cruise control system off. Ex. 1012, Crawford Suppl.
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`Decl. at ¶¶ 10-11; Ex. 1004, Narita at 2, 4. Upon cancellation of the system, the symbol
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`indicative of the stored vehicle speed display is replaced with a dashed line indicating
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`an unset state. Id. Therefore, Claim 21 is anticipated by Narita.
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`Claim 26 – Narita discloses “a memory device operable to store
`information representative of the preset speed”
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`Because PO merely incorporates its arguments with respect to claim 1,
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`Petitioner adopts its arguments from claim 1 above with respect to “memory.”
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`Therefore, Narita anticipates Claim 26.
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`GROUNDS B-D:
`
`Narita In View of the Knowledge of One of Ordinary
`Skill and Narita In View of Beiswenger or Nagashima
`Render Claims 17 and 22-24 Obvious
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`
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`Grounds B-D established
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`that dependent Claims 17 and 22-24
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`(or
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`combinations thereof) are obvious over Narita alone in view of the knowledge of one
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`of ordinary skill, and Narita in view of Beiswenger or Nagashima. Inst. Dec. at 27-28,
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`39; see also Pet. at 35-38, 46-47. PO’s sole argument with respect to these grounds is
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`that Narita does not anticipate claims 13, 15 and 21 for reasons previously stated in its
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`Response. PO Resp. at 14; see also id. at 8-9, 11. Petitioner incorporates its arguments
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`with respect to claims 13, 15 and 21 above.
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`In addition, in all of the rejections for Grounds B-D, Petitioner relied upon its
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`expert to provide the bases for the obviousness rejections. Pet. at 33-36, 46-47; see also
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`Ex. 1011, Crawford Decl. at ¶¶ 34-42, 47-50. The statements of Mr. Crawford stand
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`U.S. Patent No. 6,324,463
`uncontested. Therefore, Claims 17 and 22-24 are rendered obvious for the reasons
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`stated in the Petition and in the Institution Decision.
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`GROUND E: Narita In View of the Admitted Prior Art Renders Claims 1-
`3, 5, 12 and 15 Obvious
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`
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`PO does not put forth any reason as to why dependent claims 3 and 5 are not
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`obvious over Narita in view of the Admitted Prior Art. Therefore, to the extent
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`independent Claim 2 is obvious, as described below, so too are Claims 3 and 5.
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`PO unconvincingly argues that the Background of the Invention of the ‘463
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`Patent is not prior art because it is not expressly labeled as “prior art.” PO Resp. at 14.
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`This is not the correct standard. Rather, where an applicant admits in its specification
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`that a structure is well known at the time of his invention, this can properly be
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`considered as admitted prior art. In re Constant, 31 F. App’x 715, 717-18 (Fed. Cir.
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`2002) (finding that structure missing from primary reference could be found in prior
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`art where applicant “admitted in the specification … such structure was well known in
`
`the art at the time of his invention.”). This is exactly what applicant did here. As noted
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`in the Petition, the applicant admitted that at least six aspects of prior art systems and
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`three prior art methods of using cruise control systems were well known and that are
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`“found in many automobiles.” Ex. 1001, ‘463 Patent at 1:12-14, 1:25-27, 1:42-43..
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`Paper 1 at 7-8; see also Ex. 1001, ‘463 Patent at 1:12-14, 1:25-27, 1:42-43. Thus, the
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`“conventional cruise control system” described in the Background is clearly admitted
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`prior art, as the Board previously recognized. Inst. Dec. at 30 (“Those descriptions
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`establish such an enable switch was admitted to be in the prior art.”)
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`Perhaps recognizing the futility of its position, PO does not contend that the
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`“conventional” cruise control system lacked an “enable switch,” but instead argues
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`that the description of the conventional system does not describe how it is “associated
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`with the [speed] controller” and that Petitioner does not argue that it inherently has
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`that association. PO Resp. at 15. This argument ignores that this grounds is based on
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`obviousness based on the admitted prior art and Narita. As discussed above, Fig. 4 of
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`Narita clearly discloses that a “main switch,” i.e., an enable switch, would be
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`associated with and operate to turn the controller on and off. See, e.g., Ex. 1011,
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`Crawford Decl. at ¶¶ 27, 28. The express motivation for this combination includes
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`providing an important safety function by preventing inadvertent engagement of the
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`system. Ex. 1011, Crawford Decl. at ¶44.
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`Finally, PO contends that Narita in view of the APA does not render Claims 12
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`and 15 obvious for the same reasons that Narita alone does not anticipate those
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`claims. Petitioner incorporates its arguments from above as to these claims. Claims 12
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`and 15, therefore, are rendered obvious over Narita in view of the APA.
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`GROUND F: Narita In View of the NHTSA Report Renders Claims 1-3, 5,
`12 and 15 Obvious
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`PO does not put forth any reason as to why dependent claims 3 and 5 are not
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`
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`obvious over Narita in view of the NHTSA Report. Therefore, Petitioners will not
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`address those claims and to the extent independent Claim 2 is invalid, as described
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`below, so too are Claims 3 and 5.
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`PO’s primary complaints with this proposed combination are that the NHTSA
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`Report does not describe an “enable switch” that is “associated with the [speed]
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`controller” or a “memory.” While the NHTSA Report expressly recites a control unit
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`that “record[s] the current vehicle speed” in response to a setting operation (Ex. 1007-
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`283, NHTSA Report at 4-1), Petitioner only relied on this reference to teach an
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`“enable switch.” See Pet. at 37-38.5
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`The NHTSA Report clearly states that the “driver’s operating switch turns the
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`system on and off.” Ex. 1007-283, NHTSA Report at 4-1. The operating switch is
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`associated with the control unit/system in that if the operating switch is not on, there
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`is no power to the control unit that maintains the set speed or “restart[s] the cruise
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`system and maintains the last preset speed.” Id.; see also Fig. 4-3. This is the epitome of
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`being associated with a “speed controller.” Therefore, Claim 1-3, 5, 12 and 15 are
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`obvious over Narita in view of the NHTSA Report.
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`III. NAGASHIMA
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`5 Similarly, while Petitioner did not rely on the NHTSA Report to teach the
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`“activating” limitations of Claims 12 and 15, it is abundantly clear that the “operating
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`switch turns the [cruise control] system on and off,” i.e., it provides the power to the
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`control unit. Ex. 1007-283, NHTSA Report at 4-1 (“The power to the cruise control
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`system is supplied through the neutral safety switch and the operating switch.”).
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`12
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`PO does not challenge that Nagashima anticipates dependent Claims 19 and
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`29-31, and instead PO apparently relies on its arguments with respect to the
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`corresponding independent claims. Petitioner, therefore, will not address the
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`additional limitations of these dependent claims. As described below, Nagashima
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`anticipates the independent claims and, therefore, Claims 19 and 29-31 are also
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`anticipated and should be canceled.
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`GROUND G: Nagashima Anticipates Claims 18, 19, 26 and 29-31
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`
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`Despite the manifest similarities of Nagashima and the challenged claims, PO
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`takes unsupported positions with respect to the teachings of Nagashima.
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`Claim 18 – Nagashima teaches “keeping data … in a memory device”
`and “displaying … a symbol indicative of the preset speed”
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`
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`As to Claim 18, PO makes two unsupported arguments. First, PO contends
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`that neither the Petition nor Petitioner’s expert established that Nagashima teaches
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`“upon braking … keeping data corresponding to the preset speed in a memory
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`device.” Most notably, PO does not contest that Nagashima teaches that a set speed is
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`“stored in the speed memory (RAM),” i.e., memory device. Ex. 1009, Nagashima at ¶
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`20, Fig. 3 (S2); see also Pet. at 41. Further, it is not disputed that after braking and
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`deceleration, Nagashima teaches resuming cruise control to the preset speed, i.e., the
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`speed stored in memory. Ex. 1009, Nagashima at ¶ 29. Thus, there is no doubt that
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`Nagashima teaches that the speed data remains stored in RAM upon braking because
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`the vehicle is able to return to that speed by pressing the resume switch.
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`Second, PO argues that Nagashima does not describe “… after braking …,
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`displaying … a symbol indicative of the preset speed.” PO’s assertion that Nagashima
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`describes that “all of the indicators 31 blink” upon braking is incorrect as it ignores
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`Nagashima’s express teaching that, upon braking, the difference between the actual
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`speed and the preset speed can be determined by comparing the actual speed with
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`“the display of the setting speed by the blinking of indicators (31) of setting speed
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`display readout.” Ex. 1011, Nagashima at ¶¶ 20, 29. In other words, only those
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`indicators previously lit to indicate the setting speed will blink upon braking. This is
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`identical to the description in the ‘463 Patent of what happens upon braking. See Ex.
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`1001, ’463 Patent at 4:67-5:3 (“When the operator steps on the brake … the LED
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`indicating the previously set speed point goes into a blinking mode.”). Based on the
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`foregoing, Nagashima anticipates Claim 18 and 19.
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`Claim 26 – PO reads limitations into the claim that are not required and
`ignores the similarity of Nagashima and the ‘463 Patent
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`PO contends that Nagashima does not disclose a “second visual display
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`apparatus” because it does not provide “any indication … of the actual preset speed,”
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`e.g., the speed indicators of Nagashima only cover a range of speeds. This argument
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`boils down to: Fig. 2 of the ‘463 Patent has more dots (44) in it than Fig. 1 of
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`Nagashima (dots depicted as 3).
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` However, Claim 26 does not require that the visual indicators have an exact 1
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`mph (or km/h) correspondence to the “actual [or exact] preset speed,” but only
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`“visual information indicative of the preset speed.” This is exactly what Nagashima
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`provides.
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`Nagashima expressly states that the means for solving the identified problem in
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`the conventional system includes providing a “plurality of indicators [] arranged in
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`dots along a scale of the speedometer and that which corresponds to the setting
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`speed … is lit to display the setting speed.” Ex. 1011, Nagashima at ¶ 0009
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`(emphasis added). Nagashima further teaches that each “dot” may represent a range
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`of 5 km/h thereby providing an indication of the preset speed. Id. at ¶ 0013.
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`Importantly, there is no requirement in the ‘463 claims or specification that
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`requires the visual be of the exact preset speed. Indeed, the “dots” of Fig. 2 of the
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`‘463 Patent also indicate a “range” of the preset speed, albeit a smaller range as there
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`are 11 dots between 40 and 50. Regardless, neither Claim 26, nor the ‘463 Patent
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`specification, require that the “visual information” be capable of providing any
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`particular level of granularity with respect to the preset speed.
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`The Board should reject PO’s attempt to read a limitation into Claim 26
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`requiring a single indicator for every mile per hour as such a reading is not supported
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`by the specification or the claim language. As a result, Claims 26 and 29-31 are
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`anticipated by Nagashima and should be canceled.
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`IV. CONCLUSION
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`Based on the foregoing, the Petition, and the Board’s Institution Decision, the
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`Board should cancel claims 1-3, 5, 12-19, 21-26 and 28-31 of the ‘463 Patent.
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`Respectfully submitted,
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`By: /s/
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`Matthew J. Moore
`Reg. No. 42012
`Latham & Watkins LLP
`555 Eleventh St., N.W. Suite 1000
`Washington, DC 20004
`202.637.2278
`202.637.2201 (Fax)
`
`Robert Steinberg
`Reg. No. 33144
`Latham & Watkins LLP
`355 South Grand Ave.
`Los Angeles, CA 90071
`213.891.8989
`213.891.8763 (Fax)
`
`Counsel for Petitioners
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`Date: January 9, 2015
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`UPDATED EXHIBIT LIST
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`Description
`U.S. Patent No. 6,324,463 (“the ’463 Patent”)
`File History for the ’463 Patent
`Japanese Patent Publication No. S60-174329 by Narita et al.
`(“Narita”)
`Certified English Translation of Narita
`Affidavit of David Boldwin certifying Translation of Narita
`U.S. Patent No. 5,381,388 by Beiswenger et al. (“Beiswenger”)
`U.S. Department of Transportation, National Highway Traffic
`Safety Administration 1989 Report, “An Examination of
`Sudden Acceleration” by Pollard et al. (“NHTSA 1989 Report”)
`Japanese Published Utility Application No. H4-102059 to
`Nagashima et al. (“Nagashima”)
`Certified English Translation of Nagashima
`Affidavit of Lily Huberman certifying Translation of Nagashima
`Declaration of Daniel A. Crawford in Support of Petition for
`Inter Partes Review
`Supplemental Declaration of Daniel A. Crawford
`
`1
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`Exhibit No.
`1001
`1002
`1003
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`1004
`1005
`1006
`1007
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`1008
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`1009
`1010
`1011
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`1012
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`IPR2014-00281
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the attached PETITIONERS’ REPLY
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`TO PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120 was sent
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`via electronic mail on January 9, 2015, to the following:
`
`John R. Kasha, Reg. No. 53,100
`Kelly L. Kasha, Reg. No. 47,743
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`Counsel of Record for U.S. Patent No. 6,324,463
`
`
`By:
`
`/s/
`Matthew J. Moore
`Reg. No. 42012
`Latham & Watkins LLP
`555 Eleventh St., N.W. Suite 1000
`Washington, DC 20004
`202.637.2278
`202.637.2201 (Fax)
`
`
`Counsel for Petitioners