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 IPR: 2014-00281
`Patent 6,324,463
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`2.
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`LAW OF ANTICIPATION ............................................................................. 2
`II.
`III. THE PETITION DOES NOT SHOW THAT THE CITED
`REFERENCES ANTICIPATE THE CHALLENGED CLAIMS .................. 4
`A. Ground A: Narita Does Not Anticipate The Challenged Claims ......... 4
`1.
`The Petition Does Not Show That Narita Discloses “An
`Enable Switch Associated With Said Controller For
`Enabling The System” Or “A Memory Which Stores
`Information Indicative Of Said Preset Speed” (Claim 1) ........... 4
`The Petition Does Not Show That Narita Discloses “A
`Cruise Control Enable Switch Associated With The
`Controller For Enabling And Disabling The Controller”
`Or “A Memory That Stores Information Representative
`Of The Selected Cruising Speed” (Claim 2) ............................... 7
`The Petition Does Not Show That Narita Discloses
`“Removing Said Symbol When The Cruise Control
`System Is Deactivated Or A New Cruising Speed Is
`Selected” (Claim 12) ................................................................... 8
`The Petition Does Not Show That Narita Discloses
`“Discontinuing Display Of The Symbol Indicative Of
`The Preset [Speed] When The Cruise Control System Is
`Deactivated Or A New Preset Speed Is Selected” (Claim
`13) ............................................................................................... 8
`The Petition Does Not Show That Narita Discloses
`“Before Setting The Preset Speed, Activating The Cruise
`Control System” (Claim 15) ....................................................... 9
`The Petition Does Not Show That Narita Discloses
`“Upon Braking The Vehicle, Discontinuing Maintaining
`The Vehicle At Substantially The Preset Speed While
`Keeping Data Corresponding To The Preset Speed In A
`Memory Device” (Claim 18) .................................................... 10
`
`3.
`
`4.
`
`5.
`
`6.
`
`
`
`

`

`7.
`
`The Petition Does Not Show That Narita Discloses
`“Wherein The Symbol Indicative Of The Preset Speed
`Displayed At The Time After Braking And During
`Which Time The Vehicle Is Not Being Maintained At
`Substantially The Preset Speed, Is Distinguishable From
`The Symbol Indicative Of The Preset Speed While The
`Vehicle Is Being Maintained At Substantially The Preset
`Speed” (Claim 19) ..................................................................... 10
`The Petition Does Not Show That Narita Discloses
`“Discontinuing Display Of The Symbol Indicative Of the
`Preset Speed After The Cruise Control System Is
`Deactivated Or A New Preset Speed Is Selected” Or
`“After The Cruise Control System Is Deactivated,
`Displaying A Symbol Indicative Of An Unset State Of
`The Preset Speed” (Claim 21) ................................................... 11
`The Petition Does Not Show That Narita Discloses “A
`Memory Device Operable To Store Information
`Representative Of The Preset Speed” (Claim 26) .................... 12
`B. Ground G: Nagashima Does Not Anticipate The Challenged
`Claims .................................................................................................. 12
`1.
`The Petition Does Not Show That Nagashima Discloses
`“Upon Braking The Vehicle, Discontinuing Maintaining
`The Vehicle Speed At Substantially The Preset Speed
`While Keeping Data Corresponding To The Preset Speed
`In A Memory Device” Or “At A Time After Braking An
`During Which Time The Vehicle Is Not Being
`Maintained At Substantially The Preset Speed,
`Displaying To The Operator A Symbol Indicative Of The
`Preset Speed” (Claim 18) .......................................................... 12
`The Petition Does Not Show That Nagashima Discloses
`“Second Visual Display Apparatus Operable To Display
`The Visual Information Indicative Of An Operation
`Status Of The Speed Controller, Wherein The Visual
`Information Displayable By The Second Visual Display
`Apparatus Includes Visual Information Indicative Of The
`Preset Speed” (Claim 26) .......................................................... 13
`
`8.
`
`9.
`
`2.
`
`
`
`
`
`

`

`
`IV. THE PETITION DOES NOT SHOW THAT THE CITED
`REFERENCES RENDER OBVIOUS THE CHALLENGED
`CLAIMS ........................................................................................................ 14
`CONCLUSION .............................................................................................. 17
`
`V.
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`C.R. Bard v. M3 Sys., 157 F.3d 1340 (Fed. Cir. 1998) .............................................. 2
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) ................... 2
`In re Bond, 910 F.2d 831 (Fed. Cir. 1990) ................................................................ 2
`In re Nomiya, 509 F.2d 566 (CCPA 1975) .............................................................. 14
`In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) ............................................................ 3
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) ........................................................ 3
`Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ............... 3, 4, 7
`
`
`
`
`iv
`
`
`
`

`

`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.120, Patent Owner Cruise Control Technologies
`
`LLC (“Patent Owner”) submits this response to the Petition for Inter Partes
`
`Review (“Petition”) of claims 1-5, 12-31, and 34-36 of U.S. Patent No. 6,324,463
`
`(the “‘463 Patent”) filed by Subaru of America, Inc., Toyota Motor North
`
`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 “Petitioner”). Paper 1, p. 1.
`
`On July 2, 2014, the Patent Trial and Appeal Board (“Board”) instituted
`
`inter partes review based on the following grounds of unpatentability alleged in
`
`the Petition:
`
`Ground A: Claims 1–3, 5, 12–16, 18, 19, 21, 25, 26, and 28 under 35 U.S.C.
`
`§ 102 as anticipated by Narita;
`
`Ground B: Claims 17 and 22–24 under 35 U.S.C. § 103 as unpatentable
`
`over Narita in view of the knowledge of a person of ordinary skill;
`
`Ground C: Claims 17 and 22–24 under 35 U.S.C. § 103 as unpatentable
`
`over Narita in view of Beiswenger;
`
`Ground D: Claims 17, 23, and 24 under 35 U.S.C. § 103 as unpatentable
`
`over Narita in view of Nagashima;
`
`1
`
`

`

`
`
`Ground E: Claims 1–3, 5, 12, and 15 under 35 U.S.C. § 103 as unpatentable
`
`over Narita in view of Admitted Prior Art;
`
`Ground F: Claims 1–3, 5, 12, and 15 under 35 U.S.C. § 103 as unpatentable
`
`over Narita in view of the NHTSA Report; and
`
`Ground G: Claims 18, 19, 26, and 29–31 under 35 U.S.C. § 102 as
`
`anticipated by Nagashima.
`
`Paper 17, p. 39.
`
`All cites to Narita and Nagashima are to the respective English translations
`
`(Ex. 1004 for Narita and Ex. 1009 for Nagashima) filed by Petitioner with the
`
`Petition.
`
`II. LAW OF ANTICIPATION
`
`“To anticipate a claim, a single prior art reference must expressly or
`
`inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc.,
`
`523 F.3d 1323, 1334 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`
`1990). Additionally, “a finding of anticipation requires that the publication
`
`describe all of the elements of the claims, arranged as in the patented device.”
`
`C.R. Bard v. M3 Sys., 157 F.3d 1340, 1349 (Fed. Cir. 1998) (emphasis added)
`
`(string citation omitted). Thus, the prior art reference “must not only disclose all
`
`elements within the four corners of the document, but must also disclose those
`
`elements arranged as in the claim.” Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d
`
`
`
`2
`
`

`

`
`1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). “[I]t
`
`is not enough that the prior art reference discloses part of the claimed invention,
`
`which an ordinary artisan might supplement to make the whole, or that it includes
`
`multiple, distinct teachings that the artisan might somehow combine to achieve the
`
`claimed invention.” Id. at 1371.
`
`The fact that a certain result or characteristic may occur or be present in the
`
`prior art is not sufficient to establish the inherency of that result or characteristic.
`
`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). “To establish inherency, the
`
`extrinsic evidence ‘must make clear that the missing descriptive matter is
`
`necessarily present in the thing described in the reference, and that it would be so
`
`recognized by persons of ordinary skill. Inherency, however, may not be
`
`established by probabilities or possibilities. The mere fact that a certain thing may
`
`result from a given set of circumstances is not sufficient.’” In re Robertson, 169
`
`F.3d 743, 745 (Fed. Cir. 1999).
`
`
`
`3
`
`

`

`
`III. THE PETITION DOES NOT SHOW THAT THE CITED
`REFERENCES ANTICIPATE THE CHALLENGED CLAIMS
`A. Ground A: Narita Does Not Anticipate The Challenged Claims
`
`1.
`
`The Petition Does Not Show That Narita Discloses “An
`Enable Switch Associated With Said Controller For
`Enabling The System” Or “A Memory Which Stores
`Information Indicative Of Said Preset Speed” (Claim 1)
`Enable Switch: The Board construed “enabling the system” as “a ‘system
`
`on’ state for the cruise control system.” Paper 19, p. 7. Thus, the claimed “enable
`
`switch” is a switch that is “associated with the controller” and puts the cruise
`
`control system in a ‘system on’ state. Petitioner incorrectly alleges that the either
`
`the “main switch” or a vehicle ignition switch is the claimed “enable switch.”
`
`Petition (“Pet.”) at 19.
`
`First, the “main switch” is only discussed in Narita with regard to the
`
`“conventional vehicle speed automatic control device” depicted in Figures 1-3.
`
`Ex. 1004, p. 2. The embodiments of Narita’s invention are depicted in Figures 4-7,
`
`and do not expressly identify a “main switch” or any other switch. Id. at 8. Thus,
`
`Petitioner is improperly alleging anticipation based on a combination of a
`
`“conventional” device in Narita and embodiments of Narita’s invention. See Net
`
`MoneyIn, Inc. v. Verisign, Inc., 545 F.3d at 1369).
`
`Second, the other statement cited by Petitioner as allegedly disclosing the
`
`claimed “enable switch” – “FIG. 5 is a diagram illustrating display changes in the
`
`
`
`4
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`

`

`
`speedometer 35 according to operation of the command to switch after turning on
`
`power…” – is clearly referring to the set or “command switch” that is used to set
`
`constant speed travel. Ex. 1004, p. 5. Narita expressly states, “FIG. 5 is an
`
`explanatory diagram of the passage of time illustrating changes in vehicle speed
`
`according to operation of the command switch.” Ex. 1004, p. 8 (emphasis added).
`
`Accordingly, the set/command switch of Narita is not the claimed “enable switch.”
`
`Finally, Petitioner alleges that “an ignition switch, whereby the vehicle is
`
`first turned on and off, is inherent to any vehicle, and falls within the broadest
`
`reasonable construction of an enable switch…[because] the cruise control system
`
`becomes enabled when the car is turned on and disabled when the car is turned
`
`off.” Pet. at 14. The only support for this allegation is the following statement by
`
`Petitioner’s declarant:
`
`One of ordinary skill in the art would have understood that an ignition
`
`switch is inherent to any vehicle. One of ordinary skill in the art
`
`would further have understood that such an ignition switch would
`
`operate to turn Narita controller 7 on and off. Ex. 1011, ¶28.
`
`While Petitioner’s declarant asserts that an ignition switch is inherent to any
`
`vehicle, neither Petitioner nor its declarant alleges that one of ordinary skill would
`
`understand that turning an ignition switch on and off inherently turns the cruise
`
`
`
`5
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`

`

`
`control system on and off. For example, there is no evidence that turning an
`
`ignition switch turns the cruise control system on. Petitioner’s declarant merely
`
`suggests that an inherent ignition switch would turn the cruise control system on,
`
`which is insufficient to establish that the ignition switch is inherently “associated
`
`with the controller,” or inherently “would operate to turn Narita controller 7 on and
`
`off” or inherently “puts the cruise control system into a system-on state.”
`
`Further, Petitioner’s declarant refers to “Narita controller 7” as turned on
`
`and off by an ignition switch. Ex. 1011, ¶28. However, Petitioner’s declarant is
`
`clearly referring to “controller 7” of the “conventional” device shown in Figure 1
`
`of Narita, because in the previous statement in his declaration, he states, “[o]ne of
`
`ordinary skill in the art would have understood Narita to disclose a ‘main switch’
`
`that turns controller 7 on or off.” Ex. 1011, ¶27. Accordingly, Petitioner’s
`
`inherency allegation is entirely premised on the “conventional” device discussed in
`
`Narita.
`
`For at least these reasons, Narita does not anticipate claim 1.
`
`Memory: Petitioner and its declarant allege that the microcomputer 9
`
`discussed with respect to the “conventional” device in Narita meets the “memory”
`
`limitation of claim 1. Pet. at 19; Ex. 1011, ¶30 (citing Narita’s discussion of the
`
`conventional device, “One of ordinary skill in the art would have understood that
`
`the set speed is stored in memory by microcomputer 9 inside the controller”).
`
`
`
`6
`
`

`

`
`Anticipation is cannot be shown based on a combination of the conventional
`
`device and Narita’s inventive embodiments. See Net MoneyIn, Inc. v. Verisign,
`
`Inc., 545 F.3d at 1369).
`
`Petitioner also alleges (without any explanation) that following statement in
`
`Narita somehow meets the “memory” limitation – “[t]he vehicle speed displayed
`
`on the stored vehicle speed display unit 37 is displayed by transferring (not
`
`illustrated) the vehicle speed recognized by the controller 7 to the controller 31 or
`
`it displays the vehicle speed recognized by the controller 31.” Pet. at 19. It is clear
`
`that this statement does not expressly mention “memory,” nor does Petitioner or its
`
`declarant allege that this statement inherently teaches the “memory” limitation.
`
`Further, this statement in Narita does not discuss the microcomputer 9 of the
`
`conventional device primarily referred to by Petitioner and solely referred to by
`
`Petitioner’s declarant. Accordingly, Petitioner has not shown that Narita expressly
`
`or inherently discloses the claimed “memory.”
`
`For at least these reasons, Narita does not anticipate claim 1.
`
`2.
`
`The Petition Does Not Show That Narita Discloses “A
`Cruise Control Enable Switch Associated With The
`Controller For Enabling And Disabling The Controller” Or
`“A Memory That Stores Information Representative Of
`The Selected Cruising Speed” (Claim 2)
`Petitioner’s allegation that Narita meets these claim limitations simply refers
`
`to the “enable switch” and “memory” elements of claim 1. Pet. at 20.
`
`
`
`7
`
`

`

`
`Accordingly, for at least the reasons explained above with regard to claim 1, Narita
`
`does not anticipate claim 2.
`
`3.
`
`The Petition Does Not Show That Narita Discloses
`“Removing Said Symbol When The Cruise Control System
`Is Deactivated Or A New Cruising Speed Is Selected”
`(Claim 12)
`Petitioner refers to operation of the failsafe 10 in Narita to cancel constant
`
`speed travel as allegedly meeting this limitation. However, the Board construed
`
`“deactivated” as “turned off,” and thus claim 12 requires that the symbol is
`
`removed when the “cruise control system” is turned off. In contrast, in Narita, the
`
`failsafe 10 merely cancels the constant speed travel, but the constant speed system
`
`remains on, because a new constant speed can be set by operating the set switch 2.
`
`Ex. 1004, p. 7 (after operation of the failsafe 10, “[t]hereafter, when entering
`
`constant speed travel at a speed of 55 km/h by operating the set switch 2 again at
`
`the time t22…”). Accordingly, Narita does not show that the failsafe 10 turns off
`
`the cruise control system.
`
`For at least these reasons, Narita does not anticipate claim 12.
`
`4.
`
`The Petition Does Not Show That Narita Discloses
`“Discontinuing Display Of The Symbol Indicative Of The
`Preset [Speed] When The Cruise Control System Is
`Deactivated Or A New Preset Speed Is Selected” (Claim 13)
`Similar to its allegations with respect to claim 12, Petitioner refers to
`
`operation of the failsafe 10 in Narita as allegedly meeting this claim limitation. As
`
`
`
`8
`
`

`

`
`explained above with respect to claim 12, the failsafe does not “deactivate” (turn
`
`off) the “cruise control system.” The failsafe 10 cancels the constant speed travel,
`
`but the system remains on, because the driver can reset the constant speed by
`
`operating the set switch. Ex. 1004, p. 7. Accordingly, Narita does not show that
`
`the failsafe 10 turns off the cruise control system.
`
`For at least these reasons, Narita does not anticipate claim 13.
`
`5.
`
`The Petition Does Not Show That Narita Discloses “Before
`Setting The Preset Speed, Activating The Cruise Control
`System” (Claim 15)
`Petitioner relies on the same portions of Narita (the “main switch” of the
`
`conventional device and the command switch for setting the constant speed) as
`
`allegedly anticipating this claim limitation. As explained above with respect to
`
`claim 1, the “main switch” is discussed only in the context of the conventional
`
`device and cannot be combined with other embodiments of Narita to anticipate this
`
`claim limitation. Further, the command switch does not “activate” (turn on) the
`
`“cruise control system;” the command switch is used to set the constant speed after
`
`the constant speed system is on.
`
`For at least these reasons, Narita does not anticipate claim 15.
`
`
`
`9
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`

`

`
`
`6.
`
`The Petition Does Not Show That Narita Discloses “Upon
`Braking The Vehicle, Discontinuing Maintaining The
`Vehicle At Substantially The Preset Speed While Keeping
`Data Corresponding To The Preset Speed In A Memory
`Device” (Claim 18)
`Neither the Petition nor Petitioner’s declarant addresses the limitation of
`
`“keeping data corresponding to the preset speed in a memory device” limitation of
`
`claim 18. Pet. at 27.
`
`For at least these reasons, Narita does not anticipate claim 18.
`
`7.
`
`The Petition Does Not Show That Narita Discloses
`“Wherein The Symbol Indicative Of The Preset Speed
`Displayed At The Time After Braking And During Which
`Time The Vehicle Is Not Being Maintained At Substantially
`The Preset Speed, Is Distinguishable From The Symbol
`Indicative Of The Preset Speed While The Vehicle Is Being
`Maintained At Substantially The Preset Speed” (Claim 19)
`Claim 19 requires that the symbol indicative of the preset speed can be
`
`displayed in such a way to distinguish whether the vehicle is being maintained at
`
`substantially the preset speed. As shown in Figure 6 of Narita (cited by Petitioner,
`
`Pet. at 27), the stored vehicle speed display unit 37 shows the value “70” before,
`
`during, and after the brake switch is applied. Ex. 1004, p. 14. Thus, the stored
`
`vehicle speed display unit 37 does not provide any indication of whether the
`
`vehicle is being maintained at substantially the preset speed after braking. Figure 6
`
`of Narita also shows a “set indicator in meter” having values “on” and “off.” Id.
`
`However, Narita does not provide any discussion of what the “set indicator in
`
`
`
`10
`
`

`

`
`meter” is or how it functions. In fact, Figure 4, which shows the architecture of
`
`Narita’s device, does not identify any structure as a “set indicator in meter.”
`
`Finally, the set indicator in meter is not a “symbol indicative of the preset speed.”
`
`The set indicator in meter is separate from the stored vehicle speed display 37 and
`
`does not provide any information indicating the preset speed.
`
`For at least these reasons, Narita does not anticipate claim 19.
`
`8.
`
`The Petition Does Not Show That Narita Discloses
`“Discontinuing Display Of The Symbol Indicative Of the
`Preset Speed After The Cruise Control System Is
`Deactivated Or A New Preset Speed Is Selected” Or “After
`The Cruise Control System Is Deactivated, Displaying A
`Symbol Indicative Of An Unset State Of The Preset Speed”
`(Claim 21)
`Similar to its allegations with respect to claims 12 and 13, Petitioner refers
`
`to operation of the failsafe 10 in Narita as allegedly meeting this claim limitation.
`
`As explained above with respect to claims 12 and 13, the failsafe does not
`
`“deactivate” (turn off) the “cruise control system.” The failsafe 10 cancels the
`
`constant speed travel, but the system remains on, because the driver can reset the
`
`constant speed by operating the set switch. Ex. 1004, p. 7. Accordingly, Narita
`
`does not show that the failsafe 10 turns off the cruise control system.
`
`For at least these reasons, Narita does not anticipate claim 21.
`
`
`
`11
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`

`

`
`
`9.
`
`The Petition Does Not Show That Narita Discloses “A
`Memory Device Operable To Store Information
`Representative Of The Preset Speed” (Claim 26)
`Petitioner’s allegation that Narita meets this limitation simply refers to the
`
`“memory” element of claim 1. Pet. at 30. Accordingly, for at least the reasons
`
`explained above with regard to claim 1, Narita does not anticipate claim 26.
`
`B. Ground G: Nagashima Does Not Anticipate The Challenged
`Claims
`1.
`The Petition Does Not Show That Nagashima Discloses
`“Upon Braking The Vehicle, Discontinuing Maintaining
`The Vehicle Speed At Substantially The Preset Speed While
`Keeping Data Corresponding To The Preset Speed In A
`Memory Device” Or “At A Time After Braking An During
`Which Time The Vehicle Is Not Being Maintained At
`Substantially The Preset Speed, Displaying To The
`Operator A Symbol Indicative Of The Preset Speed” (Claim
`18)
`Upon Braking The Vehicle, Discontinuing Maintaining The Vehicle Speed
`
`At Substantially The Preset Speed While Keeping Data Corresponding To The
`
`Preset Speed In A Memory Device: Neither the Petition nor Petitioner’s declarant
`
`addresses the limitation of “upon braking the vehicle…keeping data corresponding
`
`to the preset speed in a memory device” limitation of claim 18. Pet. at 43.
`
`For at least these reasons, Nagashima does not anticipate claim 18.
`
`At A Time After Braking An During Which Time The Vehicle Is Not Being
`
`Maintained At Substantially The Preset Speed, Displaying To The Operator A
`
`Symbol Indicative Of The Preset Speed: Claim 18 requires that after braking, a
`
`
`
`12
`
`

`

`
`symbol is displayed to the operator indicative of the preset speed. Nagashima
`
`discusses a plurality of indicators 31 “arranged in dots respectively at 5 km speed
`
`per hour increments along the scale (111a) over a range from 40km speed per hour
`
`to 120 km speed per hour.” Ex. 1004, ¶0013. Nagashima expressly states, “in the
`
`case brake SW 9 is in ON mode, more specifically brake operation is
`
`performed…the cruise control is temporally released, and indicators (31) blink….”
`
`Id. at ¶0024. If all of the indicators 31 blink when the brake operation is
`
`performed, there is no symbol that could possibly be “indicative of the preset
`
`speed.”
`
`For at least these reasons, Nagashima does not anticipate claim 18.
`
`2.
`
`The Petition Does Not Show That Nagashima Discloses
`“Second Visual Display Apparatus Operable To Display
`The Visual Information Indicative Of An Operation Status
`Of The Speed Controller, Wherein The Visual Information
`Displayable By The Second Visual Display Apparatus
`Includes Visual Information Indicative Of The Preset
`Speed” (Claim 26)
`Petitioner alleges that the indicators 31 are the claimed “second visual
`
`display apparatus.” However, the indicators 31 are disposed at 5km/h increments
`
`along the scale 111a, and thus does not provide “visual information indicative of
`
`the preset speed.” Each of the indicators 31 presumably indicates a range of
`
`possible speed values. Thus, for example, if the indicators 31 at 45 km/h was lit,
`
`the operator would have no way of knowing whether the preset speed was actually
`
`
`
`13
`
`

`

`
`45 km/h, because Nagashima does not provide any indication (visual or otherwise)
`
`of the actual preset speed. Further, Nagashima does not explain how the system
`
`chooses to light up a given indicator if the preset speed is less than or greater than a
`
`speed at which an indicator is disposed.
`
`For at least these reasons, Nagashima does not anticipate claim 26.
`
`IV. THE PETITION DOES NOT SHOW THAT THE CITED
`REFERENCES RENDER OBVIOUS THE CHALLENGED CLAIMS
`Grounds B-D: Petitioner alleges that claims 17, 22-24 are obvious based
`
`primarily on Narita. However, claim 17 depends from claims 13, 15 and 16 and
`
`claims 22-24 depend from claim 21. None of the secondary references Petitioner
`
`alleges are combinable with Narita are alleged to cure the above-described
`
`deficiencies of Narita with respect to claims 13, 15 or 21. Accordingly, the Board
`
`should deny Grounds B-D.
`
`Ground E: Petitioner alleges that if Narita does not show the claimed
`
`“enable switch,” then this limitation is met by Admitted Prior Art. Pet. at 36-37
`
`(citing ‘463 Patent, 1:17-21). First, the portion of the ‘463 Patent is not admitted
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`prior art, which requires an express designation as “prior art.” In re Nomiya, 509
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`F.2d 566, 571 n. 5 (CCPA 1975) (holding that figures “labeled as ‘prior art’”
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`constituted an admission of prior art). The only support for Petitioner’s allegation
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`that the cited portion of the ‘463 Patent is admitted prior art is MPEP 2129, which
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`the Board held “is not binding authority in this proceeding.” Paper 17, p. 30.
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`Thus, Petitioner has not shown any evidence or legal support for its contention that
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`the cited portion of the ‘463 Patent is admitted prior art.
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`Second, claims 1 and 2 of the ‘463 Patent require that the “enable switch”
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`(and “cruise control enable switch”) is “associate with the [speed] controller.”
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`However, the cited portion of the ‘463 Patent does not expressly mention a speed
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`controller and Petitioner makes no allegation that a speed controller is inherent in
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`the cited portion. In particular, the cited portion states, “cruise control systems
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`require the operator to (1) turn on the cruise control system (by depressing or
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`rocking a button the steering wheel or dashboard).” Ex. 1001, 1:17-21. This
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`statement does not expressly mention the structural element of a speed controller,
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`and Petitioner does not allege that the “button” is inherently “associated with the
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`[speed] controller” as required by claims 1 and 2.
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`Third, claims 1 and 2 require “a memory,” which is not shown by Narita and
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`is not alleged to be shown by the cited portion of the ‘463 Patent.
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`Finally, the statement in the ‘463 Patent also does not cure the deficiencies
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`of Narita discussed above with respect to claims 12 and 15, because the statement
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`does not expressly or inherently discuss “deactivating” the cruise control system.
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`The cited portion is solely directed to “turn[ing] on the cruise control system.”
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`Accordingly, the Board should deny Ground E.
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`15
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`Ground F: Petitioner alleges that if Narita does not show the claimed
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`“enable switch,” then this limitation is met by the NHTSA Report. Pet. at 37-39.
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`First, claims 1 and 2 of the ‘463 Patent require that the “enable switch” (and
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`“cruise control enable switch”) is “associated with the [speed] controller.”
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`However, the Petition does not assert that any of the cited portions of the NHTSA
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`Report expressly or inherently disclose a [cruise control] enable switch “associated
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`with the [speed] controller.” Further, Petitioner does not make clear whether the
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`“cruise control master switch,” “the neutral safety switch,” or “the operating
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`switch” (or some combination of two or more of such switches) allegedly meets
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`the “enable switch” limitation of claims 1 and 2.
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`Second, claims 1 and 2 require “a memory,” which is not shown by Narita
`
`and is not alleged to be shown by any of the cited portions of the NHTSA Report.
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`Finally, the NHTSA Report also does not cure the deficiencies of Narita
`
`discussed above with respect to claims 12 and 15, because the cited portion does
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`not expressly or inherently discuss “activating” the cruise control system, because
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`Figure 4-3 of the NHTSA report only shows a system with open switches (no
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`power).
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`Accordingly, the Board should deny Ground F.
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`V. CONCLUSION
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`In light of the remarks herein, Patent Owner respectfully requests that the
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`Board deny all alleged grounds of unpatentability at issue in this proceeding. To
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`the extent not specifically addressed, all dependent claims are patentable at least in
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`view of the reasons explained above regarding claims from which they depend. If
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`the Board has any questions, comments, or suggestions, the undersigned attorney
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`earnestly requests a telephone conference.
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`No fees are required for filing this amendment; however, the Commissioner
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`is authorized to charge any additional fees which may be required, or credit any
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`overpayment, to Kasha Law LLC, Deposit Account No. 50-4075.
`
`Date: October 9, 2014
`
`
`Customer No. 67050
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`Respectfully submitted,
`
`/John R. Kasha/___________________
`John R. Kasha, Lead Counsel
`Registration No. 53,100
`Attorney for Patent Owner
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
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`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 1.550(f), a copy of Patent Owner’s Response
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`to Decision Initiate Trial for Inter Partes Review filed on October 9, 2014 was
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`duly served via electronic mail upon cct-ipr.lwteam@lw.com – counsel of record
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`for Petitioner Ford Motor Company, Jaguar Land Rover North America, LLC,
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`Volvo Cars of North America, LLC, Toyota Motor North America, Inc., American
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`Honda Motor Co., Inc., Nissan North America, Inc., and Subaru of America, Inc.
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`(collectively “Petitioner”).
`
`
`
`
`
`Respectfully submitted,
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Patent Owner
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`
`
`
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