UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`AMERICAN HONDA MOTOR CO., INC., TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA INC., FORD MOTOR
`COMPANY, JAGUAR LAND ROVER NORTH AMERICA LLC,
`SUBARU OF AMERICA INC., and VOLVO CARS OF NORTH
`AMERICA LLC
`Petitioners
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00289
`Patent 6,324,463
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,324,463
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, submits the
`
`following preliminary response to the petition.
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`AMERICAN HONDA MOTOR CO., INC., TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA INC., FORD MOTOR
`COMPANY, JAGUAR LAND ROVER NORTH AMERICA LLC,
`SUBARU OF AMERICA INC., and VOLVO CARS OF NORTH
`AMERICA LLC
`Petitioners
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00289
`Patent 6,324,463
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,324,463
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, submits the
`
`following preliminary response to the petition.
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................. 1
`I.
`II. CLAIM CONSTRUCTION .................................................................. 2
`A. “enabling the system “ (claim 1) / “enabling…the controller”
`(claim 2) ...................................................................................................... 2
`B. “when the controller is enabled” (claim 2) / “when the controller
`is initially enabled” (claim 4) .................................................................... 3
`C. “thereby engaging the system” (claim 1) .......................................... 4
`D. “engaging the cruise control system” (claim 21) ............................. 5
`E. “indicating to the operator the unset status of the present speed”
`(claim 15) .................................................................................................... 6
`F. “displaying a symbol indicative of an unset state of the preset
`speed” (claim 21) ....................................................................................... 7
`G. “activating the cruise control system at a desired cruising speed”
`(claim 12) .................................................................................................... 8
`H. “activating the cruise control system” (claim 15) ............................ 9
`I. “when[/after] the cruise control system is deactivated” (claims 12,
`13, and 21) ................................................................................................ 10
`III. ARGUMENT .................................................................................... 10
`A. No Statement In The ‘463 Patent Qualifies As Admitted Prior Art
`
`10
`B. The 300zx Manual Is Not Prior Art ................................................ 10
`C. Unexplained Redundancy ................................................................ 11
`IV. CONCLUSION. ................................................................................ 12
`
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 1
`
`
`I.
`
`INTRODUCTION
`
`This petition, along with the other four petitions simultaneously filed
`
`by Petitioners, represent a clear attempt to abuse the inter partes review
`
`process – a focused and time-sensitive evaluation of the validity of patent
`
`claims. The Board should reject all five petitions filed by Petitioners and
`
`refuse to endorse their inappropriate, game-the-system tactics.
`
`Between Friday, December 20, 2013 and Monday, December 23,
`
`2013, Petitioners, as a group, filed five separate petitions for inter partes
`
`review of certain claims of U.S. Patent No. 6,324,463 (“‘463 Patent”).
`
`IPR2014-00279; IPR2014-00280; IPR2014-00281; IPR2014-289; and
`
`IPR2014-00291. The five petitions make no mention of each other and are
`
`replete with intra-petition and inter-petition redundancies amongst the more
`
`than 180 separate alleged grounds of invalidity. For example, with regard to
`
`claim 1 alone, Petitioners have alleged five separate grounds of anticipation
`
`and four separate grounds of obviousness across five different petitions.
`
`
`
`Further, Petitioners attempt to mislead the USPTO, crafting the
`
`petitions to make them appear like filings from separate parties. For
`
`example, not one of the petitions identifies any of the four other petitions
`
`under the required notice of related matters under 37 C.F.R. § 42.8(b)(2),
`
`and, in each petition, one of the Petitioners is designated as “the Petitioner”
`
`
`
`1
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 2
`
`while labeling the other four as “co-Petitioners.” Similarly, counsel for each
`
`petition is the same group of seven attorneys, but each petition designates a
`
`different attorney as lead counsel.
`
`
`
`Accordingly, Petitioners are insisting that, absent joinder of the five
`
`proceedings, fifteen different Administrative Law Judges consider the same
`
`claim construction arguments and various overlapping and redundant alleged
`
`grounds of invalidity. To the extent the Board does not deny the petition
`
`outright for a clear abuse of process, the most efficient path forward is for
`
`the Board to join the five petitions and deny all redundant alleged grounds of
`
`unpatentability.
`
`II. CLAIM CONSTRUCTION
`
`A. “enabling the system “ (claim 1) / “enabling…the
`controller” (claim 2)
`
`“Enabling the system” and “enabling the controller” should be
`
`construed as “putting the speed controller of the cruise control system into
`
`an operative condition.” Claim 1 recites, “a speed controller that
`
`automatically maintains the vehicle speed at a preset speed” and “an enable
`
`switch associated with said controller for enabling the system.” Claim 2
`
`recites, “a cruise control enable switch associated with the controller for
`
`enabling the disabling the controller.” Thus, pressing or otherwise actuating
`
`
`
`2
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 3
`
`the enable switch puts the speed controller in an operative condition, in that
`
`the speed controller will automatically maintain the vehicle at a preset speed.
`
`Petitioners propose that “enabling” means “turning on.” This
`
`proposed construction is too vague to provide any benefit when evaluating
`
`the validity of the claims. For example, one could say that when turning on
`
`a vehicle’s ignition switch, all systems of the vehicle are “turned on.” In
`
`claim 1, the “enable switch,” which is “associated with said [speed]
`
`controller,” is more specifically directed to “enabling the [cruise control]
`
`system” by putting the speed controller in an operative condition. Similarly,
`
`in claim 2, the cruise control enable switch is specifically directed to the
`
`state of the controller -- “enabling…the controller.”
`
`Therefore, consistent with the intrinsic evidence, “enabling the
`
`system” and “enabling…the controller” should be construed as “putting the
`
`speed controller of the cruise control system in an operative condition.”
`
`B. “when the controller is enabled” (claim 2) / “when the
`controller is initially enabled” (claim 4)
`
`For similar reasons as stated above with regard to the “enabling”
`
`terms, “when the controller is [initially] enabled” should be construed as
`
`“when the controller is [initially] put in an operative condition.”
`
`
`
`3
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 4
`
`
`C. “thereby engaging the system” (claim 1)
`In the context of claim 1, “thereby engaging the system” should be
`
`construed as “as a result, activating the speed controller of the cruise control
`
`system to automatically maintain the vehicle speed at the preset speed.”
`
`Claim 1 requires a “set speed input” that is used to set a preset speed
`
`for the vehicle. The set speed input is associated with the controller so that,
`
`when the preset speed is set with the set speed input, the speed controller
`
`automatically maintains the vehicle speed at the preset speed. The
`
`specification describes an embodiment of the invention in which digital
`
`information regarding the speed at which the vehicle is traveling is written to
`
`a digital memory “when the set button is pressed.” ‘463 Patent, 3:54-57.
`
`Thus, using the set speed input results in “activating the speed controller of
`
`the cruise control system to automatically maintain the vehicle speed at the
`
`preset speed.”
`
`Petitioners propose that “engaging the system” in claim 1 means
`
`“operating the cruise control system to automatically control the vehicle at
`
`the preset speed.” This proposed construction is incorrect for at least two
`
`reasons. First, “operating the cruise control system” is an overly broad
`
`generalization of the claimed invention. The claimed “cruise control
`
`system” has many components, one of which (the “speed controller”)
`
`
`
`4
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 5
`
`automatically maintains the vehicle at a preset speed. To require that the
`
`entire cruise control system is operated to automatically control the vehicle
`
`at the preset speed is incorrect legally and technically (for example, the
`
`claimed “feedback system,” which is a component of the claimed cruise
`
`control system of claim 1, does not control the vehicle speed). Second, the
`
`claim requires “engaging the system” as a result of using the set speed input
`
`to set the preset speed. However, the set speed input does not itself maintain
`
`the vehicle at a preset speed; the claimed speed controller performs that
`
`function. Thus, use of the set speed input “activates” the speed controller to
`
`automatically maintain the vehicle speed at the preset speed.
`
`Therefore, consistent with the intrinsic evidence, “thereby engaging
`
`the system” should be construed as “as a result, activating the speed
`
`controller of the cruise control system to automatically maintain the vehicle
`
`speed at the preset speed.”
`
`D. “engaging the cruise control system” (claim 21)
`In the context of claim 21, “engaging the cruise control system”
`
`means “putting the cruise control system into an operative state.”
`
`Claim 21 is a method claim including the steps of “engaging the
`
`cruise control system” followed by “setting the preset speed.” While the
`
`steps of a claimed method should not be limited to a particular order (MPEP
`
`
`
`5
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 6
`
`2111.01), it is appropriate to require that the step of “engaging the cruise
`
`control system” precedes the step of “setting the preset speed,” because the
`
`invention requires that the cruise control system is engaged prior to setting
`
`the preset speed (which can only be set, and is only utilized, during use of
`
`the cruise control system). Thus, “engaging the cruise control system”
`
`requires “putting the cruise control system into an operative state.”
`
`Petitioners propose that “engaging the cruise control system” means
`
`“operating the cruise control system to automatically control the vehicle at
`
`the preset speed.” However, this construction cannot be correct given the
`
`subsequent step of “setting the preset speed” – how could the vehicle speed
`
`be controlled at the preset speed if the preset speed has not yet been set?
`
`Therefore, consistent with the intrinsic evidence, “engaging the cruise
`
`control system” should be construed as “putting the cruise control system
`
`into an operative state.”
`
`E. “indicating to the operator the unset status of the present
`speed” (claim 15)
`
`“Indicating to the operator the unset status of the preset speed” should
`
`be construed as “displaying a visual indication that preset speed has not been
`
`set.”
`
`
`
`6
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 7
`
`
`Claim 15 recites the step of “after activating the cruise control system,
`
`but before setting the preset speed, indicating to the operator the unset status
`
`of the preset speed.” The specification states, “[w]hen the cruise control
`
`system is first activated, the preset display 16 will blink the number zero
`
`indicating an ‘unset’ state of cruise control.” ‘463 Patent, 4:4-6. In another
`
`embodiment, “the LED 50, corresponding to the 0 mph mark, remains lit to
`
`indicate the cruise control status,” the system is on and the cruise speed is
`
`unset. Id. at 4:44-46. Thus, according to the invention, “indicating to the
`
`operator the unset status of the preset speed’ requires “displaying a visual
`
`indication that the preset speed has not been set.”
`
`Petitioners’ proposed construction, “a state or status in which there is
`
`no preset speed for the cruise control system” is wrong for at least the reason
`
`that it adds “for the cruise control system.”
`
`Therefore, consistent with the intrinsic evidence, “indicating to the
`
`operator the unset status of the preset speed” should be construed as
`
`“displaying a visual indication that preset speed has not been set.”
`
`F. “displaying a symbol indicative of an unset state of the
`preset speed” (claim 21)
`
`For similar reasons as stated above with regard to the “indicating”
`
`term, “displaying a symbol indicative of an unset state of the preset speed”
`
`
`
`7
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 8
`
`should be construed as “displaying a symbol indicating that the preset speed
`
`has not been set.”
`
`G. “activating the cruise control system at a desired
`cruising speed” (claim 12)
`
`In the context of claim 12, “activating the cruise control system at a
`
`desired cruising speed” should be construed as “causing the cruise control
`
`system to maintain the speed at which the vehicle is traveling at the desired
`
`cruising speed.”
`
`Petitioners’ proposed construction, “activating the cruise control”
`
`means “turning on the cruise control,” should be rejected for at least two
`
`reasons. First, for some unknown reason, the claim term selected by
`
`Petitioners, “activating the cruise control,” does not include the term
`
`“system” after “cruise control.” Second, the invention makes clear that
`
`simply turning the cruise control system “on” does not mean that the vehicle
`
`will automatically travel at the desired cruising speed. The cruise control
`
`system must be put in an operative condition and set at the desired cruising
`
`speed.
`
`Therefore, consistent with the intrinsic evidence, “activating the cruise
`
`control system at a desired cruising speed” should be construed as “causing
`
`
`
`8
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 9
`
`the cruise control system to maintain the speed at which the vehicle is
`
`traveling at the desired cruising speed.”
`
`H. “activating the cruise control system” (claim 15)
`In the context of claim 15, “activating the cruise control system at a
`
`desired cruising speed” should be construed as “putting the cruise control
`
`system in an operative condition.”
`
`Claim 15 is directed to a specific state of the cruise control system --
`
`“after activating the cruise control system, but before setting the preset
`
`speed.” Thus, the cruise control system has been put in an operative
`
`condition, but the preset speed is not set.
`
`Petitioners’ proposed construction, “activating the cruise control”
`
`means “turning on the cruise control,” should be rejected for at least the
`
`reason that the term selected by Petitioners, “activating the cruise control,”
`
`does not include the term “system” after “cruise control.”
`
`Therefore, consistent with the intrinsic evidence, “activating the cruise
`
`control system” should be construed as “putting the cruise control system in
`
`an operative condition.”
`
`
`
`9
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 10
`
`
`I. “when[/after] the cruise control system is deactivated”
`(claims 12, 13, and 21)
`
`For similar reasons as stated above with regard to the “activating the
`
`cruise control” term, “when[/after] the cruise control system is deactivated”
`
`should be construed as “when/[after] the cruise control system has been put
`
`in an inoperative condition.”
`
`III. ARGUMENT
`A. No Statement In The ‘463 Patent Qualifies As Admitted
`Prior Art
`
`Petitioners allege that certain statements in the ‘463 Patent are
`
`admitted prior art. However, Petitioners provide no basis for their
`
`allegations, and it is undisputed that the phrase “prior art” is not used
`
`anywhere in the specification.
`
`Accordingly, there is no statement in the ‘463 Patent which qualifies
`
`as an admission of prior art.
`
`B. The 300zx Manual Is Not Prior Art
`Petitioners allege that the 300zx Manual “was published in the United
`
`States at least in 1984…[and as] a result, the 300zx Manual is available as
`
`prior art against all claims of the ’463 Patent under 35 U.S.C. § 102(b).”
`
`Petition at 10. However, Petitioners have not provided any basis for this
`
`allegation, either within the reference or by way of a declaration. To the
`
`
`
`10
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 11
`
`contrary of Petitioners’ assertion, the third page (labeled AHM00591)
`
`includes a copyright notation: “1983 Nissan Motor Co., Ltd. Tokyo, Japan.”
`
`Clearly, this notation, expressly referring to “Tokyo, Japan,” cannot be the
`
`basis for Petitioners’ assertion that the 300zx Manual was published in the
`
`United States. The only other date in the document is a printing date, “May
`
`1984,” on the last page (labeled AHM00736). However, the date on which
`
`the document was printed does not provide any information regarding the
`
`date on which the document was made publicly available for the purposes of
`
`35 U.S.C. § 102.
`
`Accordingly, the Board should deny all alleged grounds of
`
`unpatentability based in whole or in part on the 300zx Manual, because
`
`Petitioners have failed to prove that it is prior art under § 102(b).
`
`C. Unexplained Redundancy
`Petitioners allege that claims 1-2, 14, 27 and 34-36 are obvious over
`
`Yoshimitsu and the 300zx Manual, or Yagihasi and alleged admitted prior
`
`art, or Yagihasi and Yoshimitsu. However, Petitioners do not offer any
`
`explanation as to why these references or alleged grounds are not redundant
`
`of each other, at least with respect to these claims. Further, Petitioners
`
`allege that claims 12, 13, 26 and 27 are anticipated and/or obvious in view of
`
`
`
`11
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 12
`
`separate references and combinations of reference. However, again
`
`Petitioners do not offer any explanation as to why the obviousness
`
`allegations are not redundant of the allegations of anticipation. Accordingly,
`
`the Board should deny all redundant alleged grounds of unpatentability.
`
`IV. CONCLUSION.
`
`For at least the foregoing reasons, Petitioners have failed to
`
`demonstrate a reasonable likelihood of prevailing on the rejections of the
`
`claims proposed in the Petition. Accordingly, denial of the Petitioners’
`
`request for inter partes review is respectfully requested.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any
`
`fees associated with this proceeding to Deposit Account 50-4075 (Customer
`
`No. 67050).
`
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
`Date: April 8, 2014
`
`
`
`
`
`
`
`
`
`
`
`JRK
`
`Customer No. 67050
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /John R. Kasha/
`John R. Kasha
`Registration No. 53,100
`
`12
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 1
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R § 1.550(f), a copy of Patent Owner’s
`
`Preliminary Response to Petition for Inter Partes Review of U.S. Patent No.
`
`6,324,463, filed by Cruise Control Technologies LLC on April 8, 2014, was
`
`duly served via electronic mail upon jcaracappa@steptoe.com (John M.
`
`Caracappa) and HondaIPR@steptoe.com – counsel of record for Petitioners
`
`American Honda Motor Co., Inc., Toyota Motor North America, Inc.,
`
`Nissan North America Inc., Ford Motor Company, Jaguar Land Rover North
`
`America LLC, Subaru of America Inc., and Volvo Cars of North America
`
`LLC (collectively “Petitioners”).
`
`Respectfully submitted,
`
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cruise Control
`Technologies LLC
`
`
`
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`
`
`
`
`
`
`
`
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