`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`TOYOTA MOTOR NORTH AMERICA, INC., FORD MOTOR COMPANY,
`JAGUAR LAND ROVER NORTH AMERICA LLC, SUBARU OF AMERICA
`INC., VOLVO CARS OF NORTH AMERICA LLC, AND NISSAN NORTH
`AMERICA INC.1,
`Petitioners
`
`
`
`
`
` v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner
`
`_________________________
`
`CASE IPR: 2014-00291
`Patent 6,324,463
`_________________________
`
`PETITIONERS REPLY
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Nissan North America Inc. (“Nissan”) and Patent Owner have filed a Joint
`Motion to Terminate this proceeding with respect to Nissan (Paper 26), which is
`currently awaiting a decision.
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`PROMETHEUS ANTICIPATES CLAIMS 1-3, 5, 12-14, 18-19, 25-
`27, 29-31 AND 34-36 OF THE ‘463 PATENT. ............................................. 1
`
`A.
`
`B.
`
`Prometheus is prior art to claims 1-3, 5, 12-14, 18, 19, 25-27,
`29-31, and 34-36 of the ’463 Patent under 35 U.S.C. § 102(b). ........... 1
`
`Prometheus anticipates claims 1-3, 5, 12-14, 18, 19, 25-27, 29-
`31, and 34-36 of the ’463 Patent under 35 U.S.C. § 102. ..................... 3
`
`III. PROMETHEUS AND NARITA RENDER OBVIOUS CLAIMS 3, 5,
`12, 15, 16, 21, AND 28 OF THE ‘463 PATENT UNDER 35 U.S.C. §
`103. ................................................................................................................ 13
`
`IV. PROMETHEUS AND CELSIOR RENDER OBVIOUS CLAIM 4 OF
`THE ‘463 PATENT UNDER 35 U.S.C. § 103. ............................................ 13
`
`V.
`
`CONCLUSION .............................................................................................. 14
`
`1
`
`
`
`
`
`
`I.
`
`Introduction
`
`Petitioner respectfully submits that the Board is correct in its initial finding
`
`that claims 1-5, 12-16, 18, 19, 21, 25-31, and 34-36 are unpatentable, and requests
`
`a final written decision canceling claims 1-5, 12-16, 18, 19, 21, 25-31, and 34-36.
`
`II.
`
`
`
`PROMETHEUS ANTICIPATES CLAIMS 1-3, 5, 12-14, 18-19, 25-27,
`29-31 AND 34-36 OF THE ‘463 PATENT.
`
`A.
`
`Prometheus is prior art to claims 1-3, 5, 12-14, 18, 19, 25-27, 29-
`31, and 34-36 of the ’463 Patent under 35 U.S.C. § 102(b).
`
`As a preliminary matter, Patent Owner complains that certain uncited
`
`sections of Ex. 1003 bear different dates (all in 1991) and seeks dismissal of the
`
`entire Petition for this reason. While all of the sections of Ex. 1003 are dated many
`
`years prior to the critical date of the subject patent, the Board need not address the
`
`differences in these dates. As the Patent Owner readily admits, the Petition relies
`
`on only one section of Ex. 1003, which is dated April 19, 1991 on its cover page
`
`and which includes a Copyright notice date of April 19, 1991 on every page
`
`thereof. Ex. 1003 at pp. 104-111.
`
`At least because the Copyright notice date is included on the relevant section
`
`of Prometheus, the record prima facie establishes a publication date in 1991 for the
`
`reference. See, e.g., FLIR Systems, Inc., v. Leak Surveys, Inc., IPR2014-00411,
`
`Paper 9 (September 5, 2014) at 18-19 (“On the record before us, we are persuaded
`
`that the Copyright notice prima facie establishes a prior art date of 2002”); See
`
`1
`
`
`
`
`
`
`also, International Business Machines Corporation v. Intellectual Ventures II LLC,
`
`IPR2014-00681, Paper 11 (October 30, 2014) at 13-14 (“NetRanger includes a
`
`copyright date printed on its face… In fact, the disclosed copyright date of 1997 is
`
`several years before the priority date of the ‘084 patent… On this record, we are
`
`persuaded that Petitioner has made a threshold showing that NetRanger is a
`
`‘printed publication’ under 35 U.S.C. §102”); See also, Ex parte Wang, Appeal
`
`No. 2012-009077 (Pat. Trial & App. Bd. 2014), Decision on Appeal at p. 3 (“…
`
`Appellants’ submission of the Hoopman reference with a 2006 date, along with the
`
`copyright date listed on the Hoopman reference, provide prima facie evidence of
`
`its public availability”); See also, Ex parte Martinez, Appeal No. 2007-3276 (Bd.
`
`Pat. App. & Interf. 2008), Decision on Appeal at p. 3, and Ex Parte Petculescu,
`
`Appeal No. 2008-002859 (Bd. Pat. App. & Interf. 2009), Decision on Appeal at p.
`
`11.
`
`Furthermore, Patent Owner has proffered no evidence contradicting the
`
`prima facie publication date. That is, rather than provide any evidence that the
`
`Copyright notice date is not a publication date, Patent Owner instead merely
`
`contends that Petitioner has not met its burden in establishing this date as the
`
`publication date. As set forth above, by virtue of the Copyright notice date being
`
`published on the referenced document, the Petitioner’s burden has been met.
`
`Moreover, since this “threshold showing” is not challenged by Patent Owner, the
`
`
`
`2
`
`
`
`
`
`reference must be considered as a prior art publication under 35 U.S.C. §102. See,
`
`e.g., Ex Parte Petculescu at p. 11 (“We agree with the Examiner that Appellants
`
`have provided no evidence calling the revision date into question. Appellants
`
`merely speculate that this electronic document may have been altered without
`
`updating the revision date, they do not provide any evidence that Microsoft was in
`
`fact revised after the revision date (printed on Microsoft’s front page).
`
`Accordingly, we conclude that the revision date of July 19, 2001, is the date of
`
`publication of Microsoft”); See also, Ex Parte Wang at p. 3 (“Appellants have not
`
`come forward with any evidence to suggest the authors of the Hoopman reference
`
`did not comply with this general practice. Accordingly, the Examiner has met the
`
`burden of establishing the Hoopman reference is prime facie available as prior art
`
`with a date of, broadly, 2006”); See also, Ex Parte Albert, Appeal No. 561-99 (Bd.
`
`Pat. App. & Interf. 1984), Decision on Appeal at p. 2 (“The burden is clearly upon
`
`appellants to disprove the prima facie publication date established by the examiner,
`
`and the unsworn, third-hand information presented in Paper No. 12 is clearly
`
`inadequate to meet that burden”).
`
`B.
`
`Prometheus anticipates claims 1-3, 5, 12-14, 18, 19, 25-27, 29-31,
`and 34-36 of the ’463 Patent under 35 U.S.C. § 102.
`
`1.
`The Petition established that Prometheus discloses a “speed
`controller,” “memory,” and “feedback system” as recited by
`claim 1.
`
`Speed Controller: Patent Owner argues that the Petition (Paper 6) does not
`
`
`
`3
`
`
`
`
`
`establish that Prometheus discloses “the structural requirement of ‘a speed
`
`controller,’” as recited in independent claim 1. Paper 21 at p. 5. However, the
`
`Petition cites to Prometheus’s disclosure of a “system [that] starts… the regulation
`
`with the vehicle speed as the consign speed.” Paper 6 at p. 18 (quoting Ex. 1003
`
`at p. 105). That is, the Petition unquestionably establishes that Prometheus
`
`discloses a speed controller that maintains the vehicle speed at a preset speed (i.e.,
`
`“consign speed”).
`
`In further detail, Prometheus discloses an autonomous intelligent cruise
`
`control (“AICC”) system that regulates the speed of a motor vehicle at a speed
`
`selected by the driver (“consign speed”) and continuously displays to the driver
`
`the state of the system and the consign speed. Ex. 1003 at pp. 105-07.
`
`Prometheus addresses the existence of cruise control systems, including the
`
`concept of a “speed controller” as recited by the claim 1.
`
`Patent Owner’s response argues that the Petition fails in some way, but
`
`neglects to articulate any distinction between the “system” disclosed in
`
`Prometheus and the “speed controller” recited in claim 1 of the ’463 patent. The
`
`reason for the Patent Owner’s neglect is because no distinction exists.
`
`At most, the Patent Owner simply alleges that the system of Prometheus
`
`does not “expressly refer[] to the structural requirement of ‘a speed controller,’”
`
`(Paper 21 at p. 5). However, Patent Owner does not offer any construction for
`
`
`
`4
`
`
`
`
`
`"speed controller" and does not require the claimed speed controller to include any
`
`particular structure. Patent Owner’s position is telling, in that the '463
`
`specification provides no structural details of the speed controller whatsoever.
`
`In this regard, Patent Owner’s apparent suggestion that the "system" of
`
`Prometheus cannot be applied to the “speed controller” limitation of claim 1 is
`
`belied by both the '463 patent specification, as well as the common usage of the
`
`term. For example, the Abstract of the '463 patent discloses the "cruise control" as
`
`a system within a "system.": "A system for indicating the operational status and
`
`parameters of a cruise control system for use in a human operated vehicle. The
`
`system includes apparatus for storing and recalling a preset speed for the cruise
`
`control system." Ex. 1001 at Abstract.
`
`Moreover, the '463 patent uses the terms "cruise control," "cruise control
`
`system," and "speed controller" interchangeably to refer to what is enabled,
`
`engaged, and/or activated to control the speed of the vehicle. See, e.g., Ex. 1001 at
`
`Abstract, 4:4-6, 4:39-46, and 5:3-7. While the claims of the '463 patent recite
`
`displaying the operational status and parameters of the "speed controller," the
`
`specification repeatedly refers to displaying the operational status and parameters
`
`of the "cruise control" or "cruise control system." Compare, for example, claim 4
`
`("display a predetermined signal when the controller is enabled to indicate the
`
`state of the controller") with 4:43-44 ("blink once … to inform the operator that
`
`
`
`5
`
`
`
`
`
`the cruise control is now enabled"), 2:37-39 ("The present invention addresses this
`
`need by providing the operator of a vehicle with information about the preset speed
`
`of an enabled cruise control system."), and 4:4-6 ("When the cruise control system
`
`is first activated … indicating an 'unset' state of the cruise control.") (emphasis
`
`added).
`
`Thus, because the '463 patent conflates the terms "cruise control," "cruise
`
`control system," and "speed controller," and because Prometheus discloses the
`
`same structure and function as the "speed controller" described in the '463 patent
`
`specification (i.e., a cruise control or cruise control system), Prometheus
`
`necessarily teaches the claimed speed controller element. See, e.g., Ex. 1001 at
`
`Abstract, 4:4-6, 4:39-46, and 5:3-7. Accordingly, the disclosure of Prometheus is
`
`structurally indistinct from the recitations of claim 1.
`
`Memory: Patent Owner argues that Prometheus does not “refer to the
`
`structural requirement of ‘a memory.’” However, as noted in the Petition,
`
`Prometheus describes that the “consign speed is memorized by the system” (See
`
`Ex. 1003, at pp. 105-107 and Fig. 4.) Since memorize means commit to memory,
`
`and Prometheus teaches that the “system” memorizes the consign speed,
`
`Prometheus teaches a memory per claim 1.
`
`Feedback System: Patent Owner argues that Prometheus does not disclose a
`
`“feedback system” as recited by claim 1, arguing that the representation of
`
`
`
`6
`
`
`
`
`
`
`
`consign speed by the LED’s is not exact enough because they are spaced at
`
`roughly 10km/h increments. But nothing in the claim states that the feedback
`
`system must have a certain degree of accuracy. All that the claim requires is that
`
`the LEDs display “information indicative of said preset speed.”
`
`To this end, the ‘463 patent also includes an embodiment of LEDS aligned
`
`as in Prometheus for the same purpose. While the ‘463 LEDs are spaced closer,
`
`they are also discrete points just like the Prometheus LEDs, and nothing in the
`
`claims requires any particular degree of accuracy.
`
`2. The Petition established that Prometheus discloses a “speed
`controller,” “memory,” or “feedback system” as recited by claim
`2.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to claim 1. As such, for the reasons outlined in the Petition and those
`
`made herein, Prometheus renders claim 2 unpatentable as anticipated.
`
`3. The Petition established that Prometheus discloses “the digital
`display” as recited by claim 5.
`
`As noted in the Petition, Figure 3 of Prometheus illustrates the use of LEDs
`
`to indicate the consign speed to a driver. Petitioners’ expert opined that “[o]ne of
`
`ordinary skill in the art would understand that the consign speed using LEDs to
`
`indicate discrete speed intervals” and that such a display is a “digital display.” Ex.
`
`1010 at para. 48. Patent Owner has failed to provide any supportive reasoning as
`
`to why this is not the case and instead attempts to rely upon attorney argument to
`
`7
`
`
`
`
`
`
`
`do so. This is wholly deficient. As such, for the reasons outlined in the Petition
`
`and those made herein, Prometheus renders claim 5 unpatentable as anticipated.
`
`4. The Petition established that Prometheus discloses the required
`elements as recited by claim 12.
`
`Displaying A Symbol Indicative Of The Speed At Which The Cruise
`
`Control System Is Activated: Patent Owner argues that the LEDs indicating the
`
`consign speed of Prometheus fail for two reasons: (i) the LEDs do not provide a
`
`driver with a way of knowing the exact consign speed and (ii) the cruise control
`
`system is activated to a previously stored preset speed. As noted earlier, the first
`
`argument fails because the LEDs are placed at consistent markers on the
`
`speedometer, so the driver would be able to determine the consign speed in the
`
`same manner the driver determines any other speed indicated by the speedometer
`
`of a car with similar demarcations.
`
`With respect to the second argument, according to the disclosure of
`
`Prometheus, the system may be turned on (i.e., activated) and engaged (states 2
`
`and 3) at a particular vehicle speed so that the consigned speed indicated by the
`
`LEDs is the vehicle speed when the system is turned on. Ex. 1003 at FIG. 3 and
`
`pp. 105-106. As such, Prometheus renders claim 12 unpatentable as anticipated.
`
`Maintaining The Activated Cruise Control Speed Symbol Upon Temporary
`
`Acceleration Or Deceleration Of The Vehicle: As noted in the Petition (p. 25),
`
`Figures 2 and 4 of Prometheus (pages 109 and 111 in Ex. 1003) disclose that 1)
`
`8
`
`
`
`
`
`
`
`“all LEDs under consign speed corresponding LED are ON (last one also)” after
`
`the accelerator pedal is pressed (state 6) and 2) the “[m]emorized consign speed
`
`corresponding LED is on” after braking occurs (state 2). These are two clear
`
`examples of Prometheus disclosing “maintaining the activated cruise control
`
`speed symbol upon temporary acceleration or deceleration of the vehicle,” e.g.,
`
`braking. As such, for the reasons outlined in the Petition, and those made herein,
`
`Prometheus anticipates claim 12.
`
`5. The Petition established that Prometheus discloses the required
`elements as recited by claim 13.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to LEDs as disclosed in Prometheus. As such, Prometheus renders
`
`claim 13 unpatentable as anticipated.
`
`6. The Petition established that Prometheus discloses the required
`elements as recited by claim 14.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to LEDs as disclosed in Prometheus. As such, for the reasons
`
`outlined in the Petition and those made herein, Prometheus renders claim 14
`
`unpatentable as anticipated.
`
`7. The Petition established that Prometheus discloses the required
`elements as recited by claim 18.
`Displaying To The Operator A Symbol Indicative Of The Preset Speed
`
`While Maintaining The Vehicle At Substantially The Preset Speed: Patent
`
`9
`
`
`
`
`
`
`
`Owner’s response relies upon the arguments it previously proffered herein with
`
`respect to LEDs as disclosed in Prometheus. As such, for the reasons outlined in
`
`the Petition and those made herein, Prometheus anticipates 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: Patent Owner’s response relies upon the
`
`arguments it previously proffered herein with respect to “memory” as disclosed in
`
`Prometheus. As such, for the reasons outlined in the Petition and those made
`
`herein, Prometheus renders claim 18 unpatentable as anticipated.
`
`At A Time After Braking And During When Time The Vehicle Is Not Being
`
`Maintained At Substantially The Preset Speed, Displaying To The Operator A
`
`Symbol Indicative Of The Preset Speed: Patent Owner’s response relies upon the
`
`arguments it previously proffered herein with respect to LEDs as disclosed in
`
`Prometheus. As such, for the reasons outlined in the Petition and those made
`
`herein, Prometheus renders claim 18 unpatentable as anticipated.
`
`8. The Petition established that Prometheus discloses the required
`elements as recited by claim 19.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to LEDs as disclosed in Prometheus. As acknowledged by Patent
`
`Owners, all of the LEDs are ON to indicate the consign speed when the cruise
`
`control system of Prometheus is engaged (i.e., “while the vehicle is being
`
`10
`
`
`
`
`
`
`
`maintained at substantially the preset speed”); the LED corresponding to the
`
`consign speed is ON after braking to indicate the memorized consign speed when
`
`the system is disengaged (i.e., “while the vehicle is not being maintained at
`
`substantially the preset speed”). Accordingly, Prometheus discloses “the symbol
`
`indicative of the preset speed displayed at the time after braking the vehicle is not
`
`being maintained at substantially the preset speed is distinguishable by the
`
`operator from the symbol indicative of the preset speed while the vehicle is being
`
`maintained at substantially the preset speed” as recited by this claim. As such, for
`
`the reasons outlined in the Petition and those made herein, Prometheus anticipates
`
`claim 19.
`
`9. The Petition established that Prometheus discloses the required
`elements as recited by claim 25.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to LEDs as disclosed in Prometheus. As such, for the reasons
`
`outlined in the Petition and those made herein, Prometheus renders claim 25
`
`unpatentable as anticipated.
`
`10. The Petition established that Prometheus discloses the required
`elements as recited by claim 26.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to “speed controller” and “memory” for claim 1. As such, for the
`
`reasons outlined in the Petition and those made herein, Prometheus renders claim
`
`11
`
`
`
`
`
`
`
`26 unpatentable as anticipated.
`
`A Second Visual Display Apparatus Operable To Display 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: Patent Owner’s
`
`response relies upon the arguments it previously proffered with respect to LEDs as
`
`disclosed in Prometheus. The only new argument Patent Owner presents is that
`
`the combination of the LEDs and warning lights are not two distinct sets of visual
`
`displays. However, as noted in the Petition, Figure 3 illustrates the consign speed
`
`LEDs and warning lights are two separate visual displays that meet this claim
`
`element. As such, Prometheus anticipates claim 26.
`
`11. The Petition established that Prometheus discloses the required
`elements as recited by claim 34.
`
`Patent Owner’s response relies upon the arguments it previously proffered
`
`with respect to “speed controller” and “memory” for claim 1. As such, for the
`
`reasons outlined in the Petition and those made herein, Prometheus anticipates
`
`claim 34.
`
`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: Patent Owner’s
`
`12
`
`
`
`
`
`
`
`response relies upon the arguments it previously proffered with respect to the
`
`“second visual display apparatus” for claim 26. As such, for the reasons outlined
`
`in the Petition and those made herein, Prometheus anticipates claim 34.
`
`Operating The Second Visual Display Apparatus To Indicate The Active
`
`Status Of The Cruise Control Device: Patent Owner contends that the Petition’s
`
`statement does not refer to any display apparatus, however, this position is
`
`inapposite to the Petition and the teachings of Prometheus. By the driver
`
`switching the ON/OFF switch for the AICC system, “Dashboard Information” is
`
`then displayed in addition to the consign speed LEDs. Ex. 1003 at pp. 109-111.
`
`As such, Prometheus anticipates claim 34.
`
`III. PROMETHEUS AND NARITA RENDER OBVIOUS CLAIMS 3, 5,
`12, 15, 16, 21, AND 28 OF THE ‘463 PATENT UNDER 35 U.S.C. §
`103.
`
`Claims 3, 5, 12, 15-16, 21 and 28 of the ’463 Patent are obvious over
`
`Prometheus in view of Narita (Ground B). Patent Owner’s response relies upon
`
`the arguments it previously proffered with respect to claims 3, 5, 12-13, 15-16, 21
`
`and 26. As such, for the reasons outlined in the Petition and those made herein,
`
`claims 3, 5, 12, 15-16, 21 and 28 are obvious from Prometheus in view of Narita.
`
`IV. PROMETHEUS AND CELSIOR RENDER OBVIOUS CLAIM 4 OF
`THE ‘463 PATENT UNDER 35 U.S.C. § 103.
`
`Claim 4 of the ’463 Patent is obvious over Prometheus in view of Celsior
`
`(Ground C). Patent Owner’s response relies upon the arguments it previously
`
`
`
`13
`
`
`
`
`
`proffered with respect to claim 2. As such, for the reasons outlined in the Petition
`
`and those made herein, claim 4 is obvious from Prometheus in view of Celsior.
`
`V. CONCLUSION
`
`
`
`For at least these reasons, the Board should issue a final determination
`
`maintaining that claims 1-5, 12-16, 18, 19, 21, 25-31, and 34-36 are unpatentable.
`
`
`
`Respectfully submitted,
`
`
`By: /William H. Mandir/
`William H. Mandir, Reg. No. 32,156
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`Tel: (202) 293-7060
`
`Counsel for Petitioners
`
`Dated: January 9 , 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the PETITIONERS REPLY
`
`was served on the counsel of record for the Patent Owner by filing this document
`
`through the Patent Review Processing System as well as by delivering a copy via
`
`electronic mail on January 9, 2015, upon the following:
`
`
`John R. Kasha, Kasha Law LLC
`john.kasha@kashalaw.com
`
`
`
`
`Dated: January 9, 2015
`
`
`
`
`
`
`
`
`
`By: /William H. Mandir/
`William H. Mandir, Reg. No. 32,156
`Counsel for Petitioners
`
`
`
`
`
`
`
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