`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 11
`Date: July 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`NISSAN NORTH AMERICA, INC., FORD MOTOR COMPANY, AMERICAN
`HONDA MOTOR CO., INC., JAGUAR LAND ROVER NORTH AMERICA
`LLC, SUBARU OF AMERICA INC., TOYOTA MOTOR NORTH AMERICA,
`INC., and VOLVO CARS OF NORTH AMERICA LLC,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00291
`Patent 6,324,463
`____________
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`I. INTRODUCTION
`
`
`
`Petitioner, Nissan North America, Inc. et al. (“Petitioner”), filed an amended
`
`petition (Paper 6, “Pet.”) requesting inter partes review of claims 1-5, 12-16, 18,
`
`19, 21, 25-31, and 34-36 of U.S. Patent No. 6,324,463 (the “’463 patent”). Patent
`
`Owner, Cruise Control Technologies LLC (“Patent Owner”), filed a preliminary
`
`response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`To institute an inter partes review, we must determine the information
`
`presented in the Petition and the Preliminary Response shows “a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below,
`
`we conclude that the information presented in the Petition establishes a reasonable
`
`likelihood that Petitioner will prevail in showing the unpatentability of claims 1-5,
`
`12-16, 18, 19, 21, 25-31, and 34-36. Pursuant to 35 U.S.C. § 314, we hereby
`
`institute an inter partes review as to those claims.
`
`A. Related Matters
`
`
`
`Petitioner has identified several related district court proceedings involving
`
`the ’463 patent, all of which were filed by Patent Owner in the United States
`
`District Court for the District of Delaware. See Pet. 3-4; Paper 5, at 2-4. The ’463
`
`patent is also the subject of four other requests for inter partes review (IPR2014-
`
`00279, IPR2014-00280, IPR2014-00281, and IPR2014-00289).
`
`B. The ’463 Patent (Ex. 1001)
`
`
`
`The ’463 patent discloses cruise control systems for use in a human
`
`operated vehicle. See Ex. 1001, Abst. Figures 1 and 2 of the ’463 patent are
`
`shown below:
`
`2
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`
`
`
`
`Figure 1 illustrates a digital speed display, while Figure 2 illustrates an analog
`
`speedometer. See id. at 3:8-13. In Figure 1, main speed display 3 shows the
`
`current speed at which the vehicle is operating. See id. at 3:49-53. When a cruise
`
`control set button (not shown in Figure 1) is pressed, the vehicle speed is stored in
`
`digital memory 12 as a preset speed. See id. at 3:53-60. Second speed display 16
`
`shows that preset speed. See id.
`
`Figure 2’s analog speedometer 40 incorporates several LED assemblies 45.
`
`See id. at 4:19-26. Each LED assembly 45 has an LED and a detector. See id. at
`
`4:29-30. When a cruise control set button (not shown in Figure 2) is pressed, all of
`
`the detectors are activated, and all of the LEDs momentarily light up. See id. at
`
`4:48-51. The back of needle 42 reflects the light of the lit LEDs behind the needle,
`
`and that reflected light is detected by the detector of the LED assembly disposed at
`
`the location of needle 42. See id. at 4:51-57. The LED of that assembly is then
`
`activated and remains lit to indicate the speed at which cruise control was engaged.
`
`See id. at 4:57-64.
`
`
`
`Claims 1, 2, 6, 12, 13, 18, 21, 25, 26, 29, and 34 are independent. Claims 1
`
`and 12 are illustrative and is reproduced below:
`
`1. A cruise control system for vehicle having a human
`
`operator, comprising:
`
`3
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`
`
`
`a speed controller that automatically maintains the vehicle
`
`speed at a preset speed;
`
` an enable switch associated with said controller for enabling
`
`the system;
`
` a set speed input in communication with said controller for
`
`manually setting the speed of the vehicle at said preset speed, thereby
`engaging the system;
`
` a memory which stores information indicative of said preset
`
`speed; and
`
`a feedback system for communicating said information in said
`
`memory to the operator of the vehicle.
`
`
`
`determining the speed at which the vehicle is traveling;
`
`activating the cruise control system at a desired cruising speed;
`
`12. A method for visually communicating to the human
`
`operator of a vehicle having a cruise control system a cruising speed
`at which the vehicle is set, comprising:
`
`
`
`
`
`displaying a symbol indicative of the speed at which the cruise
`
`control system is activated;
`
`maintaining the activated cruise control speed symbol upon
`
`temporary acceleration or deceleration of the vehicle;
`
`removing said symbol when the cruise control system is
`
`deactivated or a new cruising speed is selected.
`
`
`4
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`C. Prior Art Relied Upon
`
`
`
`Autonomous Intelligent Cruise
`Control (AICC), Prometheus
`(“Prometheus”)
`
`
`JP S60-174329
`Narita
`(translation, Ex. 1006)1
`
`Toyota Celsior Owner’s Manual
`(“Celsior”)
`(translation, Ex. 1009)
`
`
`Apr. 1991
`
`Ex. 1003
`
`Sept. 1985
`
`Ex. 1004
`
`July 1997
`
`Ex. 1007
`
`D. The Alleged Grounds of Unpatentability
`
`
`
`Petitioner contends that claims of the patent are unpatentable under 35
`
`U.S.C. §§ 102(b) and 103(a) on the following grounds:
`
`Reference[s]
`
`Prometheus
`
`Prometheus and Narita
`
`Prometheus and Celsior
`
`Basis Claim[s] challenged
`
`§ 102
`
`§ 103
`
`1-3, 5, 12-14, 18, 19, 25-27,
`29-31, and 34-36
`3-5, 12, 15, 16, 21, and 28
`
`§ 103
`
`4
`
`
`
`II. ANALYSIS
`
`A. Preliminary Matters
`
`
`
`Patent Owner’s Preliminary Response presents two arguments addressed to
`
`the merits of the Petition’s proposed grounds for unpatentability. Patent Owner
`
`first asserts we should deny inter partes review on a proposed ground of
`
`unpatentability because the Petition provides only a partial translation of Celsior.
`
`
`1 Our decision cites to the translations of the prior art relied upon, including the
`page numbering of the original documents as reflected in the translations.
`
`5
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`See Prelim. Resp. 10-11. That publication is written in the Japanese language. See
`
`Ex. 1007 (original Japanese-language document). Patent Owner contends that
`
`Celsior, in its entirety, constitutes 261 pages, and Petitioner has provided a
`
`translation of only 15 of those pages. See Prelim. Resp. 10.
`
`
`
`It is apparent that the Japanese version of Celsior (Ex. 1007) and the
`
`corresponding English translation (Ex. 1009) are directed to only portions of a
`
`larger document. Rule 42.63(b), which applies in this proceeding,2 states: “When
`
`a party relies on a document or is required to produce a document in a language
`
`other than English, a translation of the document into English and an affidavit
`
`attesting to the accuracy of the translation must be filed with the document.” 37
`
`C.F.R. § 42.63(b) (2013) (emphasis added). The Certificates of Translation
`
`provided with the Petition attest only that “[t]he translations are accurate and
`
`complete translations of relevant portions of the original document.” Exs. 1006
`
`and 1009 (emphasis added). Thus, the Petition is not in strict compliance with
`
`Rule 42.63(b), because it does not include translations “of the document[s].”
`
`
`
`The translations also suffer from a second deficiency, not raised by Patent
`
`Owner. Rule 42.63(b) requires an “affidavit,” defined as an “affidavit or
`
`declaration under § 1.68 of this chapter.” 37 C.F.R. § 42.2 (2013). The
`
`Certificates of Translation are not affidavits because they were not made under
`
`oath. The Certificates can qualify as permitted declarations only if the declarant is
`
`warned on the same document that willful false statements and the like are
`
`punishable by fine or imprisonment, or both, and they also state all statements
`
`made of the declarant’s own knowledge are true, and all statements made on
`
`information and belief are believed to be true. See 37 C.F.R. § 1.68 (2013). The
`
`
`2 Patent Owner relies on MPEP § 706.02, but that is not binding authority in this
`proceeding. Even if we were to apply the MPEP, we would still institute review.
`
`6
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`Certificates do not satisfy those requirements, and therefore are not declarations
`
`
`
`under Rule 1.68.
`
`
`
`Nonetheless, we may waive or suspend the requirements of Rule 42.63(b)
`
`and also place conditions on the waiver or suspension. See 37 C.F.R. § 42.5(b)
`
`(2013). Pursuant to that authority, we have decided to grant inter partes review
`
`based on the “relevant portions” of the original documents that have been
`
`translated, and waive the requirement for a translation of the full document, subject
`
`to the following condition. Petitioner must, within 30 days of the date of this
`
`decision is entered, file substitute Certificates of Translation directed to the
`
`translations originally filed with the Petition complying with the requirements of
`
`Rule 42.63(b) to the extent that the substitute Certificates include a proper
`
`indication that the declarant is subject to the provisions of 37 C.F.R. § 1.68 (2013).
`
`For any content of the noted documents for which English translation has not been
`
`provided, we remind Petitioner of its duty of candor and good faith to the Office
`
`(37 C.F.R. § 42.11 (2013)) as well as its routine discovery obligation to serve
`
`relevant information that is inconsistent with a position advanced by Petitioner in
`
`the Petition (37 C.F.R. § 42.51(b)(1)(iii) (2013)).
`
`B. Claim Construction
`
`
`
`As a step in our analysis, we determine the meaning of the claims for
`
`purposes of this decision. In an inter partes review, a claim in an unexpired patent
`
`shall be given its broadest reasonable construction in light of the specification of
`
`the patent in which it appears. See 37 C.F.R. § 42.100(b) (2013). Under that
`
`construction, claim terms are given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art in the context of the entire
`
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). We construe the terms below in accordance with that standard.
`
`7
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`
`1. “engaging the system” (claim 1) and
`“engaging the cruise control system” (claim 21)
`
`Petitioner contends we should construe “engaging the system” in claim 1 to
`
`
`
`mean “operating the cruise control system to automatically control the vehicle at
`
`the preset speed.” Pet. 12-13 (citing Ex. 1001, Fig. 4, 1:46-48, 5:13-15). Patent
`
`Owner contends we should construe “thereby engaging the system” in claim 1 to
`
`mean “as a result, activating the speed controller of the cruise control system to
`
`automatically maintain the vehicle speed at the preset speed.” Prelim. Resp. 4-5
`
`(citing Ex. 1001, 3:54-57). Patent Owner describes “operating the cruise control
`
`system” in Petitioner’s proposal as “an overly broad generalization of the claimed
`
`invention,” and contends the construction instead should refer specifically to the
`
`speed controller of the cruise control system, apart from the claimed feedback
`
`system and the claimed set speed input. Id. We conclude Petitioner’s proposal
`
`comports with the broadest reasonable construction of “engaging” in light of the
`
`’463 patent specification.
`
`
`
`The term “comprising” in claim 1 leaves open the possibility that other
`
`unclaimed components of the cruise control system, in addition to the speed
`
`controller, may play a part in controlling the vehicle’s speed. In addition, the term
`
`“maintain” in Patent Owner’s proposed construction is unduly narrow, because it
`
`forecloses temporary acceleration of the vehicle while the cruise control system is
`
`engaged. See Ex. 1001, 1:32-36, 4:6-14 (indicating vehicle may be accelerated
`
`temporarily while cruise control is engaged). We therefore adopt Petitioner’s
`
`proposed construction.
`
`
`
`Petitioner proposes the same construction for “engaging the cruise control
`
`system” in claim 21. See Pet. 12-13. Patent Owner instead proposes “putting the
`
`cruise control system into an operative state” for claim 21. Prelim. Resp. 5-6. In
`
`8
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`particular, Patent Owner notes claim 21 separately recites “engaging the cruise
`
`
`
`control system” and “setting the preset speed,” and contends claim 21 therefore
`
`“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).” Id. We are not persuaded by Patent Owner’s argument. In particular,
`
`under a broadest reasonable construction, the “engaging” and “setting” of claim 21
`
`may occur simultaneously. See Ex. 1001, 3:56-57 (“when the set button is pressed,
`
`that is, when the cruise control is engaged”). Thus, there is no requirement that the
`
`engagement of the cruise control system must occur “prior to” the act of setting the
`
`present speed. We, therefore, adopt Petitioner’s proposed construction.
`
`
`
`For the foregoing reasons we construe “engaging the system” in claim 1 and
`
`“engaging the cruise control system” in claim 21 to mean “operating the cruise
`
`control system to automatically control the vehicle at the preset speed.”
`
`2. “enabling” (claims 1 and 2) and “enabled” (claims 2 and 4)
`
`Petitioner contends that we should construe “enabling the system” in claim 1
`
`
`
`and “enabling . . . the controller” in claim 2 to mean “a ‘system on’ state for the
`
`cruise control system.” Pet. 12 (citing Ex. 1001, 4:39-46). Patent Owner instead
`
`proposes “putting the speed controller of the cruise control system into an
`
`operative condition . . . in that the speed controller will automatically maintain the
`
`vehicle at a preset speed.” Prelim. Resp. 2-3. Patent Owner criticizes Petitioner’s
`
`proposal as “too vague to provide any benefit when evaluating the validity of the
`
`claims.” Prelim. Resp. 3.
`
`
`
`We conclude Petitioner’s proposal comports with the broadest reasonable
`
`construction of “enabling” and “enabled” in light of the ’463 patent specification.
`
`That is, the ’463 patent specification consistently describes “enabling” as turning
`
`9
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`on the cruise control system (see Ex. 1001, 1:18-20, 1:64-65, 4:39-44) and
`
`
`
`“engaging” as setting the cruise control at a desired speed (see id. at 1:21-25, 1:45-
`
`48, 3:56-57). We therefore adopt Petitioner’s proposed construction that “enabling
`
`the system” in claim 1 and “enabling . . . the controller” in claim 2 mean “a
`
`‘system on’ state for the cruise control system.” Pet. 13. This construction also
`
`applies to the descriptor “enabled” in claims 2 and 4. See id.; Prelim. Resp. 3.
`
`3. “indicating to the operator the unset status of the preset speed” (claim 15) and
`“displaying a symbol indicative of an unset state of the preset speed”
`(claim 21)
`
`Petitioner contends that we should construe “unset status” and “unset state”
`
`
`
`in these two claim limitations to mean “a state or status in which there is no preset
`
`speed for the cruise control system.” Pet. 13-14. Patent Owner contends
`
`Petitioner’s proposal is improper because “it adds ‘for the cruise control system.’”
`
`Prelim. Resp. 7. We note, however, that claim 15’s parent claim 13, and claim 21,
`
`both recite “a preset speed for which the cruise control system is set” (emphasis
`
`added). That the claims, themselves, associate setting of the preset speed with the
`
`cruise control system undermines Patent Owner’s contention that there is
`
`impropriety in the Petitioner’s proposed construction. We therefore adopt
`
`Petitioner’s proposed construction.
`
`
`
`Patent Owner further contends we should construe these two claim
`
`limitations to mean “displaying a visual indication that the preset speed has not
`
`been set.” Prelim. Resp. 6-8. We are not persuaded as to claim 15, which broadly
`
`recites “indicating” without requiring the indication to be visual. As to claim 21,
`
`“displaying . . . a symbol” self-evidently requires a visual indication. We therefore
`
`decline to adopt Patent Owner’s proposed construction as being either too narrow
`
`(claim 15) or inconsistent with the plain language of the claim (claim 21).
`
`10
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`
`4. “activating the cruise control system” (claims 12 and 15) and
`“deactivated” (claims 12, 13, and 21)
`
`Petitioner contends we should construe “activating” in these claims to mean
`
`
`
`“turning on,” and “deactivated” as “turned off.” Pet. 13. Patent Owner agrees as
`
`to all claims except for claim 12. See Prelim. Resp. 9-10. We agree with the
`
`parties in this regard, and therefore construe “activating the cruise control system”
`
`in claim 15 to mean turning on the cruise system, and “deactivated” in claims 13
`
`and 21 to mean that the cruise control system is turned off.
`
`
`
`Patent Owner contends we should construe “activating” in claim 12 to mean
`
`something different, namely, “causing the cruise control system to maintain the
`
`speed at which the vehicle is traveling at the desired cruising speed.” Prelim.
`
`Resp. 8. It is true that claim 12, unlike the other claims, recites “activating the
`
`cruise control system at a desired cruising speed,” “displaying a symbol indicative
`
`of the speed at which the cruise control system is activated,” and “maintaining the
`
`activated cruise control speed symbol” (emphases added). These limitations seem
`
`to equate activation with setting the cruise control system at a desired cruising
`
`speed.
`
`
`
`“[C]laim terms are normally used consistently throughout the patent.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). “[A] claim term
`
`should be construed consistently with its appearance in other places in the same
`
`claim or in other claims of the same patent.” Rexnord Corp. v. Laitram Corp., 274
`
`F.3d 1336, 1342 (Fed. Cir. 2001). Thus, construing the same term to have
`
`different meanings in different claims is the exception rather than the rule.
`
`Moreover, claim 12 recites “removing said symbol when the cruise control system
`
`is deactivated” (emphasis added). If we were to adopt Patent Owner’s construction
`
`of claim 12, that limitation would require the symbol indicative of the cruising
`
`11
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`speed to be removed when the cruise control system stops maintaining the cruising
`
`
`
`speed — for example, upon temporary acceleration of the vehicle, or temporary
`
`deceleration of the vehicle when the brakes are applied. We conclude that one of
`
`ordinary skill in the art, upon reading the ’463 patent specification, would not
`
`construe claim 12 in such a manner. See Ex. 1001, 2:5-35 (discussing “potential
`
`safety hazards” of prior cruise control systems which did not display preset cruise
`
`control speed upon temporary acceleration or deceleration), 2:37-45 (discussing
`
`solution). We, therefore, construe activating / activated in claim 12 the same as in
`
`the other claims of the ’463 patent.
`
`5. Remaining claim terms
`
`
`
`All other terms of the claims are given their plain and ordinary meaning that
`
`is consistent with the Specification. For purposes of this decision, we need not
`
`construe expressly those terms.
`
`C. Discussion
`
`
`
`Petitioner proposes three grounds of unpatentability with respect to the
`
`claims of the ’463 patent. All of the grounds involve Prometheus. Prometheus
`
`describes the operation of an “Autonomous Intelligent Cruise Control (AICC)”
`
`feature in connection with a motor vehicle. The reference summarizes the
`
`functioning of an AICC system as follows:
`
`The Autonomous Intelligent Cruise Control (AICC) is an assisting
`system being able of controlling relative speed and distance between
`two adjacent vehicles in the same lane.
`
`Ex. 1003, 5 (emphasis removed).3
`
`
`3 In this Decision, the noted pagination of Prometheus is that supplied by Petitioner
`which appears in the lower right-hand corner of the pages of the document.
`
`12
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`Based on the disclosure of Prometheus, Petitioner contends that claims 1-3,
`
`5, 12-14, 18, 19, 25-27, 29-31, and 34-36 are anticipated, and claims 3-5, 12, 15,
`
`16, 21, and 28 would have been obvious.
`
`1. Anticipation
`
`
`
`In urging that the above-noted claims are anticipated, Petitioner points
`
`primarily to four Figures appearing in Prometheus at pages 108-111 and labeled as
`
`Figures 1-4, as well as content described in Prometheus at pages 105-107.
`
`Petitioner also relies on the declaration testimony of David A. McNamara (Ex.
`
`1010) in support of its anticipation position.
`
`
`
`As a part of the Petition, Petitioner reproduces Prometheus’s Figure 3. See
`
`Pet. 9. That Figure 3, as it appears in the Petition, is reproduced below:
`
`
`
`
`
`
`
`
`
`Figure 3 above depicts an image of a vehicle’s dashboard that incorporates
`
`an AICC system. See Ex. 1003, 107. As is apparent from Figure 3, the left side of
`
`the figure presents a speedometer that indicates the speed of the vehicle. The
`
`figure also describes that there are “Consign Speed LEDs” as a part of the
`
`speedometer. Prometheus explains that “consign speed is the speed selected by the
`
`13
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`driver to maintain the vehicle.” Id. at 105. That “consign speed” is displayed to
`
`
`
`the vehicle’s operator via the consign speed LEDs, see id. at 108, which, in Figure
`
`3, are expressed as being “green.” See also Figure 4 (“All LEDs under consign
`
`speed corresponding LED are ON.”) Prometheus also explains that its AICC
`
`system includes two modes of “regulation”: “speed” regulation, and “distance”
`
`regulation. Id. at 105. In that regard, Prometheus describes the following:
`
`To activate the regulation, the driver has to press on the
`
`ACTIVATE button, and immediately the system starts the regulation,
`as well in speed if there is not a detected target, as in distance if there
`is at least one. To deactivate the regulation and take control of the
`vehicle, the driver has two possibilities: the DEACTIVATE button or
`the BRAKE PEDAL. In both cases the driver stops the regulation and
`the consign speed is memorized by the system. If the driver wants to
`take up the regulation, he can act in two ways: press on the
`ACTIVATE button so the system starts again the regulation with the
`vehicle speed as consign speed, or press on the RESUME button and
`the system starts again the regulation with the memorized speed as
`consign speed.
`
`Id. Thus, Prometheus discloses that a “consign speed” is memorized by the system
`
`and may be resumed by the vehicle after certain actions are taken by the vehicle’s
`
`operator. Further, as discussed above, that memorized consign speed is displayed
`
`to the vehicle’s operator by virtue of the consign speed LEDs associated with the
`
`speedometer. See, e.g., Figure 4, State 2.
`
`
`
`In light of the teachings of Prometheus, Petitioner contends that all the
`
`features required by claims 1-3, 5, 12-14, 18, 19, 25-27, 29-31, and 34-36 are
`
`disclosed in that reference. See Pet. 18-41. Patent Owner does not dispute that
`
`contention. Anticipation under 35 U.S.C. § 102 is established when each and
`
`every element in a claim is found in a prior art reference and arranged as recited in
`
`the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`
`14
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`Cir. 2001). In reviewing the Petition, we are satisfied, at this time, that Petitioner
`
`
`
`has shown where all the features of the above-noted claims are found in
`
`Prometheus in the same manner as they are arranged in the claims. Accordingly,
`
`we are persuaded that Petitioner has established a reasonable likelihood that it will
`
`prevail in showing that claims 1-3, 5, 12-14, 18, 19, 25-27, 29-31, and 34-36 are
`
`unpatentable based on Prometheus.
`
`2. Obviousness
`
`
`
`Petitioner contends that claims 3-5, 12, 15, 16, 21, and 28 are unpatentable
`
`over Prometheus and Narita. Petitioner also contends that claim 4 is unpatentable
`
`over Prometheus and Celsior.
`
`a. Prometheus and Narita
`
`
`
`With respect to claims 3, 5, and 12, as discussed above, we have determined
`
`already that Petitioner has demonstrated a reasonable likelihood that it will prevail
`
`in showing that those claims are unpatentable as anticipated by Prometheus. In
`
`reviewing the Petition (see Pet. 42-48), we are also persuaded that Petitioner has
`
`established a reasonable likelihood that claims 3, 5, and 12 are unpatentable based
`
`on Prometheus taken with Narita.
`
`
`
`Claim 21 is independent and claims 4, 15, 16, and 28 ultimately depend
`
`from one of independent claims 1, 12, or 26. Claim 21 and those dependent claims
`
`include features directed to displaying signals or indicators to an operator that
`
`convey “when the controller is initially enabled to indicate the state of the
`
`controller” (claim 4), or “the unset status of the preset speed” (claims 15 and 21) in
`
`the form of a “visual symbol” (claim 16) or “symbol” (claim 21). Claim 28
`
`similarly adds that the visual information indicative of the preset speed is in the
`
`form of a “digital numerical indicator.”
`
`15
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`Petitioner contends that the features added by claims 4, 15, 16, 21, and 28,
`
`
`
`even if absent from Prometheus, are disclosed in Narita. Narita is titled “Vehicle
`
`Speed Automatic Control Device.” Ex. 1006, Title. An excerpted portion of
`
`Narita’s Figure 5 is reproduced in the Petition and is also reproduced below:
`
`
`
`
`
`
`
`
`
`Pet. 45. The excerpted Figure above depicts actual vehicle speed display unit 36
`
`and stored vehicle speed display unit 37. Petitioner contends the following with
`
`respect to that excerpted Figure:
`
`Figure 5 of Narita (excerpted [above]) teaches a digital stored
`
`vehicle speed display unit that changes display after the stored speed
`is set. Narita discloses that the digital stored vehicle speed display
`unit displays a series of dashes (“--”) after power to the control device
`is turned on but before the set switch is turned on; as illustrated, the
`digital stored vehicle speed display unit displays the stored speed
`(“70”) after the set switch is turned on. ([Ex. 1006,] 5 & Fig. 5.)
`
`
`
`
`Pet. 42. In support of that above-noted assessment of Narita’s disclosure,
`
`Petitioner also points to the declaration testimony of Mr. McNamara. Pet. 46-54
`
`(citing Ex. 1010 ¶¶ 65 and 68-72). Petitioner also reasons, with recourse to Mr.
`
`McNamara’s testimony, that a person of ordinary skill in the art would have had
`
`reason to combine the teachings of Prometheus and Narita. Id. at 53-54.
`
`
`
`With respect to claims 15, 16, 21, and 28, we are persuaded by the Petition
`
`that Narita discloses the content of those claims. More specifically, we are
`
`persuaded that the reference discloses a system or process for displaying “the unset
`
`16
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`status of the preset speed” (claims 15 and 21), constituting a “visual symbol”
`
`
`
`(claim 16), “symbol” (claim 21), or “digital numerical indicator” (claim 28).
`
`
`
`In connection with claim 4, we observe that the claim 4 requires that a
`
`digital display must display a predetermined signal indicating the state of the
`
`controller when it is “initially enabled.” According to Petitioner, “[o]ne of
`
`ordinary skill would understand that Figure 5 in Narita discloses that the digital
`
`stored vehicle speed display unit displays a series of dashes (“--“)_after power to
`
`the control device is turned on but before the set switch is turned on . . . .” Pet. 46
`
`(citing Ex. 1010 (McNamara Decl.) ¶ 65). We, however, are not persuaded that the
`
`dashed line indicates the enabled state of the controller, because Narita does not
`
`suggest that portion of stored vehicle display unit 37 changes when the controller is
`
`enabled. That is, display unit 37 may very well show a dashed line before the
`
`controller is enabled. In other words, the dashed line does not indicate necessarily
`
`the state of the controller as “initially enabled.”4
`
`
`
`We have considered the Petition and are persuaded that Petitioner has shown
`
`that it has a reasonable likelihood of prevailing in its assertion that claims 15, 16,
`
`21, and 28 are unpatentable based on the Prometheus and Narita. We are not
`
`persuaded that the Petition has shown a reasonable likelihood that claim 4 is
`
`unpatentable over Prometheus and Narita.
`
`
`4 In this regard we note a critical distinction between claim 4 (for which we do not
`institute review based on Prometheus and Narita) and claim 15 (for which we do
`institute such review). Claim 4 requires the digital display to indicate the enabled
`state of the controller, whereas claim 15 requires indicating the unset status of the
`preset speed. Claim 15 does not require indicating the activated or enabled status
`of the cruise control system.
`
`17
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`b. Prometheus and Celsior
`
`
`
`
`
`Petitioner contends that claim 4 is unpatentable based on the teachings of
`
`Prometheus and Celsior. As discussed above, claim 4 ultimately depends from
`
`claim 1 and adds a feature directed to a display for conveying a signal to an
`
`operator. In particular, claim 4 requires that a “digital display” operate to display a
`
`“predetermined signal when the controller is initially enabled to indicate the state
`
`of the controller.”
`
`
`
`Petitioner characterizes Celsior’s disclosure as follows:
`
`that
`for vehicles
`Celsior discloses a cruise control system
`automatically maintains the vehicle speed at a set cruise control speed
`and a combination of different indicators and visual symbols that
`informs the vehicle operator of the operating status of the cruise
`control system. (Celsior (Ex. 1009), at 130-134.)
`
`Pet. 54. In reviewing Celsior, we are persuaded that Petitioner’s assessment of
`
`Celsior’s disclosure is accurate. In connection with claim 4 of the’463 patent,
`
`Petitioner directs our attention to a figure found on page 133 of the reference,
`
`which is reproduced below:
`
`
`
`
`
`
`
`
`
`
`
`18
`
`
`
`
`IPR2014-00291
`Patent 6,324,463
`
`
`
`
`The figure above depicts instructions in setting Celsior’s radar cruise
`
`
`
`control. On this record, we are persuaded by Petitioner’s contention that Celsior
`
`discloses the claim limitation of claim 4. When the main switch is pressed to turn
`
`the radar control system on, the phrase “CRUISE READY” appears in the multi-
`
`information display. See Ex. 1009, 133. In that regard, we are persuaded that the
`
`displayed indication of “CRUISE READY” constitutes a “digital display of a
`
`predetermined signal,” which signifies the state of the controller when it is initially
`
`enabled. For purposes of this decision, we also are persuaded by Petitioner’s
`
`contention that a person of ordinary skill would have been motivated by the Celsior
`
`disclosure to modify the Prometheus cruise control system to include this feature.
`
`See Pet. 56-57 (citing Ex. 1010 ¶ 80).
`
`
`
`We, therefore, determine Petitioner has shown a reasonable likelihood that
`
`claim 4 is anticipated by Celsior.
`
`D. Alleged Redundancies
`
`
`
`Patent Owner asserts that the Petition’s grounds contain “redundancy of the
`
`alleged grounds of unpatentability.” See Prelim. Resp. 11. In that regard, Patent
`
`Owner references the content of other Petitions (IPR2014-00280 and IPR2014-
`
`00281) asserting additional grounds of unpatentability with respect to claims of
`
`the’463 patent, and involving some of the prior art discussed above in connection
`
`with this proceeding (IPR2014-00291). Patent Owner requests that we deny those
`
`allegedly “redundant” grounds as now presented in this IPR2014-00291
`
`proceeding. We decline to do so. The referenced Petitions (IPR2014-00280 and
`
`IPR2014-00281) are separate proceedings, and as noted in an order issued
`
`concurrently to this De