UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`American Honda Motor Co., Inc.
`Petitioner
`
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`
`
`Patent No. 8,036,788
`Filing Date: August 9, 2007
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`
`Inter Partes Review No. Unassigned
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B.
`
`C.
`D.
`
`IV.
`
`V.
`
`
`Introduction ..................................................................................................... 1
`I.
`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a) .............................. 4
`III. The ‘788 Patent ............................................................................................... 4
`A.
`Summary of the ‘788 Patent ................................................................. 4
`B.
`Prosecution History of the ‘788 Patent ................................................ 5
`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b) ..................... 6
`A.
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes
`Review Is Requested ............................................................................ 6
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds
`On Which The Challenge to the Claims Is Based ................................ 6
`37 C.F.R. § 42.104(b)(3): Claim Construction ................................... 8
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable ......................................................................................... 9
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................. 9
`E.
`There Is a Reasonable Likelihood That at Least One Claim of the ‘788
`Patent Is Unpatentable .................................................................................. 10
`A. Ground 1: Claims 1, 2, 3, 4, 5, 6, and 7 are Unpatentable under
`35 U.S.C. § 102(b) as Anticipated by Asano ..................................... 10
`1.
`Claims 1 and 4 .......................................................................... 10
`2.
`Claims 2, 3, 5, 6, and 7 ............................................................ 15
`3.
`Asano is Not Redundant of the Grounds Instituted in the
`IPR2013-00417 Proceeding or of any other Grounds in
`this Petition .............................................................................. 17
`B. Ground 2: Claims 1, 3, 4, 6, and 7 are Unpatentable under 35
`U.S.C. § 102(a) as Anticipated by Fry .............................................. 20
`1.
`Claims 1 and 4 .......................................................................... 20
`2.
`Claims 3, 6, and 7..................................................................... 26
`
`
`
`
`
`-i-
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`3.
`
`Fry is Not Redundant of the Grounds Instituted in the
`IPR2013-00417 Proceeding or of any other Grounds in
`this Petition .............................................................................. 28
`C. Ground 3: Claims 1, 3, 4, 6, 7, 13, and 20 are Unpatentable
`under 35 U.S.C. § 102(b) as Anticipated by Corwin ......................... 29
`1.
`Claims 1 and 4 .......................................................................... 29
`2.
`Claims 3, 6, 7, 13, and 20 ........................................................ 34
`3.
`Corwin is Not Redundant of the Grounds Instituted in the
`IPR2013-00417 Proceeding or of any other Grounds in
`this Petition .............................................................................. 35
`D. Ground 4: Claims 1, 3, 4, 6, and 7 are Unpatentable under 35
`U.S.C.§ 102(e) as Anticipated by Chatham ....................................... 37
`1.
`Claims 1 and 4 .......................................................................... 37
`2.
`Claims 3, 6, and 7..................................................................... 42
`3.
`Chatham is Not Redundant of the Grounds Instituted in
`the IPR2013-00417 Proceeding or of any other Grounds
`in this Petition .......................................................................... 43
`Ground 5: Claims 1, 2, 3, 4, 5, 6, 7, 13, and 20 are Unpatentable
`under 35 U.S.C. § 102(a) and (e) as Anticipated by Scholl ............... 45
`1.
`Claims 1, 3, 4, 6, and 7 ............................................................ 45
`2.
`Claims 2, 5, 13, and 20 ............................................................ 48
`3.
`Scholl is Not Redundant of the Other Presented Grounds ...... 49
`Ground 6: Claims 1, 3, 4, 6, 7, 13, and 20 are Unpatentable
`under 35 U.S.C. § 102(b) as Anticipated by Ishihara ........................ 51
`1.
`Claims 1, 3, 4, 6, and 7 ............................................................ 51
`2.
`Claims 13 and 20...................................................................... 55
`3.
`Ishihara is Not Redundant of the Other Presented
`Grounds .................................................................................... 55
`G. Ground 7: Claims 2 and 5 are Unpatentable under 35 U.S.C.
`§ 103(a) as Obvious over Ishihara in view of Asano ......................... 56
`-ii-
`
`
`E.
`
`F.
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`VI. Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(1) ............................... 58
`A.
`C.F.R. § 42.8(b)(a): Real Party-In-Interest ....................................... 58
`B.
`C.F.R. § 42.8(b)(2): Related Matters ................................................ 58
`C.
`C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................ 59
`VII. Conclusion .................................................................................................... 59
`
`
`
`
`
`-iii-
`
`
`
`

`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1001: U.S. Patent No. 8,036,788 to Breed (“the ‘788 patent”)
`
`Exhibit 1002: Decision, Institution of Inter Partes Review, Paper 14, in Case
`IPR2013-00417 (Jan. 13, 2014)
`
`Exhibit 1003: File History of U.S. Patent No. 8,036,788 to Breed
`
`Exhibit 1004: U.S. Patent No. 5,157,610 to Asano et al. (“Asano”)
`
`Exhibit 1005: KN Fry, “Diesel Locomotive Reliability Improvements by System
`Monitoring,” Proceedings of the Institution of Mechanical
`Engineers, Part F: Journal of Rail and Rapid Transit (“Fry”)
`
`Exhibit 1006: U.S. Patent No. 4,675,675 to Corwin et al. (“Corwin”)
`
`Exhibit 1007: U.S. Patent No. 5,531,122 to Chatham et al. (“Chatham”)
`
`Exhibit 1008: U.S. Patent No. 5,400,018 to Scholl et al. (“Scholl”)
`
`Exhibit 1009: Japanese Unexamined Patent Application Publication No. JP-A-
`H01-197145 to Ishihara et al. (“Ishihara”)
`
`Exhibit 1010: English Translation of Japanese Unexamined Patent Application
`Publication No. JP-A-H01-197145 to Ishihara et al. (“Ishihara”)
`
`Exhibit 1011: Declaration of Christopher Wilson (“Wilson Decl. ”)
`
`
`
`
`
`-iv-
`
`
`
`

`
`
`
`
`
`
`
`American Honda Motor Co., Inc. (“Petitioner”) respectfully request inter
`
`partes review under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 of claims 1-7,
`
`13, and 20 of U.S. Patent No. 8,036,788 (“the ‘788 patent”), attached hereto as
`
`Exhibit 1001.1
`
`The undersigned representative of Petitioner authorizes the Patent Office to
`
`charge the $23,000 Petition Fee, along with any additional fees, to Deposit
`
`Account 503013, ref: 651377-600007. Nine claims are being reviewed;
`
`accordingly no excess claim fees are required.
`
`I.
`
`Introduction
`
`The ‘788 patent is one of a multitude of patents owned by American
`
`Vehicular Sciences LLC (“AVS”) and asserted against the automotive industry, in
`
`an attempt to cover long-known systems and methods relating to automotive
`
`safety. See, e.g., American Vehicular Sciences LLC v. American Honda Motor
`
`Co., Inc. et al., No. 6:13-cv-00226 (E.D. Tex.) (the “226 Litigation”); American
`
`Vehicular Sciences LLC v. Toyota Motor Corp. et al., No. 6:13-cv-00405 (E.D.
`
`Tex.). The ‘788 patent is directed to “methods and systems for transmitting a
`
`1 As discussed in Section I, infra, the Board has instituted an inter partes review of
`
`claims 1, 3, 4, 6-9, 11, 15, 16, and 18 of the ‘788 patent in response to the petition
`
`filed by Toyota Motor Corp. (“Toyota”) in Case IPR2013-00417.
`
`
`
`
`
`-1-
`
`
`
`

`
`
`
`diagnostic or prognostic message from a moving object such as a vehicle to a
`
`
`
`remote site.” (‘788 patent, Ex. 1001, 3:6-8.) The claimed methods and systems of
`
`the ‘788 patent were neither new nor non-obvious when the ‘788 patent was filed.
`
`Accordingly, in this Petition, Petitioner challenges the validity of claims 1-7, 13,
`
`and 20.
`
`The Patent Trial and Appeal Board has recognized a reasonable likelihood
`
`that certain claims of the ‘788 patent are invalid and has instituted inter partes
`
`review of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and 18 (IPR2013-00417 Institution
`
`Decision, Ex. 1002, at 34.) Nonetheless, Petitioner submits that the Board should
`
`institute proceedings on the grounds set forth in this petition for at least the
`
`following reasons:
`
`First, and most importantly, this petition sets forth grounds that each
`
`independently render the requested claims of the ‘788 patent invalid. Each of these
`
`grounds are based upon patents or printed publications that were publicly available
`
`prior to the earliest priority date of the ‘788 patent. Further, none of these grounds
`
`are redundant with any other ground set forth in this petition or with the grounds
`
`currently before the Board in the IPR2013-00417 proceeding. Nonetheless,
`
`Petitioner submits, to the extent such references are relied upon in the grounds set
`
`forth in this petition, that Petitioner has sufficiently described why such references
`
`invalidate the claims of the ‘788 patent and are not redundant with other grounds.
`
`
`
`
`-2-
`
`
`
`

`
`
`
`
`Second, the claims of the ‘788 patent before the Board in the IPR2013-
`
`00417 proceeding do not include claims 2, 5, 13, and 20. The IPR2013-00417
`
`proceeding was initiated based upon a petition filed by Toyota, but since those
`
`claims of the ‘788 patent have not been asserted against Toyota, grounds to
`
`invalidate these claims were not included in the Toyota petition. Multiple grounds
`
`are presented in this Petition to render claims 2, 5, 13, and 20 unpatentable.
`
`Third, Petitioner acknowledges that the invalidating grounds presented by
`
`Toyota and currently before the Board in the IPR2013-00417 proceeding are very
`
`strong grounds upon which the claims of the ‘788 patent should be invalidated.
`
`Petitioner and Toyota face similar litigation initiated by AVS in the same court
`
`over the same patent and many of the same claims. However, because the
`
`possibility exists that the IPR2013-00417 proceeding may be terminated under 35
`
`U.S.C. § 371(a), Petitioner requests institution of this petition based on those
`
`previously instituted grounds, but to hold those grounds in abeyance in the present
`
`proceeding until and unless a settlement of the IPR2013-00417 proceeding occurs,
`
`at which point Petitioner would continue to challenge the instituted claims. In this
`
`Petition, those previously instituted grounds are presented in the Sections V.E and
`
` V.F (Grounds 5 and 6, respectively). The grounds set forth in those sections are
`
`based on the same prior art as those instituted by the Board in the IPR2013-00417
`
`proceeding, and although they are set forth herein in an abbreviated fashion, the
`
`
`
`
`-3-
`
`
`
`
`
`

`
`
`
`discussion in those sections identify where each element of the claims are found in
`
`
`
`the prior art as required by 37 C.F.R. § 42.104(b)(4). In this Petition, those
`
`grounds have also been extended to address certain claims not addressed in
`
`Toyota’s petition.
`
`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘788 patent is available for inter partes review.
`
`Petitioner submits this Petition within one year of AVS’s service of the complaint in the
`
`226 Litigation. Petitioner is not barred or estopped from requesting inter partes review,
`
`nor is Petitioner in privity with any party who is barred or estopped from challenging
`
`the patent claims on the grounds identified herein.
`
`III. The ‘788 Patent
`
`Summary of the ‘788 Patent
`
`A.
`The ‘788 patent was filed on August 9, 2007, and issued on October 11, 2011.
`
`The ‘788 patent claims priority to a long chain of earlier applications, the earliest of
`
`which is U.S. Application No. 08/476,077, filed on June 7, 1995.
`
`The ‘788 patent is directed to “methods and systems for transmitting a diagnostic
`
`or prognostic message from a . . . vehicle to a remote site.” (‘788 patent, Ex. 1001, 3:6-
`
`8.) The system includes one or more sensors that monitor a plurality of vehicle
`
`components or subsystems and are coupled to or part of a “diagnostic module.” (Id.
`
`3:39-41, 46-47.) The diagnostic module monitors for a “triggering event”, which can
`
`
`
`
`-4-
`
`
`
`

`
`
`
`be (i) the failure of, (ii) the predicted failure of, or (iii) the generation of a fault code in
`
`
`
`connection with the monitored vehicle components or subsystems. (Id. 4:54-56; 62-65.)
`
`In response to the triggering event, a communications unit initiates a wireless
`
`communication between the vehicle and a remote site, the transmission including a
`
`diagnostic or prognostic message about the component or subsystem. (Id. 4:65-5:4.)
`
`Prosecution History of the ‘788 Patent
`B.
`The claims of the ‘788 patent were issued after limited prosecution. (See
`
`generally File History of ‘788 patent, Ex. 1003.) On December 9, 2010, the
`
`Examiner issued the only Office Action rejection, rejecting all pending claims in
`
`view of U.S. Patent No. 6,434,458 to Laguer-Diaz (“Laguer-Diaz”). The Examiner
`
`found that Laguer-Diaz anticipated all pending claims except for claims 17, 20, 27,
`
`and 34, which the Examiner found to be obvious. (Id. at 276-81.)
`
`In response the applicant amended independent claims 16 and 19 to recite
`
`“at least one of a plurality of different components or subsystems,” as opposed to
`
`“at least one component or subsystem.” (Id. at 334.) Two dependent claims were
`
`also amended. The applicant also argued that claims 24, 26-31, and 33-36 were
`
`entitled to the benefit of the June 7, 1995 filing date of U.S. App. No. 08/476,077,
`
`which precedes the date of Laguer-Diaz, and the applicant further argued to
`
`distinguish dependent claims 25 and 32 from Laguer-Diaz. (Id. at 337-38.) On
`
`May 25, 2011, all pending claims were allowed. (Id. at 343.)
`
`
`
`
`-5-
`
`
`
`

`
`
`
`IV.
`
`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b)
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes Review Is
`A.
`Requested
`Inter partes review is requested for claims 1, 2, 3, 4, 5, 6, 7, 13, and 20 of
`
`
`
`the ‘788 patent.
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds On
`B.
`Which The Challenge to the Claims Is Based
`Inter partes review is requested in view of the following prior art references:
`
`• U.S. Patent No. 5,157,610 to Asano et al. (“Asano”) (Ex. 1004). Asano issued
`
`on October 20, 1992, and is therefore prior art under 35 U.S.C. § 102(b).
`
`• KN Fry, “Diesel Locomotive Reliability Improvements by System Monitoring,”
`
`Proceedings of the Institution of Mechanical Engineers, Part F: Journal of Rail and
`
`Rapid Transit (“Fry”) (Ex. 1005). Fry was published on January 1, 1995, and is
`
`therefore prior art under 35 U.S.C. § 102(a).
`
`• U.S. Patent No. 4,675,675 to Corwin et al. (“Corwin”) (Ex. 1006). Corwin
`
`issued on June 23, 1987, and is therefore prior art under 35 U.S.C. § 102(b).
`
`• U.S. Patent No. 5,531,122 to Chatham et al. (“Chatham”) (Ex. 1007). Chatham
`
`was filed on February 28, 1994, and issued on July 2, 1996, and is therefore prior
`
`art under 35 U.S.C. § 102(e).
`
`
`
`
`-6-
`
`
`
`

`
`
`
`• U.S. Patent No. 5,400,018 to Scholl et al. (“Scholl”) (Ex. 1008). Scholl was
`
`
`
`filed on December 22, 1992, and issued on March 21, 1995, and is therefore prior
`
`art under 35 U.S.C. §§ 102(a) and 102(e).
`
`• Japanese Unexamined Patent Application Publication No. JP-A-H01-197145 to
`
`Ishihara et al. (“Ishihara”) (Exs. 1009 and 1010 (English translation)). Ishihara
`
`was published on December 17, 1993, and qualifies as prior art under 35 U.S.C. §
`
`102(b).
`
`The specific statutory grounds on which the challenge to the claims is based
`
`and the patents and printed publications relied upon for each ground are as follows:
`
`‘788 Patent Claims
`Ground
`Ground 1 Claims 1-7
`
`Basis for Challenge
`Anticipated under § 102(b) by Asano
`
`Ground 2 Claims 1, 3, 4, 6, 7
`
`Anticipated under § 102(a) by Fry
`
`Ground 3 Claims 1, 3, 4, 6, 7, 13, 20 Anticipated under § 102(b) by Corwin
`
`Ground 4 Claims 1, 3, 4, 6, 7
`
`Anticipated under § 102(e) by Chatham
`
`Ground 5 Claims 1-7, 13, 20
`
`Anticipated under §§ 102(a) and (e) by
`
`Scholl
`
`Ground 6 Claims 1, 3, 4, 6, 7, 13, 20 Anticipated under § 102(b) by Ishihara
`
`Ground 7 Claims 2, 5
`
`Obvious under § 103(a) by Ishihara in
`
`view of Asano
`
`
`
`
`
`
`-7-
`
`
`
`

`
`
`
`
`
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`C.
`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this
`
`review, Petitioner construes the claim language such that the claims are given their
`
`broadest reasonable interpretation in light of the specification of the ‘788 patent.
`
`For terms not specifically listed and construed below, Petitioner interprets them for
`
`purposes of this review in accordance with their plain and ordinary meaning under
`
`the required broadest reasonable interpretation.
`
`“component” - Claims 1, 3, 4, 6, and 7. In the IPR2013-00417 proceeding,
`
`the Board adopted the construction “a part or an assembly of parts, less than the
`
`whole” for the term “component,” and Petitioner adopts the same. (Institution
`
`Decision, Ex. 1002, at 8-9).
`
`“sensor” - Claims 4 and 7. In the IPR2013-00417 proceeding, the Board
`
`did not set forth an express construction of the term “sensor,” finding that the term
`
`“possesses its ordinary and customary meaning, as would be understood by one of
`
`ordinary skill.” (Id. at 10-11.) However, the Board found that “sensor” includes
`
`each of the sensors particularly identified in the specification of the ‘788 patent.
`
`(Id.) Petitioner adopts the same construction as the Board, and notes that examples
`
`of “sensors” are identified at column 8, lines 25-44 of the ‘788 patent.
`
` “triggering event” - Claims 1, 3, 4, 6, and 7. In the IPR2013-00417
`
`proceeding, the Board adopted the construction “an event that starts or causes
`
`
`
`
`-8-
`
`
`
`

`
`
`
`something to happen” for the term “triggering event,” and Petitioner adopts the
`
`
`
`same. (Id. at 11).
`
`“diagnostic or prognostic message” - Claims 1 and 4. In the IPR2013-
`
`00417 proceeding, the Board adopted the construction “diagnostic or prognostic
`
`information related to actual or potential failure of a component” for the phrase
`
`“diagnostic or prognostic message,” and Petitioner adopts the same. (Id. at 11-12.)
`
`Because the standard for claim construction at the Patent Office is different
`
`than that used during a U.S. district court litigation, see In re Am. Acad. of Sci.
`
`Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner
`
`reserves the right to argue a different claim construction in litigation for any term
`
`of the ‘788 patent as appropriate in that proceeding.
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`D.
`Unpatentable
`
`An explanation of how claims 1, 2, 3, 4, 5, 6, 7, 13, and 20 are unpatentable is set
`
`forth below at Section V.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`An List of Exhibits supporting this Petition is included. Included at Exhibit 1011
`
`is a Declaration of Christopher Wilson under 37 C.F.R. § 1.68. Unless otherwise noted,
`
`citations to page numbers in this Petition are to the page numbers appended to each
`
`page of the exhibits under CFR 42.63(d)(2)(i) and not to any page numbers present in
`
`the original document.
`
`
`
`
`-9-
`
`
`
`

`
`
`
`V.
`
`There Is a Reasonable Likelihood That at Least One Claim of the ‘788
`Patent Is Unpatentable
`A. Ground 1: Claims 1, 2, 3, 4, 5, 6, and 7 are Unpatentable under 35
`U.S.C. § 102(b) as Anticipated by Asano
`
`
`
`Claims 1, 2, 3, 4, 5, 6, and 7 are anticipated by Asano (Ex. 1004). Asano is
`
`listed on the face of the ‘788 patent, but was not relied on or cited by the Examiner
`
`during prosecution. Asano relates to “a system and method for load sharing
`
`processing operations between a vehicle mounted station and a stationary base
`
`station . . . .” (Ex. 1004, 1:7-10.) In the embodiment disclosed in Asano, “the
`
`vehicle-mounted computer makes a basic abnormal diagnosis and transmit[s] the
`
`data to the host computer.” (Id. 9:4-6.) “The host computer then makes more
`
`advanced, comprehensive and appropriate diagnosis . . . .” (Id. 9:6-9.)
`
`Claims 1 and 4
`
`1.
`Claim 1 is directed a “method for providing status data for vehicle
`
`maintenance,” including monitoring for a triggering event relating to a diagnostic
`
`or prognostic analysis of a vehicle component or subsystem, and initiating a
`
`wireless transmission of a diagnostic or prognostic message from a
`
`communications unit on the vehicle and a remote site. Asano discloses each of the
`
`limitations of claim 1. Asano discloses “monitoring for a triggering event on a
`
`vehicle . . . relating to a diagnostic or prognostic analysis of at least one of a
`
`plurality of different components or subsystems,” as claim 1 requires. Asano
`
`discloses that in the “diagnostic mode,” data on the vehicle is monitored “at
`
`-10-
`
`
`
`
`

`
`
`
`predetermined intervals of about 60ms.” (Id. 9:10-13; see also id. 9:50-52 (“[T]he
`
`
`
`vehicle-mounted computer carries out data sampling at every predetermined
`
`interval to detect abnormalities.”) Asano teaches the existence of an abnormality
`
`as a “triggering event.” (See id. 9:13-14. (“A decision on whether any abnormality
`
`exists is made based on the diagnosis results.”); Fig. 6.) The system of Asano
`
`monitors components and subsystems of the vehicle such as “water temperature,
`
`air/fuel ratio, air flow quantity, battery voltage, [etc].” (Id. 3:59-63.)
`
`Asano also discloses “initiating a wireless transmission between [a]
`
`communications unit [on the vehicle] and a remote site . . . in response to the
`
`triggering event, the transmission including a diagnostic or prognostic message,”
`
`as required by claim 1. Asano discloses that “[w]hen an abnormality exists, the
`
`abnormal code is transmitted to the host computer on the dealer side through the
`
`transmitter-receivers 5 and 11.” (Id. 9:15-18; see also id. Fig. 1 (showing
`
`transmitter-receiver 5 on the vehicle communicating with transmitter-receiver 11
`
`on the host computer side); Fig. 6.) The transmission to the host computer
`
`includes “the necessary data including sampling values,” (id. 9:55-59), which,
`
`along with the “abnormal code,” (id. 9:16), is a “diagnostic or prognostic
`
`message.” Asano teaches that the transmission from the vehicle to the host
`
`computer is made “through a telecommunications network,” (id. 5:36-40), and that
`
`
`
`
`-11-
`
`
`
`

`
`
`
`the “telecommunications path 10 . . . may be wired or wireless.” (Id. 5:50-51.)
`
`
`
`Thus, Asano anticipates claim 1, as further detailed in the claim chart below.
`
`Claim 4 is directed to a system for providing status data for vehicle
`
`maintenance, with a diagnostic module arranged to monitor sensor data for a
`
`triggering event, and a wireless communications unit that initiates a wireless
`
`transmission of a diagnostic or prognostic message to a remote site. The
`
`limitations of claim 4 are substantially similar to the limitations of claim 1, and are
`
`disclosed by Asano. The “vehicle mounted station” disclosed in Asano is “a
`
`diagnostic module including at least one sensor for monitoring a plurality of
`
`different components or subsystems,” as required in claim 4. (See id. 2:25-30.)
`
`The “vehicle mounted station” is also “arranged to analyze monitoring data
`
`provided by at least one sensor and detect a triggering event relating to a diagnostic
`
`or prognostic analysis,” as required in claim 4. (See id. 9:50-52; 9:10-14.)
`
` Asano also discloses “a wireless communications unit arranged to interface
`
`with a wireless communications network” as required in claim 4, teaching that
`
`“transmitter-receiver 5” (id. 9:15-18; Fig. 1) transmits data over a
`
`“telecommunications network,” (id. 5:36-40), which may be “wireless.” (Id. 5:50-
`
`51.) Finally, Asano discloses that the “communications unit [is] coupled to [the]
`
`diagnostic module and initiat[es] a wireless transmission between said
`
`communications unit and a remote site in response to the triggering event, the
`
`
`
`
`-12-
`
`
`
`

`
`
`
`transmission including a diagnostic or prognostic message” as required by claim 4.
`
`
`
`(See id. 9:15-18; Fig. 1 (showing transmitter-receiver 5 coupled to vehicle
`
`computer).) Accordingly, Asano anticipates claim 4, as further detailed in the
`
`claim chart below.
`
`‘788 Patent,
`Claim 1
`(1.pre) A method
`for providing status
`data for vehicle
`maintenance,
`comprising:
`
`(1.a) monitoring for
`a triggering event
`on a vehicle having
`a wireless
`communications
`unit, the triggering
`event relating to a
`diagnostic or
`prognostic analysis
`of at least one of a
`plurality of
`different
`components or
`subsystems of the
`vehicle; and
`
`
`
`
`Asano (Ex. 1004)
`
`See, e.g., 2:9-15 (“According to one aspect of this invention there
`is provided a method of load sharing processing operations
`between a vehicle mounted station and a stationary base station
`including the steps of said vehicle mounted station detecting
`operating conditions of the vehicle, transmitting data
`representative of the detected operating conditions to the base
`station . . . .”).
`See, e.g., 3:10-11 (“In a feature of the invention the vehicle
`mounted station is arranged to detect an abnormality … .”);
`3:59-63 (“Advantageously the detecting means is adapted to
`detect at least one of water temperature, air/fuel ration, air flow
`quantity, battery voltage, throttle valve opening angle, engine
`speed, transmission gear position and suspension setting.”);
`8:65-9:14 (“FIG. 6 shows an example of a failure diagnosis . . . .
`This embodiment is based on the concept of having the vehicle-
`mounted computer make a basic abnormal diagnosis and transmit
`the data to the host computer. . . . In step 6a, the diagnostic mode
`starts. This is carried out in parallel with the general program and
`for example, is repetitive at predetermined intervals of about 60
`ms. In step 6b, a decision on whether any abnormality exists is
`made based on the diagnosis results.”);
`9:15-18 (“When an abnormality exists, the abnormal code is
`transmitted to the host computer on the dealer side through
`the transmitter-receivers 5 and 11.”);
`9:46-55 (“FIG. 7 shows an example regarding life prediction or
`failure prediction in accordance with data collected through
`sampling over a long period of time . . . . In step 7a, the vehicle-
`mounted computer carries out data sampling at every
`predetermined interval to detect abnormalities. Detection of
`
`-13-
`
`
`
`

`
`
`
`
`(1.b) initiating a
`wireless
`transmission
`between the
`communications
`unit and a remote
`site separate and
`apart from the
`vehicle in response
`to the triggering
`event, the
`transmission
`including a
`diagnostic or
`prognostic message
`about the at least
`one component or
`subsystem.
`
`
`
`abnormalities in this case is a very simple detection of
`abnormalities and a high-level failure diagnosis is carried out by
`the host computer.”).
`See also Figs. 6 and 7.
`See, e.g., 2:14-15 (“. . . transmitting data representative of the
`detected operating conditions to the base station . . . .”);
`3:10-13 (“In a feature of the invention the vehicle mounted
`station is arranged to detect an abnormality and to transmit
`data indicative thereof to said base station . . . .”);
`5:36-40 (“[I]nformation is transmitted between a vehicle and
`a host computer located, for example, at a stationary, ground
`based dealership location through a telecommunications
`network.”);
`5:46-54 (“A transmitter-receiver 5 for transmitting and/or
`receiving information to and from the host computer 18 is
`provided within processor 105. A telecommunication path 10
`which may be wired or wireless, e.g. a radio link
`interconnects the vehicle side located processor 105 with a
`stationary host computer station 25 including a transmitter-
`receiver 11 on the host computer station side of the path.”);
`9:15-18 (“When an abnormality exists, the abnormal code is
`transmitted to the host computer on the dealer side through
`the transmitter-receivers 5 and 11.”);
`9:55-59 (“In step 7b, an existence of abnormalities is
`confirmed and in step 7c, the vehicle-mounted computer
`transmits the necessary data including sampling values to the
`host computer through the transmitter-receivers 5, 11 and
`completes the flow process.”).
`See also Figs. 1 (showing “communication path” between
`“vehicle” and “host computer”), 6, 7
`
`
`‘788 Patent, Claim 4
`(4.pre) A system for providing status data for
`vehicle maintenance, comprising:
`
`Asano (Ex. 1004)
`See, e.g., 3:34-42 (“[T]here is
`provided a system for load sharing
`processing operations between a
`vehicle mounted station and a
`stationary base station, said vehicle
`mounted station including
`
`
`
`
`-14-
`
`
`
`

`
`
`
`
`(4.a) a diagnostic module including at least one
`sensor for monitoring a plurality of different
`components or subsystems of the vehicle, said
`diagnostic module being arranged to analyze
`monitoring data provided by said at least one
`sensor and detect a triggering event relating to a
`diagnostic or prognostic analysis of at least one
`of the plurality of different components or
`subsystems of the vehicle; and
`
`(4.b) a wireless communications unit arranged to
`interface with a wireless communications
`network, said communications unit being
`coupled to said diagnostic module and initiating a
`wireless transmission between said
`communications unit and a remote site separate
`and apart from the vehicle in response to the
`triggering event, the transmission including a
`diagnostic or prognostic message about the at
`least one component or subsystem.
`
`
`
`detecting means for detecting
`operating conditions of the vehicle,
`first transmitting means for
`transmitting data representative of
`the detected operating conditions to
`the base station … .”).
`See, e.g., discussion and disclosure
`above for claim (1.a) in the above
`claim chart, particularly, 3:10-11;
`3:59-63; 8:65-9:14; 9:15-18; 9:46-
`55; Figs. 6 and 7.
`
`See, e.g., discussion and disclosure
`above for claim (1.b) in the above
`claim chart, particularly, 2:14-15;
`3:10-13; 5:36-40; 5:46-54; 9:15-
`18; 9:55-59; Figs. 1, 6, and 7.
`
`
`
`Claims 2, 3, 5, 6, and 7
`
`2.
`Claim 2 is dependent upon independent claim 1, and Claim 5 is dependent
`
`upon independent claim 4. Claim 2 and Claim 5 each require that “the remote site
`
`is a dealer of the vehicle.” Asano anticipates claims 2 and 5, disclosing the
`
`“information is transmitted between a vehicle and a host computer located, for
`
`
`
`
`-15-
`
`
`
`

`
`
`
`example, at a stationary, ground based dealership location . . . .” (Id. 5:36-40; see
`
`
`
`also id. 5:60-63.)
`
`Claim 3 is dependent upon claim independent 1, and Claim 6 is dependent
`
`upon independent claim 4. Claims 3 and 6 each require that the “triggering event
`
`is a failure, predicted failure or fault code generation” of the monitored component
`
`or subsystem. Asano anticipates claims 3 and 6 because it discloses that the
`
`“vehicle-mounted computer carries out . . . computations for a failure diagnosis . . .
`
`.” (Id. 8:67-9:3.) Asano discloses that “a decision on whether any abnormality
`
`exists is made based on the diagnosis results.” (Id. 9:13-14.) “When an
`
`abnormality exists, the abnormal code is transmitted to the host computer on the
`
`dealer side.” (Id. 9:15-17.) Asano’s generation of an “abnormal code” is a “fault
`
`code generation” required in the claims. (See also id. Fig. 6 (showing “diagnostic
`
`mode” and “abnormality code”).)
`
`Claim 7 is dependent upon claim 1, and requires that “the step of monitoring
`
`for the triggering event comprises providing at least one sensor th