Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 8
`Entered: September 29, 2014
`
`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.
`____________
`
`Case IPR2014-00629
`Patent 8,036,788 B2
`
`____________
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 8
`Entered: September 29, 2014
`
`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.
`____________
`
`Case IPR2014-00629
`Patent 8,036,788 B2
`
`____________
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`I. INTRODUCTION
`On April 15, 2014, American Honda Motor Co., Inc. (“Honda”) filed
`a Petition requesting an inter partes review of claims 1-7, 13, and 20 of U.S.
`Patent No. 8,036,788 B2 (Ex. 1001, “the ’788 patent”). Paper 1 (“Pet.”).
`The Patent Owner, American Vehicular Sciences LLC (“AVS”) filed a
`limited Preliminary Response, waiving its right to submit substantive
`arguments on patentability. Paper 6, 2 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD.– The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of Honda’s Petition and AVS’s Preliminary
`Response, we determine that the information presented in the Petition
`establishes that there is a reasonable likelihood that Honda would prevail in
`showing the unpatentability of claims 1–7, 13, and 20 of the ’788 patent.
`Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter partes review
`for claims 1-7, 13, and 20 of the ’788 patent.
`A. Related Proceedings
`AVS has asserted the ’788 patent against Honda in the following co-
`pending district court case: Am. Vehicular Sciences. LLC v. American Honda
`
`
`
`
`2
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`Motor Co., Inc., No. 6:13-cv-00226 (E.D. Tex.).1 We previously instituted
`an inter partes review of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and 18 of the
`’788 patent in Toyota Motor Corp. v. American Vehicular Scis. LLC, Case
`IPR2013-00417 (the “’417 IPR”).
`B. The ’788 Patent Disclosure
`The ’788 patent discloses a system and a method for monitoring the
`condition of a vehicle. Ex. 1001, 3:35–38; 4:1–14. Sensors monitor
`components of the vehicle and are connected to a diagnostic module. Id. at
`3:39–41, 46–47. The diagnostic module determines an actual or potential
`failure of the component or subsystem. Id. at 3:49-50. The diagnostic
`module controls a communications unit, which communicates through a
`wireless communications network with a remote site. Id. at 3:38–39, 48.
`The remote site is any site or location interested in receiving
`information about the diagnostic or prognostic status of the components of
`the vehicle. Id. at 3:53–56. The ’788 patent describes diagnostics as
`generally determining the present condition of the component. Id. at 7:41–
`42. The ’788 patent describes prognostics as determining when a
`component will fail. Id. at 7:45-46.
`The method described collects status data for vehicle maintenance and
`monitors a triggering event on a vehicle. Ex. 1001, 4:42–49. The triggering
`event relates to a diagnostic or prognostic analysis of at least one component
`or subsystem of the vehicle. Id. The triggering event initiates a transmission
`between the communications unit and a remote site. Id. The transmission
`includes a diagnostic or prognostic message about the component or
`
`1 Honda states that the ’788 patent is the subject of three other pending
`lawsuits and another that was dismissed with prejudice. Pet. 58-59. None of
`the other lawsuits name Honda as a defendant. Id.
`
`3
`
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`subsystem, e.g., a message about a failure, predicted failure, or fault code
`generation of the component or subsystem. Id.
`Figure 3 of the ’788 patent is reproduced below:
`
`
`Figure 3 is a schematic of a vehicle illustrating a total diagnostic
`system utilizing the diagnostic module. Ex. 1001, 20:32–36. The sensors
`shown in Figure 3 are mounted on components within the engine of the
`vehicle including, among other sensors, the following: microphone 2,
`coolant thermometer 3, oil pressure sensor 4, oil level sensor 5, air flow
`meter 6, voltmeter 7, ammeter 8, engine knock sensor 10, oil turbidity sensor
`11, throttle position sensor 12, oxygen sensor 17, transmission fluid level
`sensor 25, coolant level sensor 27, transmission fluid turbidity sensor 28,
`brake pressure sensor 29, and coolant pressure sensor 30. Id. at Figs. 3, 4;
`20:59–21:10.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`
`Figure 20C of the ’788 patent is reproduced below:
`
`
`Figure 20C is a block diagram showing a general system for obtaining
`information about a vehicle or vehicle component. Ex. 1001, 54:26–27.
`Control system 628 is coupled to and controls antenna array 622, enabling
`reception of return signals from sensors 627. Id. at 54:40–43. The
`information is directed to display/telematics/adjustment unit 629 where the
`information can be displayed on display 629 to the driver, sent to a remote
`location for analysis via a telematics unit 629, and/or used to control or
`adjust a component on, in, or near the vehicle. Id. at 54:61–66.
`C. Exemplary Claims
`Independent claims 1 and 4 are challenged by Honda. Each of claims
`2, 3, 7, and 13 depends directly from claim 1, and each of claims 5, 6, and 20
`depends directly from claim 4. Claims 1 and 4 are reproduced below:
`1. A method for providing status data for vehicle maintenance,
`comprising:
`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
`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
`
`
`
`
`5
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`including a diagnostic or prognostic message about the at least
`one component or subsystem.
`
`Ex. 1001, 96:2-13.
`
`4. A system for providing status data for vehicle maintenance,
`comprising:
`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
`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.
`
`Ex. 1001, 96:19–36.
`
`
`6
`
`D. Prior Art Relied Upon
`
`Honda relies upon the following prior art references:
`
`Reference
`Asano
`Fry2
`
`Description
`US 5,157,610
`Diesel Locomotive
`Reliability Improvements by
`
`2 The copy of Fry, as submitted by Honda, includes an added cover sheet
`from the publisher, noting that the version of record is dated January 1,
`1995. Ex. 1005, 1.
`
`
`
`Exhibit No.
`Prior Art Date
`Oct. 20, 1992 Ex. 1004
`Jan. 1, 1995
`Ex. 1005
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`Reference
`
`Description
`System Monitoring, 209
`Proc. Inst. of Mechanical
`Engineers, Part F: J. of Rail
`& Rapid Transit 1 (1995)
`US 4,675,675
`Corwin
`Chatham US 5,532,122
`Scholl
`US 5,400,017
`Ishihara
`Japanese Patent App. Pub.
`No. H01-197145
`
`
`
`Prior Art Date
`
`Exhibit No.
`
`Jun. 23, 1987 Ex. 1006
`Jul. 2, 1996
`Ex. 1007
`Mar. 21, 1995 Ex. 1008
`Dec. 17, 1993 Ex. 10103
`
`1-7
`
`E. The Alleged Grounds of Unpatentability
`Honda alleges the following grounds for unpatentability.
`Claims
`Basis
`Reference(s)
`§ 102 (b)
`Asano
`
`§ 102 (a)
`1, 3, 4, 6, and 7
`1, 3, 4, 6, 7, 13, and 20 § 102 (b)
`1, 3, 4, 6, and 7
`§ 102 (e)
`1-7, 13, and 20
`§ 102 (a) and (e)
`1, 3, 4, 6, 7, 13, and 20 § 102 (b)
`2 and 5
`§ 103 (a)
`
`Fry
`Corwin
`Chatham
`Scholl
`Ishihara
`Ishihara and
`Asano
`
`
`
`
`3 All citations in this Decision to “Ishihara” are to the English translation
`(Ex. 1010) of the Japanese Unexamined Patent Application (Ex. 1009).
`
`7
`
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`II. ANALYSIS
`A. Claim Construction
`Principles of Law
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012). The terms also are given their ordinary and customary meaning as
`would be understood by one of ordinary skill in the art in the context of the
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). For an inventor to act as his or her own lexicographer, the definition
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998).
`An extraneous limitation should not be read into the claims from the
`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`whose presence in a claim is unnecessary for the purpose of making sense of
`the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994);
`Renishaw PLC, 158 F.3d at 1249. The construction that stays true to the
`claim language and most naturally aligns with the inventor’s description is
`likely the correct interpretation. See Renishaw PLC, 158 F.3d at 1250.
`“Comprising” is a term of art used in claim language, which means
`that the named elements are essential, but other elements also may be
`included to constitute additional components within the scope of the claim.
`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
`
`
`
`
`8
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`Honda adopts as its proposed constructions our prior claim
`constructions from the ’417 IPR. Pet. 8-9. AVS’s Preliminary Response
`takes no position on claim construction. The terms and their constructions
`are listed below.
`“component/components” (claims 1, 3, 4, 6, and 7)
`The term “components” is recited, for example, in claim 1:
`“monitoring a triggering event . . . relating to a diagnostic or prognostic
`analysis of at least one of a plurality of different components or subsystems
`of the vehicle” (emphasis added).
`The specification of the ‘788 patent describes the term “component”
`
`as:
`
`generally refers to any part or assembly of parts which is
`mounted to or a part of a motor vehicle and which is capable of
`emitting a signal representative of its operating state. Ex.1001,
`8:5-8.
`
`The specification does not propose a new meaning for the term
`“component” different from the ordinary and customary meaning as would
`be understood by one with ordinary skill in the art. Also, the above-quoted
`language does not appear to be in the form of a definition. Rather, the text is
`a portion of the description of preferred embodiments, and uses the words
`“refers to” after the term “component.” The evidence falls short of that
`standard required for recognizing a new definition, i.e., reasonable clarity,
`deliberateness, and precision. Accordingly, we do not regard the above-
`quoted text as setting forth a special definition for the term “component.”
`Instead, the text describes how components operate and interact with other
`elements in an operative environment.
`
`
`
`
`9
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`Thus, we construe “component” as any part or assembly of parts
`which is less than the whole. Based on the term itself, “component” does
`not have to relate to a motor vehicle; nor does it have to be capable of
`emitting a signal representative of its operating state, whatever that means.
`“sensor” (claims 4 and 7)
`The term sensor is recited, for example, in claim 4: “a diagnostic
`module including at least one sensor for monitoring a plurality of different
`components or subsystems of the vehicle” (emphasis added).
`The specification of the ’788 patent describes the term “sensor” as:
`generally refers to any measuring, detecting or sensing device
`mounted on a vehicle or any of its components including new
`sensors mounted in conjunction with the diagnostic module in
`accordance with the invention.” Ex.1001, 8:19-24.
`
`The specification does not propose a new meaning for the term
`“sensor” different from the ordinary and customary meaning as would be
`understood by one with ordinary skill in the art. The above-referenced
`excerpt does not give one of ordinary skill adequate notice of a change in the
`meaning of a common term or intent to redefine the term. See In re Paulsen,
`30 F.3d at 1480. Also, the text is in a portion of the description of preferred
`embodiments and uses the words “refers to,” which are followed by a
`“partial non-exhaustive list” of more than forty exemplary automobile or
`truck sensors.
`We do not regard the above-quoted text as setting forth a special
`definition for “sensor.” “Sensor” possesses its ordinary and customary
`meaning as would be understood by one with ordinary skill, and does not
`require an express construction. “Sensor” includes each of the sensors
`particularly identified in the specification of the ’788 patent.
`
`
`
`
`10
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`
`“triggering event” (claims 1, 3, 4, 6, and 7)
`The term “triggering event” is recited in claim 1, which states in
`pertinent part: “monitoring for a triggering event on a vehicle having a
`wireless communications unit, the triggering event relating to a diagnostic or
`prognostic analysis” (emphasis added).
`The ’788 patent describes a triggering event as “a failure, predicted
`failure or fault code generation of the component or subsystem.” Ex. 1001,
`4:54-57. In the context of the claim language this description is consistent
`with the ordinary meaning of “triggering event.” “Triggering event” means
`“an event that starts or causes something to happen.”
`“diagnostic or prognostic message” (claims 1 and 4)
`The term “diagnostic or prognostic message” is recited in claim 1,
`which states in pertinent part: “the transmission including a diagnostic or
`prognostic message about the at least one component or subsystem”
`(emphasis added).
`The specification of the ’788 patent states the following:
`Generating diagnostic or prognostic information about the
`component or subsystem may entail determining whether the
`component or subsystem is about to fail. In this case, the
`transmission of diagnostic or prognostic messages from the
`communications unit is a transmission of an indication of the
`actual potential failure of the component or subsystem. Ex.
`1001, 4:15-20.
`
` Thus, we construe “diagnostic or prognostic message” to mean
`“diagnostic or prognostic information related to actual or potential failure of
`a component.”
`
`
`
`
`
`11
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`B. Anticipation by Asano
`Honda contends that claims 1–7 of the ’788 patent are unpatentable as
`anticipated under 35 U.S.C. § 102(b) by Asano. Pet. 10–17. For the reasons
`discussed below, we are persuaded that Honda has made a sufficient
`showing that there is a reasonable likelihood that it would prevail with
`respect to claims 1–7 on the ground that those claims are anticipated by
`Asano.
`
`Asano
`Asano discloses a vehicle-mounted computer, an embodiment of
`which is illustrated in Figure 2 of Asano, reproduced below:
`
`
`As shown in Figure 2, computer 105 has central processing unit
`(CPU) 7 that receives operating signals from sensors by way of bus line 30,
`to which multiplexer 36 and analog to digital conversion circuitry 38 and 52
`are connected. Ex. 1003, 6:14–28. Sensors, including engine cooling water
`temperature sensor (TWS) 32 and air/fuel ratio sensor (O2S) 34, sense the
`
`12
`
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`engine operating conditions. Id. CPU 7 carries out computations based on
`the engine operating conditions. Id. at 6:43–47. Additionally, CPU 7 is
`connected to display 90 to display instructions to the driver. Id. at 6:67–68.
`Asano provides further disclosure of failure diagnosis on a vehicle, an
`embodiment of which is illustrated in Figure 6 of Asano, reproduced below:
`
`
`Figure 6 illustrates a functional block diagram of failure diagnosis
`processing. Ex. 1003, 5:23. Computations for failure diagnosis are carried
`out at predetermined intervals. Id. at 9:1–3. The period of each interval can
`be about 60 milliseconds. Id. at 9:10–13. At step 6a, shown in Figure 6, a
`diagnostic mode starts onboard the vehicle. Id. at 9:10. Next, in step 6b, a
`decision is made on the vehicle as to whether an abnormality exists based on
`the results of the diagnosis. Id. at 9:13–14. If no abnormality exists, the
`process ends. Id. at 9:14–15. When a decision is made at step 6b, on the
`vehicle side, that an abnormality exists, then an abnormality code is
`
`
`
`
`13
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`transmitted through transmitter-receiver 5, in step 6n, to the host computer at
`the dealer side. Id. at 9:15–18; Fig. 6.
`Claims 1–7
`We have reviewed the evidence and arguments submitted by Honda at
`pages 10–17 of the Petition and the testimony of Christopher Wilson (Ex.
`1011). Ex. 1011 ¶ 37. We are persuaded that the submission establishes a
`reasonable likelihood that Honda would demonstrate the unpatentability of
`claims 1–7 as anticipated by Asano.
`For example, method claim 1 recites monitoring “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.” Independent system
`claim 4 recites a similar limitation, i.e., “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.” Asano discloses a diagnostic
`mode using “data indicative of the condition of other control subjects.”
`Ex. 1004, 9:6–10. The diagnostic mode is carried out “at predetermined
`intervals of about 60ms.” Id. at 9:10–13. “A decision on whether any
`abnormality exists is made based on the diagnosis results.” Id. at 9:13–14;
`Fig. 6. Claim 1 further requires, a “transmission including a diagnostic or
`prognostic message about the at least one component or subsystem” is made
`to a “remote site.” Asano also discloses this limitation. Id. at 9:15–18;
`Fig. 1.
`
`Anticipation by Corwin
`C.
`Honda contends that claims 1, 3, 4, 6, 7, 13, and 20 are unpatentable
`as anticipated, under 35 U.S.C. § 102(b), by Corwin. Pet. 29–35. For the
`reasons discussed below, we are persuaded that Honda has made a sufficient
`
`
`
`
`14
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`showing that there is a reasonable likelihood that it would prevail with
`respect to claims 1, 3, 4, 6, 7, 13, and 20 on the ground that those claims are
`anticipated by Corwin.
`
`Corwin
`Corwin describes monitoring aircraft components during flight and
`supplying the data to an Automatic Fault Reporting System (AFRS) when
`failures are detected. Ex. 1006, 5:40–45; 7:8–9; Abstract. Inputs to AFRS
`are received from “various equipment” on the aircraft via the aircraft wiring.
`Id. at 7:68–8:2. AFRS implements signal processing of fault related data on
`board the operational aircraft. Id. at Abstract. AFRS detects a fault
`condition, determines a most likely cause and assigns a fault code. Id. at
`2:43–57. Failure outputs are provided to ground personnel when faults or
`excessive differences are detected. Id. at 7:28–32; 8:2–4; Abstract.
`Claims 1, 3, 4, 6, 7, 13, and 20
`We have reviewed the evidence and arguments submitted by Honda at
`pages 29–35 of the Petition and the testimony of Christopher Wilson (Ex.
`1011). Ex. 1011 ¶ 39. We are persuaded that the submission establishes a
`reasonable likelihood that Honda would demonstrate the unpatentability of
`claims 1, 3, 4, 6, 7, 13, and 20 as anticipated by Corwin.
`For example, method claim 1 recites, in pertinent part, “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.” Corwin discloses an “Automatic Fault Reporting System” or
`AFRS, that “monitor[s] and compares outputs from various aircraft
`electronic units.” Ex. 1006, 7:28–29. The AFRS detects faults based on
`“programmed fault conditions” and every system is monitored for faults.
`
`
`
`
`15
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`Id. at 2:51–54; 7:49–50. Claim 1 further recites that a “transmission
`including a diagnostic or prognostic message about the at least one
`component or subsystem” is made to a “remote site.” Corwin also discloses
`this limitation. See id. at 3:44–48; 2:55–57; 10:9–23.
`Claims 13 and 20 both depend from claim 1 and each require that “the
`remote site is a repair or service facility for the vehicle.” Corwin discloses
`fault codes and information regarding failures is transmitted to “ground
`based maintenance operations.” Id. at 5:41–45. The information is used by
`the ground maintenance to acquire parts and scheduling. Id. at 5:52–55.
`D. Anticipation by Ishihara
`Honda contends that claims 1, 3, 4, 6, 7, 13, and 20 are unpatentable
`as anticipated, under 35 U.S.C. § 102(b), by Ishihara. Pet. 51-55. For the
`reasons discussed below, we are persuaded that Honda has made a sufficient
`showing that there is a reasonable likelihood that it would prevail with
`respect to claims 1, 3, 4, 6, 7, 13, and 20 on the ground that those claims are
`anticipated by Ishihara.
`
`Ishihara
`Ishihara discloses a failure diagnosis apparatus for a vehicle. Ex.
`1010, p. 1, col. 1. The diagnosis apparatus receives instructions from a
`failure diagnosis station outside of the vehicle and includes a display which
`shows only those with failures having a high significance. Id.
`
`
`
`
`
`
`
`
`
`16
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`Figure 1 of Ishihara is shown below:
`
`
`
`
`Figure 1 shows on-board failure diagnosis apparatus 2 and failure
`diagnosis station 3 that is outside of vehicle. On-board apparatus 2 includes
`control unit 4 that controls various devices or systems on-board and detects
`failures of those systems. Ex. 1010, p. 2, col. 2. Display apparatus 5 is
`connected to the control unit 4. Id. Communication control unit 6 controls
`communication between control unit 4 and failure diagnosis station 3. Id.
`Figure 2 of Ishihara is reproduced below:
`
`
`
`
`17
`
`
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`Figure 2 is a block diagram showing, among other things, sensors 11,
`12, 13, and 14. The sensors detect vehicle speed and other engine
`conditions. Ex. 1010, p. 2, col. 2. The output of sensors 11, 12, 13, and 14
`is input to computer 16 in the control unit 4 via input processing circuit 15.
`Id. Computer 16 includes control section 16a and a failure detection section
`16b. Ex. 1010, p. 3, col. 1. Control section 16a outputs control signals
`controlling operation of the automatic transmission. Id. The failure
`detection section 16b determines whether or not abnormality exists in the
`input signals from each of the above sensors and the control signals in light
`of data or a program saved in memory 17 of computer 16. Id.
`Upon occurrence of a failure, a diagnosis unit detects the failure and a
`transmitting unit transmits an output signal to the off vehicle failure
`diagnosis station. Ex. 1010, p. 2, col. 1. At failure diagnosis station 3 the
`failure is categorized. Id. For a predetermined abnormality, warning lamp
`22 is turned on via output processing circuit 21 at the time of its occurrence.
`Id.
`
`Claims 1, 3, 4, 6, 7, 13, and 20
`We have reviewed the evidence and arguments submitted by Honda at
`pages 51–55 of the Petition and the testimony of Christopher Wilson (Ex.
`1011). Ex. 1011 ¶¶ 49-56. We are persuaded that the submission
`establishes a reasonable likelihood that Honda would demonstrate the
`unpatentability of claims 1, 3, 4, 6, 7, 13, and 20 as anticipated by Ishihara.
`For example, method claim 1 recites, in pertinent part: “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.” Ishihara discloses that “on-board apparatus” includes a control
`
`
`
`
`18
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`unit that detects failure of various devices. Ex. 1010, p. 2, col. 2. Ishihara
`further discloses that the control unit includes computer 16, which “is
`configured to include a control section 16a and a failure detection section
`16b.” Id. at p. 3, col. 1. “The failure detection section 16b determines
`whether or not abnormality exists” in signals received from various
`“sensors.” Id. Claim 1 further requires, a “transmission including a
`diagnostic or prognostic message about the at least one component or
`subsystem” is made to a “remote site.” Ishihara also discloses this
`limitation. Id. at p. 2, col. 2; Fig. 1.
`Claims 13 and 20 both depend from claim 1 and each require that “the
`remote site is a repair or service facility for the vehicle.” Ishihara discloses
`“communication between the control unit 4 and the failure diagnosis
`station 3 outside the vehicle.” Id. at p. 2, col. 2; Fig, 1.
`E. Obviousness Based on Ishihara and Asano
`Honda contends that claims 2 and 5 of the ’788 patent are
`unpatentable as obvious under 35 U.S.C. § 103(a) over Ishihara and Asano.
`Pet. 56–58. For the reasons discussed below, we are persuaded that Honda
`has made a sufficient showing that there is a reasonable likelihood that it
`would prevail with respect to claims 2 and 5 on the ground that those claims
`would have been obvious over Ishihara and Asano.
`Claims 2 and 5
`Claim 2 and claim 5 depend from claims 1 and 4, respectively.
`Claims 2 and 5 recite as an additional limitation that “the remote site is a
`dealer of the vehicle.” As discussed above, Ishihara discloses all the
`limitations of claims 1 and 4. Honda acknowledges Ishihara does not teach
`
`
`
`
`19
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`that the remote site is a “dealer of the vehicle.” Pet. 56. Asano is cited for
`the missing limitation. Id. (citing Ex. 1004, 5:36–40).
`Honda alleges that as of the priority date claimed, June 1995, it “was
`well-known in the art that vehicle dealers often included service facilities
`performed many, if not more, of the same services and activities relating to
`vehicle repair and maintenance as performed by standalone service shops.”
`Id. (citing Ex. 1011 ¶ 61). Thus, on this record, we are persuaded Honda has
`made a sufficient showing that it would have been obvious to one of
`ordinary skill to implement Ishihara’s failure diagnosis apparatus such that it
`would transmit wirelessly from “the vehicle to a dealer in addition to, or in
`lieu of, a service shop.” Id. at 56-57 (citing Ex. 1011 ¶ 45). Honda has
`demonstrated a reasonable likelihood of prevailing in establishing that
`claims 2 and 5 would have been obvious over Ishihara and Asano.
`F. Anticipation by Fry
`Honda contends that claims 1, 3, 4, 6, and 7 are unpatentable as
`anticipated under 35 U.S.C. § 102(a) by Fry. Pet. 20–29. We have reviewed
`Honda’s arguments that Fry is not redundant of other asserted grounds. Pet.
`28–29. We are not persuaded and conclude that this asserted ground is
`redundant in light of the grounds on the basis of which we have instituted
`review for the same claims. We, therefore, exercise our discretion not to
`authorize inter partes review on this ground. See 37 C.F.R. § 42.108(a).
`G. Anticipation by Chatham
`Honda contends that claims 1, 3, 4, 6, and 7 are unpatentable as
`anticipated under 35 U.S.C. § 102(e) by Chatham. Pet. 37–43. We have
`reviewed Honda’s arguments that Chatham is not redundant of other
`asserted grounds. Pet. 43–45. We are not persuaded and conclude that this
`
`
`
`
`20
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`asserted ground is redundant in light of the grounds on the basis of which we
`have instituted review for the same claims. We, therefore, exercise our
`discretion not to authorize inter partes review on this ground. See 37 C.F.R.
`§ 42.108(a).
`
`H. Anticipation by Scholl
`Honda contends that claims 1–7, 13, and 20 are unpatentable as
`anticipated under 35 U.S.C. § 102(a) and (e) by Scholl. Pet. 45-49. We
`have reviewed Honda’s arguments that Scholl is not redundant of other
`asserted grounds. Pet. 49–51. We are not persuaded and conclude that this
`asserted ground is redundant in light of the grounds on the basis of which we
`have instituted review for the same claims. We, therefore, exercise our
`discretion not to authorize inter partes review on this ground. See 37 C.F.R.
`§ 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Honda
`would prevail in showing the unpatentability of claims 1–7, 13, and 20 of the
`’788 patent. The Board has not made a final determination of the
`patentability of any challenged claim.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
`the ’788 patent is hereby instituted as to claims 1-7, 13, and 20 on the
`following grounds:
`1. Claims 1–7 under 35 U.S.C. § 102(b) as anticipated by Asano;
`and
`
`
`
`
`21
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`
`2. Claims 1, 3, 4, 6, 7, 13, and 20 under 35 U.S.C. § 102(b) as
`anticipated by Corwin;
`3. Claims 1, 3, 4, 6, 7, 13, and 20 under 35 U.S.C. § 102(b) as
`anticipated by Ishihara;
`4. Claims 2 and 5 under 35 U.S.C. § 103 as obvious over Ishihara
`and Asano;
`
`FURTHER ORDERED that no ground other than those specifically
`granted above is authorized for inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`grounds of unpatentability authorized above; the trial commences on the
`entry date of this decision.
`
`
`
`
`
`
`
`
`
`
`
`
`22
`
`
`
`IPR2014-00629
`Patent 8,036,788 B2
`
`For PETITIONER:
`
`Joseph Melnik
`Joseph M. Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`
`For PATENT OWNER:
`
`Scott P. McBride
`Thomas J. Wimbiscus
`Stephanie F. Samz
`MCANDREWS HELD & MALLOY, LTD.
`smcbride@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`ssamz@mcandrews-ip.com
`
`
`
`
`
`
`
`
`23
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
