Trials@uspto.gov
`Tel: 571-272-7822
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`
`Paper 8
`Entered: August 26, 2014
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`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 IPR2014-00634
`Patent 6,738,697 B2
`
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 8
`Entered: August 26, 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 IPR2014-00634
`Patent 6,738,697 B2
`
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00634
`Patent 6,738,697 B2
`
`
`INTRODUCTION
`
`On April 15, 2014, American Honda Motor Co., Inc. (“Honda”) filed
`
`a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1, 2,
`
`5, 6, 10, 17–22, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697 B2 (Ex.
`
`1001, “the ’697 patent”). American Vehicular Sciences LLC (“AVS”)
`
`waived the filing of a Preliminary Response on July 22, 2014. Paper 7. 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, we determine that Honda has
`
`established a reasonable likelihood that it would prevail in showing the
`
`unpatentability of each of claims 1, 2, 5, 6, 10, 17–22, 26, 27, 32, 40, and 61
`
`of the ’697 patent. Accordingly, pursuant to 35 U.S.C. § 314, we institute an
`
`inter partes review as to claims 1, 2, 5, 6, 10, 17–22, 26, 27, 32, 40, and 61
`
`of the ’697 patent.
`
`A. Related Proceedings
`
`
`
`Honda indicates that the ’697 patent has been asserted by AVS in
`
`district court cases including: (1) American Vehicular Sciences LLC v.
`
`Toyota Motor Corp., et al., No. 6:13-cv-00405 (E.D. Tex.); and (2)
`
`American Vehicular Sciences LLC v. American Honda Motor Co., Inc. et.
`
`al., No. 6:13-cv-00226 (E.D. Tex.). The ’697 patent also is the involved
`
`2
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`Case IPR2014-00634
`Patent 6,738,697 B2
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`patent in these inter partes review proceedings before the Board: Case
`
`IPR2013-00412; Case IPR2013-00413; and Case IPR2014-00645.
`
`B. The ’697 Patent Disclosure
`
`
`
`The disclosed invention of the ’697 patent is directed to a vehicle
`
`diagnostic system that diagnoses the state of a vehicle or the state of a
`
`component of the vehicle, and generates an output indicative or
`
`representative of that diagnosed state. Ex. 1001, Abstract. A
`
`communications device transmits that output to a remote location, possibly
`
`via a satellite or the Internet. Ex. 1001, Abstract. In that regard, the
`
`specification further states:
`
`Transmission of the output to a remote location may entail
`arranging a communications device comprising a cellular
`telephone system including an antenna on the vehicle. The
`output may be to a satellite for transmission from the satellite to
`the remote location. The output could also be transmitted via
`the Internet to a web site or host computer associated with the
`remote location.
`
`Ex. 1001, 14:20–26.
`
`
`
`The Field of the Invention portion of the disclosure states that the
`
`invention relates to methods and apparatus for diagnosing components in a
`
`vehicle and transmitting data relating to the diagnosis, and other information
`
`relating to the operating conditions of the vehicle, to one or more remote
`
`locations via a telematics link. Ex. 1001, 1:37–42. The Objects of the
`
`Invention portion of the disclosure states that it is an object of the invention
`
`to provide a new and improved method and system for diagnosing
`
`components in a vehicle and the operating status of the vehicle, and for
`
`alerting the vehicle’s dealer, or another repair facility, via a telematics link,
`
`
`
`
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`3
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`Case IPR2014-00634
`Patent 6,738,697 B2
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`that a component of the vehicle is functioning abnormally and may be in
`
`danger of failing. Ex. 1001, 11:26–31.
`
`C. Exemplary Claims
`
`
`
`Of the challenged claims 1, 2, 5, 6, 10, 17–22, 26, 27, 32, 40, and 61,
`
`only claims 1 and 21 are independent claims. Claims 2, 5, 6, 10, and 17–20
`
`each depend, directly or indirectly, from claim 1, and claims 26, 27, 32, 40,
`
`and 61 each depend, directly or indirectly, from claim 21. Claims 1 and 21
`
`are reproduced below:
`
`1.
`
`A vehicle, comprising:
`
`
`
`a diagnostic system arranged on the vehicle to diagnose
`the state of the vehicle or the state of a component of the
`vehicle and generate an output indicative or representative
`thereof; and
`
`
`
`a communication device coupled to said diagnostic
`system
`and
`arranged
`to
`automatically
`establish
`a
`communications channel between the vehicle and a remote
`facility without manual intervention and wirelessly transmit the
`output of said diagnostic system to the remote facility.
`
`
`21. A method for monitoring a vehicle, comprising the steps
`of:
`
`
`diagnosing the state of the vehicle or the state of a
`
`component of the vehicle by means of a diagnostic system
`arranged on the vehicle;
`
`
`
`generating an output indicative or representative of the
`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle; and
`
`4
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`Case IPR2014-00634
`Patent 6,738,697 B2
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`transmitting the output indicative or representative of the
`
`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle from the vehicle to a remote location.
`
`Ex. 1001, 85:16–26, 86:52–63.
`
`Ex. No.
`
`D. Prior Art Relied Upon
`
`
`Name
`
`Reference
`
`Ishihara
`
`Japanese Published Application
`H01-197145
`
`
`
`English Translation of Ishihara
`
`Schricker U.S. Patent No. 5,561,610
`
`Mansell U.S. Patent No. 5,223,844
`
`Asano
`
`U.S. Patent No. 5,157,610
`
`DiLullo U.S. Patent No. 4,897,642
`
`Fry1
`
`Diesel Locomotive Reliability
`Improvements by System Monitoring,
`209 PROC. INST. OF MECHANICAL
`ENGINEERS, PART F: J. OF RAIL &
`RAPID TRANSIT 1 (1995)
`
`
`
`
`
`
`
`Date
`
`Dec. 17, 1993 Exhibit
`1003
`Exhibit
`1004
`Exhibit
`1005
`June 29, 1993 Exhibit
`1006
`Oct. 20, 1992 Exhibit
`1007
`Jan. 30, 1990 Exhibit
`1008
`Exhibit
`1009
`
`
`
`Oct. 1, 1996
`
`Jan. 1995
`
`
`1 The copy of Fry, as submitted by Honda, includes an added cover sheet
`from the publisher, noting that the version of record was dated Jan. 1, 1995.
`
`5
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`
`E. Alleged Grounds of Unpatentability
`
`
`Claims
`
`Claims 1, 2, 6, 10, 17, 18, 21,
`22, 26, 27, 32, and 61
`Claims 1, 2, 5, 6, 10, 17, 18,
`21, 22, 26, 27, 32, and 61
`Claims 5, 6, 18, 22, 26, and
`27
`Claims 6, 19, 20, 22, and 40
`
`Claims 1, 2, 10, 17, 18, 21,
`26, 27, 32, and 61
`Claims 1, 2, 5, 10, 17, 18, 19,
`21, 26, 27, 32, 40, and 61
`Claims 1, 2, 6, 10, 17, 19, 20,
`21, 22, 32, 40, and 61
`Claims 18, 19, 20, 26, 27, and
`40
`
`
`
`Ground
`
`§ 102(b)
`
`Reference(s)
`
`Ishihara
`
`§ 102(e)
`
`Schricker
`
`§ 103(a)
`
`Ishihara and Schricker
`
`§ 103(a)
`
`Ishihara and Mansell
`
`§ 102(b)
`
`§ 102(b)
`
`§ 102(a)
`
`Asano
`
`DiLullo
`
`Fry
`
`§ 103(a)
`
`Asano and Fry
`
`
`
`In support of the grounds above, Honda also presents a declaration by
`
`Christopher Wilson (Ex. 1010).
`
`A. Claim Construction
`
`ANALYSIS
`
`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.
`
`6
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`2007). If an inventor acts 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
`
`the presence of which 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).
`
`“component”
`
`
`
`Independent claims 1 and 21 both recite the term “component.” The
`
`specification states:
`
`The term “component” 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, 30:58–61.
`
`
`
`Honda does not contend that the named inventor of the ’697 patent
`
`acted as his own lexicographer and coined a new meaning for the term
`
`“component” different from the ordinary and customary meaning, as would
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`7
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`be understood by one with ordinary skill in the art. Also, the above-quoted
`
`language is not in the form of a definition, but is a portion of the description
`
`of preferred embodiments. 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. We do not regard the above-
`
`quoted text as setting forth the inventor’s special definition for the term
`
`“component.”
`
`
`
`In addition to describing a component as a part or assembly of parts
`
`(Ex. 1001, 30:58–59), the ’697 patent specification provides exemplary
`
`components that are less than the whole vehicle. Id. at 30:61–31:22. The
`
`Board construes “component” as “a part or an assembly of parts, less than
`
`the whole.”
`
`“part”
`
`
`
`Claim 17 recites the term “part.” The specification states:
`
`As used herein, a “part” of the vehicle includes any
`
`component, sensor, system or subsystem of the vehicle such as
`the steering system, braking system, throttle system, navigation
`system, airbag system, seatbelt retractor, air bag inflation valve,
`air bag inflation controller and airbag vent valve, as well as
`those listed below in the definitions of “component” and
`“sensor”.
`
`Ex. 1001, 10:51–57.
`
`
`
`Honda does not contend that the named inventor of the ’697 patent
`
`acted as his own lexicographer and coined a new meaning for the term
`
`“part” 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 for the word
`
`
`
`
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`8
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`“part.” Rather, the text is about what would be regarded as a part of the
`
`vehicle that is described in the specification.
`
`
`
`Accordingly, we do not regard the above-quoted text as setting forth
`
`the inventor’s special definition for the term “part.” On this record, the term
`
`“part” does not require express construction. The record does not indicate
`
`that the ordinary and customary meaning of the word, from the perspective
`
`of one with ordinary skill in the art, is different from the word’s plain and
`
`ordinary usage in the English language.
`
`“sensor system”
`
`
`
`Claim 10 recites the term “sensor system.” In that regard, the
`
`specification states:
`
`As used herein, a “sensor system” includes any of the
`
`sensors listed below in the definition of “sensor” as well as any
`type of component or assembly of components which detect,
`sense, or measure something.
`
`Ex. 1001, 10:58–61.
`
`Honda does not contend that the inventor acted as his own
`
`lexicographer in coining a special meaning for a common term “sensor
`
`system.” Also, the above-reproduced text refers to what a sensor system
`
`includes, not what it is.
`
`Moreover, with regard to the phrase “as well as any type of
`
`component or assembly of components which detect, sense, or measure
`
`something,” we note that it would amount to impermissible functional
`
`9
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`claiming if that is the meaning of a claim term. The language does not
`
`invoke expressly means-plus-function treatment under 35 U.S.C. § 112, ¶ 6.2
`
`Furthermore, the above-quoted text is circular, in that it uses the term sense
`
`to describe a sensor system. It also is unclear how “measure” and “detect”
`
`differ from “sense.”
`
`
`
`For all of the foregoing reasons, we do not regard the above-quoted
`
`text as setting forth the inventor’s special definition for the term “sensor
`
`system.” On this record, the term “sensor system” does not require an
`
`express construction. We determine, however, that under the rule of
`
`broadest reasonable interpretation, the term “sensor system” includes each of
`
`the sensors particularly identified in the specification of the ’697 patent.
`
`Dependent claims 2, 10, and 32 each recite the term “sensor.” The
`
`“sensor”
`
`specification states:
`
`The term “sensor” refers to any measuring 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. A partial, non-exhaustive list of
`common sensors mounted on an automobile or truck is as
`follows: . . . .
`
`Ex. 1001, 31:23–29.
`
`Honda does not contend that the named inventor of the ’697 patent
`
`acted as his own lexicographer and coined a new meaning for the term
`
`“sensor” different from the ordinary and customary meaning as would be
`
`
`2 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-
`29, 125 Stat. 284, 329 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6,
`as 35 U.S.C. § 112(f). Because the ’697 patent has a filing date before
`September 16, 2012 (effective date of AIA), we use the citation “§ 112, ¶ 6.”
`
`
`
`10
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`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, uses the words “refers to,” and is followed by “a non-
`
`exhaustive list” of more than forty exemplary automobile or truck sensors.
`
`It is unclear how a “sensor” measures without sensing. Also, defining
`
`“sensor” to mean a “sensing device” is circular and, thus, not meaningful.
`
`For all the foregoing reasons, we do not regard the above-quoted text as
`
`setting forth an inventor’s special definition for “sensor.” The term
`
`possesses its ordinary and customary meaning, as would be understood by
`
`one with ordinary skill, and does not require an express construction. We
`
`determine, however, that the term “sensor” includes each of the sensors
`
`particularly identified in the specification of the ’697 patent.
`
`“state of the vehicle”
`
`
`
`Independent claims 1 and 21 both recite the term “state of the
`
`vehicle.” The specification states:
`
`As used herein, a diagnosis of the “state of the vehicle”
`
`means a diagnosis of the condition of the vehicle with respect to
`its stability and proper running and operating condition.
`
`Ex. 1001, 10:29–32.
`
`
`
`The above-quoted text refers to and explains “a diagnosis” of the state
`
`of a vehicle, not what constitutes “state of the vehicle.” On this record, the
`
`term “state of the vehicle” does not require an express construction. We
`
`determine, however, that it encompasses any operating as well as structural
`
`condition of the vehicle.
`
`11
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` “control at least one part of the vehicle”
`
`
`
`Claim 17 recites the phrase “control at least one part of the vehicle.”
`
`On this record, an express construction of this term is not necessary. It
`
`suffices to say that the term is not limited to controlling any particular type
`
`or kind of “part” of the vehicle.
`
`“display”
`
`
`
`Claim 5 recites the term “display.” The specification states, in part:
`
`“The [output system] may be a display as mentioned above or a warning
`
`device.” Ex. 1001, 81:34–36. The specification also refers to a display
`
`separately from a warning device. Ex. 1001, 13:24–33. We determine that,
`
`in the context of the ’697 patent, a warning lamp or light does not constitute
`
`a “display,” and that a “display” covers a screen for showing information.
`
`“display . . . arranged to display the diagnosis”
`
`
`
`Claim 5 recites the phrase “display . . . arranged to display the
`
`diagnosis.” The specification states:
`
`A display may be arranged in the vehicle in a position to
`
`be visible from the passenger compartment. Such [a] display is
`coupled to the diagnostic system and arranged to display the
`diagnosis of the state of the vehicle or the state of a component
`of the vehicle.
`
`Ex. 1001, 13:24–28.
`
`
`
`Claim 5 depends from claim 1. Claim 1 recites “a diagnostic system
`
`arranged on the vehicle” that generates an output. Thus, the reference in
`
`claim 5 to “the diagnosis” refers back to a diagnosis from the diagnostic
`
`system arranged on the vehicle. On this record, a further construction of
`
`“display . . . arranged to display the diagnosis” is not necessary.
`
`
`
`
`
`12
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`B. Alleged Anticipation of Claims 1, 2, 6, 10, 17, 18, 21, 22, 26,
`27, 32, and 61, under 35 U.S.C. § 102(b), by Ishihara
`
`Honda contends that claims 1, 2, 6, 10, 17, 18, 21, 22, 26, 27, 32, and
`
`61 are anticipated, under 35 U.S.C. § 102(b), by Ishihara. In light of the
`
`arguments and evidence submitted by Honda, we determine that it has
`
`established a reasonable likelihood that claims 1, 2, 10, 17, 18, 21, 26, 27,
`
`32, and 61 are anticipated by Ishihara. It has not, however, established a
`
`reasonable likelihood that claim 6 or claim 22 is anticipated by Ishihara.
`
`Ishihara discloses an on-board failure detection unit that detects a
`
`failure of a device of a vehicle and an on-board transmitting unit that
`
`transmits an output signal from the failure detection unit to a remote failure
`
`diagnosis station. Ex. 1004, 2:1:26–30. A significance determination unit
`
`resides in the remote diagnosis station, and it categorizes the failure detected
`
`by the on-board failure detection unit as either high or low significance. Ex.
`
`1004, 2:1:30–35. A display control unit causes a display device in the
`
`vehicle to show only failures having high significance. Ex. 1004, 2:1:35–39.
`
`Figure 2 of Ishihara is reproduced partially below:
`
`
`
`13
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`
`
`Figure 2 illustrates on-board control unit 4 and communication unit 6.
`
`Control unit 4 is connected to vehicle speed sensor 11, throttle sensor 12,
`
`turbine sensor 13, and an idle switch 14. Ex. 1004, 2:2:38–44. Output
`
`signals 11a, 12a, 13a, and 14a from these sensors are inputted to computer
`
`16 in control unit 4. Ex. 1004, 2:2:45–47. Computer 16 includes failure
`
`detection unit 16b, which determines whether or not abnormality exists in
`
`the signals received from the sensors, to detect the occurrence of a failure in
`
`the automatic transmission or its control system. Ex, 1004, 3:1:1–16. For a
`
`predetermined abnormality, warning lamp 22 is turned on at the time of
`
`occurrence of its detection. Ex, 1004, 3:16–19.
`
`
`
`Control unit 4 further includes transmitted-received data processing
`
`circuit 23 and display selection circuit 24. The former exchanges data
`
`between control unit 4 and communication control unit 6; and the latter
`
`controls display apparatus 5. Ex. 1004, 3:1:20–27. Communication control
`
`unit 6 receives signals from remote station 3 and transmits failure data to
`
`remote station 3. Ex. 1004, 3:1:29–41.
`
`
`
`We have reviewed the evidence and arguments submitted by Honda in
`
`its Petition. The evidence includes the claim chart on pages 14–28 of the
`
`Petition and the declaration of Mr. Wilson. We are persuaded that the
`
`submission established a reasonable likelihood that Honda will demonstrate
`
`unpatentability of claims 1, 2, 10, 17, 18, 21, 26, 27, 32, and 61 as
`
`anticipated by Ishihara. For instance, computer 16 on a vehicle diagnoses
`
`the state of a vehicle component and generates a corresponding output
`
`indicating whether an abnormality exists. Ex. 1004, 3:1:1–19. Data
`
`including detected failures are transmitted automatically and wirelessly to a
`
`remote station. Ex. 1004, 2:1:41–46.
`
`14
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`Claim 6 depends on from claim 1 and requires a cellular telephone for
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`communication with a remote facility. Claim 22 depends from claim 21 and
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`requires the use of a cellular telephone for communication with a remote
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`facility. The specification of the ’697 patent describes exemplary
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`communication devices including cellular phone, OnStar®, and devices that
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`communicate with low earth orbit (LEO) satellite or geostationary
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`satellites. Ex. 1001, 47:1:31–39. There is a distinction between cell towers
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`and satellites.
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`We construe “cellular telephone,” in light of the specification of the
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`’697 patent, as a telephone that communicates by use of a terrestrial network
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`of radio cell towers. With respect to Ishihara’s disclosure, Honda’s Petition
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`identifies only an “automobile telephone” and not an automobile telephone
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`which communicates by use of a terrestrial network of radio cell towers.
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`Pet. 18 (citing Ex. 1004, p.1. col. 2).
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`To establish anticipation, each and every element in a claim, arranged
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`as is recited in the claim, must be found in a single prior art reference.
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`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
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`2001); NetMoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
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`2008); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). An “automobile
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`telephone” is generic and may use satellite technology. Accordingly, Honda
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`has not shown a reasonable likelihood that it would prevail in demonstrating
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`unpatentability of claims 6 and 22 as anticipated by Ishihara.
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`C. Alleged Obviousness of Claims 6, 19,
`20, 22, and 40 over Ishihara and Mansell
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`Mansell describes a vehicle tracking and security system which allows
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`
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`immediate response in case of vehicle theft, an accident, vehicle breakdown,
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`15
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`Case IPR2014-00634
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`or other emergency. Ex. 1006, Abstract. “Mobile Units” are installed in
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`vehicles to be monitored, to communicate with a “Control Center.” Id.
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`Mansell describes that the mobile unit has a mobile unit controller which
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`includes a cellular telephone transmitter for transmitting information onto a
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`cellular telephone communications link. Ex. 1006, 2:64–68.
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`
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`Honda’s expert witness, Mr. Wilson, testifies that it was well known
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`in the art that various communications technologies could be employed to
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`provide communication between a vehicle and a remote location. Ex. 1010
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`¶ 64. He further testifies that it would have been obvious to one with
`
`ordinary skill in the art, as of June 1995, to use a cellular telephone system,
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`as disclosed in Mansell, as the communication system in Ishihara. Id. On
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`the basis of the present record, we conclude that it would have been obvious
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`to one with ordinary skill in the art, in light of Mansell, to use a cellular
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`telephone as the automobile phone of Ishihara.
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`
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`Claim 6 recites a cellular telephone system including an antenna.
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`Mansell’s Figure 3 shows such an antenna 316a. Claim 22 recites a cellular
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`telephone system including an antenna “on the vehicle.” In its Figure 1,
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`Ishihara illustrates that its antenna 7 is attached to the vehicle.
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`
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`Claim 19 depends from claim 1, and further recites a location
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`determining system for determining the location of the vehicle. Claim 19
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`also requires the communications device to be coupled to the location
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`determining system and to transmit the determined location of the vehicle to
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`the remote facility. Claim 20 depends on claim 19, and specifies that the
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`location determining system uses GPS technology. Claim 40 depends from
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`claim 21 and further recites the steps of (1) determining the location of the
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`vehicle; and (2) transmitting the determined location to the remote location
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`16
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`Case IPR2014-00634
`Patent 6,738,697 B2
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`together with output representative of the diagnosed state of the vehicle or a
`
`component of the vehicle.
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`
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`We have considered the arguments and evidence Honda submitted
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`with respect to claims 19, 20, and 40, in the context of the combined
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`disclosures of Ishihara and Mansell. That includes paragraphs 67–68 of the
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`declaration of Mr. Wilson. Ex. 1010. Mansell discloses detecting certain
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`status and alarm conditions on a vehicle and transmitting it along with
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`automatically generated GPS-derived position data to a remote control
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`center. Ex. 1006, 6:59–66. Based on that location information, the remote
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`control center may dispatch emergency vehicles, if necessary. Id. at, 6:66–
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`7:3. Mr. Wilson testifies that “[i]t was known in the art that knowing a
`
`vehicle’s location where significant failure occurred would have been useful
`
`to service shops and other facilities to effectively render services,” and that
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`“[i]t would have been obvious to a person of ordinary skill in the art to
`
`incorporate the location determination feature of Mansell in the failure
`
`diagnosis system described in Ishihara to more effectively provide assistance
`
`in the event of a significant failure.” Ex. 1010 ¶ 68.
`
`
`
`On the present record, Honda has shown a reasonable likelihood that
`
`it would prevail in demonstrating unpatentability of claims 6, 19, 20, 22, and
`
`40 as obvious over Ishihara and Mansell.
`
`D. Alleged Anticipation of Claims 1, 2, 5, 6, 10, 17, 18, 21, 22,
`26, 27, 32 and 61 under 35 U.S.C. § 102(b), by Schricker
`
`
`
`We have reviewed the arguments and evidence submitted by Honda
`
`with respect to the above claims and the disclosures of Schricker as
`
`referenced by Honda. Based on our review, we determine that Honda has
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`not shown a reasonable likelihood that it would prevail in demonstrating
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`17
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`anticipation of claims 1, 2, 5, 6, 10, 17, 18, 21, 22, 26, 27, 32, and 61 by
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`Schricker.
`
`
`
`The claim chart on pages 26–32 of the Petition, as well as paragraph
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`42 of the declaration of Mr. Wilson (Ex. 1010), are not sufficiently specific
`
`and fail to address specific recitations of the claims. The claims recite that
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`the output of the diagnostic system is indicative or representative of the
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`diagnosed state of the vehicle or the state of a component of the vehicle
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`which is transmitted to the remote facility. In that regard, the Petition points
`
`out that a sensor produces a signal in response to the level of a monitored
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`parameter, and then a processor identifies a trend in the value of that
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`parameter, calculates the duration and slope of the trend, and determines
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`whether a warning threshold is exceeded based on the duration and slope of
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`the trend. Pet., 29.
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`
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`The Petition does not identify clearly what it regards as the “output”
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`indicative of the vehicle’s diagnosed state. Based on the claim chart, the
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`“output” appears to be a determination of whether a warning threshold has
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`been exceeded. But the Petition does not explain where Schricker describes
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`that that determination is transmitted from the vehicle to the remote facility.
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`Similarly, if the calculated duration and slope of a trend is regarded as the
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`“output,” then the Petition also does not explain adequately where Schricker
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`describes that the calculated duration and slope of a trend is transmitted from
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`the vehicle to the remote facility.
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`
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`In any event, neither the Board nor the Patent Owner should have to
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`speculate as to which it is that Petitioner regards as the “output” of
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`independent claims 1 and 21, that is indicative of the state of the vehicle or a
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`component of the vehicle and transmitted to the remote facility. In that
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`18
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`Case IPR2014-00634
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`regard, the Petition is vague and thus inadequate. We also have reviewed
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`paragraph 42 of the declaration of Mr. Wilson (Ex. 1010), and it does not
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`provide an adequate explanation.
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`
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`For instance, on page 25 of the Petition, Petitioner states: “Schricker
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`also discloses that the data can be transmitted to a remote location via a
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`variety of communication systems, including cellular systems,” citing
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`column 2, lines 48–55, of Schricker. The general reference to “the data”
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`does not account adequately for the claim features with respect to the
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`claimed “output.” The cited portion of Schricker does not describe “the
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`data” as either the determination of exceeding a warning threshold or the
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`calculated duration and slope of a trend. It simply may be the raw data
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`provided by sensors.
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`
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`On pages 25–26 of the Petition, it is stated: “Even in embodiments
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`where ‘all aspects of the present invention could be located on-board the
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`work machine 12,’ (id. 2:57–58), data may be transmitted to a remote
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`location for purposes such as monitoring a fleet of vehicles. (Id. 2:61–62.)”
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`The contention is unpersuasive. The cited portion of Schricker does not
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`appear to support Petitioner’s assertion and Petitioner does not explain
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`adequately why it does. Specifically, Schricker states:
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`It should be understood that all aspects of the present
`
`invention could be located on-board the work machine 12
`thereby eliminating the need for a communication system 14;
`however, the central computer system 16 allows an entire fleet
`to be monitored at a central station.
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`Ex. 1005, 2:58–62. The above-quoted text is more consistent, if not at least
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`equally consistent, with an understanding that where not all aspects of the
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`invention are located on-board the work machine, the central computer
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`19
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`Case IPR2014-00634
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`system can be used to monitor an entire fleet of work machines. The text
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`does not describe sending from the work machine to the central station either
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`the determination of exceeding a warning threshold or the calculated
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`duration and slope of a trend.
`
`
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`For the foregoing reasons, Honda has not shown a reasonable
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`likelihood that it would prevail in demonstrating unpatentability of claims 1,
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`2, 5, 6, 10, 17, 18, 21, 22, 26, 27, 32, and 61 as anticipated by Schricker.
`
`E. Alleged Unpatentability of Claims 5, 6, 18, 22,
`26, and 27 as Obvious over Ishihara and Schricker
`
`
`
`We have reviewed the arguments and evidence submitted by Honda
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`with respect to claims 5, 6, 18, 22, 26, and 27 and based on the disclosures
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`of Ishihara and Schricker. The deficiencies of Schricker, discussed above, in
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`the context of alleged anticipation of independent claims 1 and 21 by
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`Schricker, have no application in the context of features added by claims 5,
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`6, 18, 22, 26, and 27. On the present record, Honda has articulated cogent
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`reasoning with rational underpinnings to combine the teachings of Ishihara
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`and Schricker to arrive at the subject matter of these claims.
`
`
`
`Claim 5 depends from claim 1 and requires a display arranged on the
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`vehicle in a position visible from the passenger compartment. Claim 5 also
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`recites that the display is arranged to display the diagnosis of the state of the
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`vehicle or the state of a component of the vehicle. In Figure 1 of Ishihara
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`(Ex. 1004), display apparatus is shown, evidently in a pos
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