UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Mercedes-Benz USA, LLC,
`
`Petitioner
`
`Patent No. 6,738,697
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
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`Case No. IPR2014-00645
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`TABLE OF CONTENTS
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`I. 
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`MANDATORY NOTICES (37 C.F.R. § 42.8) ............................................... 1 
`A. 
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) .................................. 1 
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 1 
`C. 
`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4)) ............. 2 
`PAYMENT OF FEES (37 C.F.R. § 42.103) ................................................... 3 
`II. 
`III.  REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. § 42.104) .. 3 
`A.  Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 3 
`B. 
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) ..................................................... 4 
`Claim Construction (37 C.F.R. §§ 42.104(b)(3)) .................................. 6 
`C. 
`IV.  SUMMARY OF THE ’697 PATENT ............................................................. 7 
`V. 
`CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY .................................................................................... 9 
`A.  Ground 1: Anticipation Under 35 U.S.C. § 102(b) by Asano ............... 9 
`1. 
`Overview of Asano ..................................................................... 9 
`2. 
`Claim-by-claim analysis ........................................................... 10 
`Ground 2: Anticipation Under 35 U.S.C. § 102(a) by Fry .................. 18 
`1. 
`Overview of Fry ........................................................................ 18 
`2. 
`Claim-by-claim analysis ........................................................... 19 
`Ground 3: Anticipation Under 35 U.S.C. § 102(b) by DiLullo .......... 28 
`1. 
`Overview of DiLullo ................................................................. 28 
`2. 
`Claim-by-claim analysis ........................................................... 29 
`D.  Ground 4: Anticipation Under 35 U.S.C. § 102(b) by Sorden ........... 37 
`1. 
`Overview of Sorden .................................................................. 37 
`2. 
`Claim-by-claim analysis ........................................................... 38 
`Ground 5: Obviousness Under 35 U.S.C. § 103(a) Over Fry in View
`of Asano .............................................................................................. 48 
`Ground 6: Obviousness Under 35 U.S.C. § 103(a) Over Asano in
`View of Fry ......................................................................................... 52 
`G.  Ground 7: Obviousness Under 35 U.S.C. § 103(a) Over DiLullo in
`View of Fry ......................................................................................... 54 
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`B. 
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`C. 
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`E. 
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`F. 
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`i
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`H.  Ground 8: Obviousness Under 35 U.S.C. § 103(a) Over Fry in view of
`DiLullo ................................................................................................ 55 
`VI.  CONCLUSION .............................................................................................. 56 
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`ii
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`Exhibit 1001
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`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`Exhibit 1006
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`Exhibit 1007
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`Exhibit 1008
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`Exhibit 1009
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`EXHIBITS
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`U.S. Patent No. 6,738,697 to Breed
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`U.S. Patent No. 5,157,610 to Asano
`
`Fry, “Diesel Locomotive Reliability Improvements by
`System Monitoring,” Proceedings of the Institution of
`Mechanical Engineers, Part F: Journal of Rail and Rapid
`Transit, Vol. 209, Jan. 1, 1995
`
`U.S. Patent No. 4,897,642 to DiLullo et al.
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`U.S. Patent No. 5,311,197 to Sorden et al.
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`Expert Declaration of David A. McNamara
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`January 13, 2014 Decision in IPR2013-00412 instituting
`inter partes review of ’697 patent
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`January 13, 2014 Decision in IPR2013-00413 instituting
`inter partes review of ’697 patent
`
`American Vehicular Sciences LLC’s PR 3-1 Disclosure of
`Asserted Claims and Infringement Contentions and PR 3-2
`Identification of Document Production Accompanying
`Disclosure in 13-cv-00105 (E.D. Tex.) (July 22, 2013)
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. Part 42, Mercedes-Benz
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`USA LLC (“Petitioner”) respectfully requests inter partes review of claims 1, 2, 5,
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`6, 10, 18-22, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697 (“the ’697
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`patent”). According to U.S. Patent and Trademark Office records, the ’697 patent
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`is currently assigned to American Vehicular Sciences LLC (“AVS” or the “Patent
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`Owner”).
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`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`A. Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties-in-interest with respect to this Petition are Petitioner and
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`Mercedes-Benz U.S. International, Inc. (“MBUSI”).
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’697 patent has been asserted by AVS in the following litigations in the
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`U.S. District Court for the Eastern District of Texas: American Vehicular Sciences
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`LLC v. Mercedes-Benz U.S. Intl., Inc., No. 6:13-cv-00310, filed April 3, 2013 (the
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`“310 Litigation”); American Vehicular Sciences LLC v. American Honda Motor
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`Co., Inc. et al., No. 6:13-CV- 226, filed March 8, 2013; American Vehicular
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`Sciences LLC v. Kia Motors Corp., No. 6:13-CV-148, filed February 13, 2013;
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`American Vehicular Sciences LLC v. Hyundai Motor Co. et al., No. 6:12-CV-776,
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`filed October 15, 2012; American Vehicular Sciences LLC v. BMW Group. A/K/A
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`1
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`BMW AG et al., No. 6:12-CV-412, filed June 25, 2012; and American Vehicular
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`Sciences LLC v. Toyota Motor Corp. et al., No. 6:12-CV-405, filed June 25, 2012.
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`Petitioner and MBUSI were named as defendants in the 310 Litigation and
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`were served with a Summons and Complaint in that action on April 17, 2013.
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`American Honda Motor Co, Inc. filed a petition for inter partes review of
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`the ‘697 patent on April 15, 2014 in IPR2014-00634 (the “634 Proceeding”). The
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`634 proceeding is pending. Additionally, the ’697 patent was the subject of two
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`prior petitions for inter partes review filed by Toyota Motor Corporation
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`(“Toyota”) in cases IPR2013-00412 and IPR2013-00413 (the “412 Proceeding”
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`and “413 Proceeding,” respectively). The Patent Trial and Appeal Board (the
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`“Board”) instituted inter partes review in the 412 and 413 Proceedings on January
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`13, 2014. (See Exs. 1007, 1008.) On March 28, 2014, the Board dismissed both
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`Proceedings in response to a settlement between AVS and Toyota concerning the
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`’697 patent. Additionally, pending U.S. Patent App. No. 11/930,590 and
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`numerous other patents and applications claim the benefit of the filing date of the
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`‘697 patent.
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`C. Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`Lead Counsel:
`Scott W. Doyle (Reg. No. 39176)
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`2
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`Back-up Counsel:
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`Jonathan R. DeFosse (pro hac to be requested)1
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`Electronic Service: scott.doyle@shearman.com, jonathan.defosse@shearman.com
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`Service Address:
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`Scott W. Doyle, Shearman & Sterling LLP, 801 Pennsylvania
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`Ave., NW, Suite 900, Washington, DC 20004.
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`Telephone:
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`Facsimile:
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`(202) 508-8000
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`(202) 508-8100
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`II.
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`PAYMENT OF FEES (37 C.F.R. § 42.103)
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`The US PTO is authorized to charge the filing fee for this Petition, as well as
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`any other fees that may be required in connection with this Petition or these
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`proceedings on behalf of Petitioner, to the deposit account of Shearman & Sterling
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`LLP, Deposit Account 500324.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. §
`42.104)
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioner certifies that the ’697 patent (Ex. 1001) is available for inter
`                                                            
`1 Petitioner requests authorization to file a motion for Jonathan R. DeFosse to
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`appear pro hac vice as backup counsel. Mr. DeFosse is an experienced litigation
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`attorney in patent cases. He is admitted to practice in Virginia and Washington,
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`D.C., as well as before several United States District Courts and Courts of Appeal.
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`Mr. DeFosse is familiar with the issues raised in this Petition because he represents
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`Petitioner in the 310 Litigation.
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`3
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`partes review and that Petitioner is not barred or estopped from requesting an inter
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`partes review challenging the patent’s claims on the grounds identified in this
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`petition.
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`B.
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`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
`Petitioner respectfully requests that inter partes review be instituted and
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`claims 1, 2, 5, 6, 10, 18-22, 26, 27, 32, 40, and 61 of the ’697 patent be cancelled
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`on the following grounds of unpatentability:
`
`Ground Claims
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`Basis for Challenge
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`Ground 1 1, 2, 10, 18, 21,
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`Anticipated under 35 U.S.C. § 102(b) by U.S. Patent
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`26, 27, 32, 61
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`No. 5,157,610 to Asano et al. (“Asano”) (Ex. 1002)
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`Ground 2 1, 2, 6, 10, 19,
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`Anticipated under 35 U.S.C. § 102(a) by Fry, “Diesel
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`20, 21, 22, 32,
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`Locomotive Reliability Improvements by System
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`40, 61
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`Monitoring,” Proceedings of the Institution of
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`Mechanical Engineers, Part F: Journal of Rail and
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`Rapid Transit, Vol. 209, Jan. 1, 1995 (“Fry”) (Ex.
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`1003)
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`Ground 3 1, 2, 5, 10, 18,
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`Anticipated under 35 U.S.C. § 102(b) by U.S. Patent
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`19, 21, 26, 27,
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`No. 4,897,642 to DiLullo et al. (“DiLullo”) (Ex.
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`32, 40, 61
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`1004)
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`4
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`Ground 4 1, 2, 6, 10, 19,
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`Anticipated under 35 U.S.C. § 102(b) by U.S. Patent
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`20, 21, 22, 32,
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`No. 5,311,197 to Sorden et al. (“Sorden”) (Ex. 1005)
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`40, 61
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`Ground 5 18, 26, 27
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`Obvious under § 103(a) over Fry in view of Asano
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`Ground 6 6, 19, 20, 22,
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`Obvious under § 103(a) over Asano in view of Fry
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`40
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`Ground 7 6, 20, 22
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`Obvious under § 103(a) over DiLullo in view of Fry
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`Ground 8 5, 18, 26, 27
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`Obvious under § 103(a) over Fry in view of DiLullo
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`The above-listed grounds of unpatentability are explained in detail in
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`Section V., below. This Petition is supported by the Declaration of David A.
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`McNamara (the “McNamara Declaration”) (Ex. 1006).
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`As noted above, in July 2013, Toyota filed petitions in the 412 and 413
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`Proceedings challenging certain claims of the ’697 patent. On January 13, 2014,
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`the Board granted Toyota’s petitions, in part, finding a reasonable likelihood that
`
`(1) Fry anticipates claims 1, 2, 10, 17, 19-21, 32, 40, 61; (2) Asano anticipates
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`claims 1, 2, 10, 17, 18, 21, 26, 27, 32, 61; and (3) DiLullo anticipates claims 1, 2,
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`5, 10, 17-19, 21, 26, 27, 32, 40, 61. (See Exs. 1007, 1008.) Toyota’s petitions in
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`the 412 and 413 Proceedings did not raise Sorden as a ground for instituting inter
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`partes review. Toyota also did not challenge claims 6 and 22, which are
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`challenged as part of this petition. On March 28, 2014, the Board dismissed the
`5
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`412 and 413 Proceedings in response to a settlement between AVS and Toyota
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`concerning the ’697 patent.
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` Claim Construction (37 C.F.R. §§ 42.104(b)(3))
`
`C.
`A claim subject to inter partes review is given its “broadest reasonable
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`construction in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b). The words of the claim are to be given their plain meaning
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`unless it is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed.
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`Cir. 1989). The Board construed certain terms of the ’697 patent in granting the
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`petitions for inter partes review in the 412 and 413 Proceedings:
`
`Claim term
`“component”
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`Board Construction
`“a part or an assembly of parts, less than the whole” (Ex.
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`(claims 1, 21)
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`1007 at 8; Ex. 1008 at 7)
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`“sensor system”
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`Does not require express construction, but “includes each
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`(claim 10)
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`of the sensors particularly identified in the specification of
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`the ‘697 patent.” (Ex. 1007 at 10; Ex. 1008 at 9-10)
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`“sensor”
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`Does not require express construction, but “includes each
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`(claims 2,10,32)
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`of the sensors particularly identified in the specification of
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`the ‘697 patent” (Ex. 1007 at 12; Ex. 1008 at 11)
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`“diagnose of the
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`“diagnosis of the condition of the vehicle with respect to its
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`state of the vehicle”
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`stability and proper running and operating condition” (Ex.
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`6
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`(claims 1, 21)
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`1007 at 12-13; Ex. 1008 at 12)
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`“display”
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`(claim 5)
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`“a screen for showing information, as opposed to a warning
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`lamp” (Ex. 1007 at 13; Ex. 1008 at 13)
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`The remaining terms of the ’697 patent should be given their plain and
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`ordinary meaning.2
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`IV. SUMMARY OF THE ’697 PATENT
`The ’697 patent is directed to an on-board system that diagnoses the state of
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`a vehicle or a component of the vehicle and automatically communicates the
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`diagnosis to a remote facility. (Ex. 1001 at col. 1:37-42.) The diagnostic system is
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`able to detect various abnormalities in the operation of the vehicle as a whole,
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`including “excessive angular inclination,” “a crash,” or “skidding.” (Id. at col.
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`10:32-41; col. 14:34-37.) The system and method is also able to determine if “one
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`of the parts of the vehicle, e.g., a component, system or subsystem, is operating
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`abnormally.” (Id. at col. 10:32-41.) The patent lists various examples of
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`“components” that can be monitored for abnormal operation, including the engine,
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`                                                            
`2 In the 310 Litigation, Petitioner has taken the position that the term “said sensor
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`systems” in claim 10 of the ’697 patent is indefinite under 35 U.S.C. § 112(b).
`
`Petitioner has no opportunity to challenge this term as indefinite under § 112(b) as
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`part of the inter partes review proceedings.
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`7
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`brakes, tires, water pump, alternator, shock absorber, wheel mounting assembly,
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`radiator, battery, oil pump, fuel pump, vehicle suspension, and the like. (Id. at col.
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`30:58 - col. 31:22.)
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`The system also includes a communications device, such as a “cellular
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`telephone system” or “satellite” system, that automatically transmits the output of
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`the diagnostic system to a remote location. (Ex. 1001 at col. 13:34-42.) The
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`remote location may be, for example, a “repair facility” or “emergency response
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`station.” (Id. at col. 1:53-60.) In other embodiments, the diagnosis may be
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`provided to a driver through a display or a warning system. (Id. at col. 13:24-33;
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`col. 14:39-44; col. 38:51-59; col. 41:9-19; col. 53:23-27; col. 82:64 – col. 83:1;
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`Fig. 8.) Additionally, the system can also include a location determining system,
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`such as a GPS system; and, vehicle location information can then be transmitted to
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`the remote facility along with the diagnostic information. (Id. at col. 13:54-58.)
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`The ’697 patent is identified as a continuation-in-part of a large family and
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`chain of applications, the earliest of which is U.S. Patent App. No. 08/476,077,
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`which was filed June 7, 1995 and issued as U.S. Patent No. 5,809,437. Claims 19,
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`20, and 40 of the ’697 patent have, however, an effective filing date (at best) of
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`June 19, 2002 (the filing date of U.S. Patent Application No. 10/174,709, now U.S.
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`Patent No. 6,735,506) because none of the earlier applications referenced by the
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`’697 patent disclose or make any reference to transmitting GPS or location
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`information, as required by these claims.3
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`V. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
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`As is explained in detail below, there is a reasonable likelihood that at least
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`one claim of the ’697 patent is anticipated or rendered obvious by prior art.
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`A. Ground 1: Anticipation Under 35 U.S.C. § 102(b) by Asano
`As the Board held in the 412 Proceeding, inter partes review of the ’697
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`patent should be instituted because there is a reasonable likelihood that Asano
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`anticipates claims 1, 2, 10, 18, 21, 26, 27, 32, and 61. (See Ex. 1007 at 40.)
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`1. Overview of Asano
`U.S. Patent No. 5,157,610 to Asano (Ex. 1002), entitled “System and
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`Method of Load Sharing Control for Automobile,” was issued on October 20, 1992
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`and therefore qualifies as prior art to the ’697 patent under § 102(b). Asano was
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`not before or considered by the Examiner during prosecution of the ’697 patent.
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`Asano discloses a multi-tier diagnostic system for automobiles comprised of
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`(i), a “vehicle-mounted station” that processes sensor data in order to diagnose the
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`“operating conditions of a vehicle and controllers,” and, (ii), a “stationary base
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`station” with a “host computer” that makes a further diagnosis based on
`                                                            
`3 As part of the 310 Litigation, AVS has acknowledged that claims 19, 20, and 40
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`have an effective filing date of June 19, 2002. (See Ex. 1009 at 4.)
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`information transmitted from the vehicle-mounted station. (Ex. 1002 at Abstract;
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`Fig. 1.)
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`Claim-by-claim analysis
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`2.
`Asano discloses each and every element of claims 1, 2, 10, 18, 21, 26, 27,
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`32, and 61 of the ’697 patent.
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`Independent claim 1 of the ’697 patent is comprised of two elements: [1] an
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`on-board “diagnostic system arranged on the vehicle to diagnose the state of the
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`vehicle or the state of a component of the vehicle and generate an output indicative
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`or representative thereof”; and [2] “a communications device . . . arranged to
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`automatically establish a communications channel between the vehicle and a
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`remote facility without manual intervention and wirelessly transmit the output of
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`the diagnostic system to the remote facility.”
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`In anticipation of element [1] of claim 1, Asano discloses a “vehicle
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`mounted station” that receives inputs from various sensors concerning the
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`operating conditions of the vehicle. (Ex. 1002 at col. 6:14-18.) The sensors
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`monitor vehicle components such as the “fuel injector,” “transmission,” and
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`“suspension.” (Ex. 1003 at col. 3:59-66.) The vehicle-mounted station “carries
`
`out computations” based on “operating condition signals” from the sensors. (Id. at
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`col. 6:43-47.) The on-board computer uses the sensor data to “make a basic
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`10
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`abnormal diagnosis.” (Id. at col. 9:1-9.) Columns 8-9 provide an example of how
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`the on-board processor diagnoses the state of the fuel injector:
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`The vehicle-mounted computer carries out time-sharing computations
`of the injection pulse width for the injector and ignition timing in real
`time. For this, computations for a failure diagnosis are made in the
`intervals of these computations [of the injector pulse width] and only
`a basic diagnosis [is] made. 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.
`
`(Ex. 1002 at col. 8:65 – col. 9:6.)
`
`In anticipation of element [2] of claim 1, Asano discloses that once the on-
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`board system makes “a basic abnormal diagnosis” concerning, for example, the
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`fuel injector, an abnormality code is generated and sent to the “host computer” at
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`the “dealer side” so that further “failure diagnosis” can be conducted. (Ex. 1002 at
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`Fig. 6; see also id. at col. 9:1-9.) As shown in Figure 6, this transmission is
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`triggered automatically whenever the vehicle side computer determines that an
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`abnormality exists. (Id. at Fig. 6; col. 2:35-44 (transmission triggered at “times of
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`occurrence of predetermined conditions”).) The transmission occurs via a
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`“telecommunication path” which may be a “wireless … radio link.” (Id. at col.
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`5:50-54.)
`
`Independent claim 21 of the ’697 patent is a method claim comprised of
`
`steps that mirror the elements of claim 1. As such, Asano anticipates claims 21 for
`11
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`the same reasons it anticipates claim 1. As the below claim charts demonstrate,
`
`Asano also anticipates dependent claims 2, 10, 18, 26, 27, 32, and 61.
`
`Claim 1
`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
`
`’610 Patent to Asano
`Abstract (“The vehicle mounted station has detectors
`for determining operating conditions of a vehicle and
`controllers for varying operating conditions.”);
`Col. 1:8-14; col. 1:16-19 (referencing an “automobile”
`with an “internal combustion engine.”).
`Col. 2: 25-30 (“Advantageously the vehicle mounted
`station detected operating conditions are performed by a
`detecting means adapted to detect at least one of water
`temperature, air flow ratio air fuel quantity, battery
`voltage, throttle valve opening angle, engine speed,
`transmission gear position and suspension setting.”);
`Col. 3:10-11 (“In a feature of the invention the vehicle
`mounted station is arranged to detect an
`abnormality….”);
`Col. 6:19-47 (“FIG. 2 shows the computer 105 on the
`vehicle side…. ROM 21, RAM 22 and CPU 7 are
`connected by a bus line 30 for I/O processing….
`[S]ensors (of which only two are shown) sense the
`engine operating conditions, inter alia, the engine
`cooling water temperature (TWS) 32 and the air/fuel
`ratio (O2S) 34. … The CPU 7 carries out computations
`based on the above mentioned operating condition
`signals in accordance with multiple programs stored in
`ROM 21 and outputs its computation results into
`respective control circuits through the bus lines 30.”);
`Col. 8:65 – col. 9:18 (“FIG. 6 shows an example of a
`failure diagnosis, the transmitter-receiver 11 again
`being omitted for clarity. The vehicle-mounted
`computer carries out time-sharing computations of the
`injection pulse width for the injector and ignition timing
`in real time. For this, computations for a failure
`diagnosis are made in the intervals of these
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`12
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`Claim 1
`
`a communications
`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.
`
`’610 Patent to Asano
`computations and only a basic diagnosis are made. 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.
`The host computer then makes more advanced,
`comprehensive and appropriate diagnosis using data
`indicative of the condition of other control subjects. 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. … When an
`abnormality exists, the abnormal code is transmitted to
`the host computer on the dealer side through the
`transmitter-receivers 5 and 11.”).
`Fig. 1 (showing a “vehicle computer” that monitors a
`vehicle’s “engine,” “transmission,” and “suspension”
`and provides an output to a “transmitter-receiver”); Fig.
`6 (referencing a “diagnostic mode” of the “vehicle” that
`results in the production of an “abnormality code”).
`See also Abstract; col. 1:8 – col. 2:3; col. 2:6 – col., 5:7;
`col. 5:36 – col. 12:40; Figs. 1-11.
`Col. 2:35- 40 (“Conveniently the data transmitted from
`the vehicle mounted station to the base station is
`performed at times of occurrence of predetermined
`conditions including at least one of the vehicle covering
`a predetermined distance, detection of the engine
`ceasing rotation and low fuel tank condition.”)
`Col. 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….”);
`Col. 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
`
` 
`
`13
`
`

`

` 
`
`Claim 1
`
` 
`
`Claim 2
`2. The vehicle of claim
`1, wherein said
`diagnostic system
`comprises
`a plurality of vehicle
`sensors mounted on the
`vehicle, each of said
`sensors providing a
`measurement related to a
`state of said sensor or a
`measurement related to a
`state of the mounting
`location and
`
` 
`
`’610 Patent to Asano
`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.”);
`Col. 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.”).
`Fig. 1 (showing a vehicle with a “transmitter-
`receiver”);
`Fig. 6 (showing that after the “vehicle” determines that
`an “abnormality exists,” the vehicle “transmit[s an]
`abnormality code” to a “dealer”).
`See also, e.g., Abstract; col. 1:8-14; col. 2:6 – col. 5:7;
`col. 5:36 – col. 12:40; Figs. 2-5; Figs. 7-11.
`
`’610 Patent to Asano
`See above discussion of claim 1.
`
`Col. 2:25-30 (“Advantageously the vehicle mounted
`station detected operating conditions are performed by a
`detecting means adapted to detect at least one of water
`temperature, air flow ratio air fuel quantity, battery
`voltage, throttle valve opening angle, engine speed,
`transmission gear position and suspension setting.”);
`Col. 6:19-24 (“Other sensors (of which only two are
`shown) sense the engine operating conditions, inter alia,
`the engine cooling water temperature (TWS) 32 and the
`air/fuel ratio (O2S) 34. Battery voltage and throttle
`valve opening and rotation speed also correspond to
`operating condition signals, but here they are
`omitted.”).
`See also, e.g., Abstract; col. 2:9-34; col. 2:52-66;
`14
`
`

`

` 
`
`Claim 2
`
`a processor coupled to
`said sensors and
`arranged to receive data
`from said sensors and
`process the data to
`generate the output
`indicative or
`representative of the
`state of the vehicle or the
`state of a component of
`the vehicle.
`
`’610 Patent to Asano
`col. 3:10-20; col. 3:34-66; col. 4:3-5; col. 4:14-26;
`col. 4:66 – col. 5:7; col. 5:41-46; col. 6:20-38;
`col. 7:34-36; col. 7:47 – col. 8:2; col. 8:24-27;
`col. 8:47-49; col. 10:55-57; col. 11:17-22; Fig. 2.
`Col. 6:43-47 (“The CPU 7 carries out computations
`based on the above mentioned operating condition
`signals in accordance with multiple programs stored in
`ROM 21 and outputs its computation results into
`respective control circuits through the bus lines 30.”);
`Col. 8:65 – col. 9:18 (“FIG. 6 shows an example of a
`failure diagnosis, the transmitter-receiver 11 again
`being omitted for clarity. The vehicle-mounted
`computer carries out time-sharing computations of the
`injection pulse width for the injector and ignition timing
`in real time. For this, computations for a failure
`diagnosis are made in the intervals of these
`computations and only a basic diagnosis are made. 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.”);
`Fig. 1 (showing a “vehicle computer” that monitors a
`vehicle’s “engine,” “transmission,” and “suspension”
`and provides an output to a “transmitter-receiver”);
`See also Abstract; col. 1:8 – col. 2:3; col. 2:6 – col. 5:7;
`col. 5:36 – col. 12:40; Figs. 2-11.
`
` 
` 
`
` 
`
`Claim 10
`10. The vehicle of claim 1,
`wherein said diagnostic system comprises a plurality
`of sensors mounted at different locations on the
`vehicle, each of said sensors providing a
`measurement related to a state of said sensor or a
`measurement related to a state of the mounting
`location and a processor coupled to said sensor
`systems and arranged to diagnose the state of the
`15
`
`’610 Patent to Asano
`See claim 1, above.
`See claim 2, above.
`
`
`

`

` 
`
`Claim 18
`18. The vehicle of claim
`1,
`further comprising a
`warning device coupled
`to said diagnostic system
`for relaying a warning to
`an occupant of the
`vehicle relating to the
`state of the vehicle or the
`state of the component of
`the vehicle as diagnosed
`by said diagnostic
`system.
`
`vehicle or the state of the component of the vehicle
`based on the measurements of said sensors.
` 
`
`’610 Patent to Asano
`See claim 1, above.
`
`Fig. 6 (showing “Display” connected to “CPU” that
`processes information from the sensors);
`Col. 4:12-13 (noting that the vehicle is able to
`“display… operating conditions.”);
`Col. 6:67-68 (“A display 90 is used to display
`instructions to the driver.”);
`Col. 7:18-20 (“The vehicle mounted computer gives
`driver instructions through a display or alarm….”);
`Col. 8:47-49 (“[I]t is possible to display the
`deterioration amount and remaining life of the injector
`or sensor.”).
`See also Abstract; col. 2:9-24; col. 2:52-66; col. 3:5-58;
`col. 4:3-26; col. 7:18-22; col. 8:40-49; col. 9:29-45;
`col. 10:3-13; col. 12:9-30; Fig. 2.
`
`’610 Patent to Asano
`See claim 1, above.
`
`See claim 1, above.
`
`See claim 1, above.
`
`See claim 1, above.
`
` 
`
`Claim 21
`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
`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.
` 
` 
`
` 
`
`16
`
`

`

` 
`
` 
`
`Claim 26
`26. The method of claim 21, further comprising the
`steps of:
`arranging a display in the vehicle in a position to be
`visible from the passenger compartment; and
`
`displaying the state of the vehicle or the state of a
`component of the vehicle on the display.
`
` 
`
`Claim 27
`27. The method of claim 21,
`further comprising the step of relaying a warning to
`an occupant of the vehicle relating to the state of
`the vehicle.
` 
`
`Claim 32
`32. The method of claim 21, wherein the step of
`diagnosing the state of the vehicle or the state of the
`component of the vehicle comprises the steps of
`mounting a plurality of sensors on the vehicle,
`measuring a state of each sensor or a state of the
`mounting location of each sensor and
`diagnosing the state of the vehicle or the state of a
`component of the vehicle based on the
`measurements of the state of the sensors or the state
`of the mounting locations of the sensors.
` 
`
`Claim 61
`61. The method of claim 21,
`wherein the step of transmitting the output to the
`remote facility comprises the step of automatically
`establishing a communications channel between the
`vehicle and the remote facility without manual
`intervention to thereby enable the output to be
`transmitted from the vehicle to the remote facility.
`
` 
`
`17
`
`’610 Patent to Asano
`See claim 1, above.
`
`See claim 18, above.
`
`See claim 18, above.
`
`
`’610 Patent to Asano
`See claim 21, above.
`See claim 18, above.
`
`
`’610 Patent to Asano
`See claim 21, above.
`
`See claim 2, above.
`
`See claim 2, above.
`
`’610 Patent to Asano
`See claim 21, above.
`See claim 1, above.
`
`
`

`

` 
`
`B. Ground 2: Anticipation Under 35 U.S.C. § 102(a) by Fry
`As the Board held in the 412 Proceedings, inter partes review of the ’697
`
`patent should also be instituted because there is a reasonable likelihood that Fry
`
`(Ex. 1003) anticipates claims 1, 2, 10, 19, 20, 21, 32, 40, and 61. (See Ex. 1007 at
`
`40.) Although not before the Board as part of the 412 Proceeding, Fry also
`
`anticipates claims 6 and 22.
`
`1. Overview of Fry
`Fry, entitled “Diesel Locomotive Reliability Improvements by System
`
`Monitoring,” was published on January 1, 1995 as part of the Proceedings of the
`
`Institution of Mechanical Engineers (Part F) in the Journal of Rail and Rapid
`
`Transit (Volume 209). As a result, Fry constitutes prior art to the ’697 patent
`
`under § 102(a). Fry was not before or considered by the Examiner during
`
`prosecution of the ’697 patent.
`
`Fry discloses an on-board diagnostic system for a train that includes (1) “a
`
`computer that continuously monitors the condition of the vehicle through sensors
`
`at key points…[with] automated analysis of data-on-board the vehicle” (Ex. 1003
`
`at Abstract); and (2) a “[c]ellular radio telephone and modem” for wireless
`
`transmission of fault mess