Trials@uspto.gov
`Tel: 571-272-7822
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`
`Paper 12
`Entered: August 28, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`
`
`Case IPR2014-00645
`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 12
`Entered: August 28, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`
`
`Case IPR2014-00645
`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 IPR2014-00645
`Patent 6,738,697 B2
`
`
`INTRODUCTION
`
`On April 16, 2014, Mercedes-Benz USA, LLC (“Mercedes-Benz”)
`
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims
`
`1, 2, 5, 6, 10, 18–22, 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 24, 2014. Paper 11.
`
`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 Mercedes-Benz’s Petition, we determine that
`
`Mercedes-Benz has established a reasonable likelihood that it would prevail
`
`in showing the unpatentability of each of claims 1, 2, 5, 6, 10, 18–22, 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, 18–22, 26, 27,
`
`32, 40, and 61 of the ’697 patent.
`
`A. Related Proceedings
`
`
`
`Mercedes-Benz indicates that the ’697 patent has been asserted by
`
`AVS in multiple district court cases including: (1) American Vehicular
`
`Sciences LLC v. Mercedes-Benz U.S. Intl., Inc., No. 6:13-cv-00310 (E.D.
`
`Tex.); (2) American Vehicular Sciences LLC v. American Honda Motor Co.,
`
`Inc. et al., No. 6:13-cv-226 (E.D. Tex.); (3) American Vehicular Sciences
`
`2
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`Case IPR2014-00645
`Patent 6,738,697 B2
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`LLC v. Toyota Motor Corp., et al., No. 6:12-cv-00405 (E.D. Tex.); (4)
`
`American Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-cv-148
`
`(E.D. Tex.); (5) American Vehicular Sciences LLC v. Hyundai Motor Co. et
`
`al., No. 6:12-cv-776 (E.D. Tex.); and (6) American Vehicular Sciences LLC
`
`v. BMW Group. A/K/A BMW AG et al., No. 6:12-cv-412 (E.D. Tex.). The
`
`’697 patent also is the involved patent in these inter partes review
`
`proceedings before the Board: Case IPR2013-00412; Case IPR2013-00413;
`
`and Case IPR2014-00634.
`
`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
`
`3
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`Patent 6,738,697 B2
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`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,
`
`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, 18–22, 26, 27, 32, 40, and 61,
`
`only claims 1 and 21 are independent claims. Claims 2, 5, 6, 10, and 18–20
`
`each depend, directly or indirectly, from claim 1, and claims 22, 26, 27, 32,
`
`40, and 61 each depend, directly or indirectly, from claim 21. Claims 1 and
`
`21 are reproduced below:
`
`A vehicle, comprising:
`
`1.
`
`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;
`
`4
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`Case IPR2014-00645
`Patent 6,738,697 B2
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`
`
`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.
`
`Ex. 1001, 85:16–26, 86:52–63.
`
`D. Prior Art Relied Upon
`
`
`Name
`
`Reference
`
`Asano U.S. Patent No. 5,157,610
`
`Fry1
`
`DiLullo
`
`Sorden
`
`
`
`
`
`
`Diesel Locomotive Reliability
`Improvement by System Monitoring,
`209 PROC. INST. OF MECHANICAL
`ENGINEERS, PART F: J. OF RAIL &
`RAPID TRANSIT 1 (1995)
`U.S. Patent No. 4,897,642
`
`U.S. Patent No. 5,311,197
`
`
`
`Ex. No.
`
`Date
`
`Oct. 20, 1992 Exhibit
`1002
`Exhibit
`1003
`
`Jan. 1995
`
`Jan. 30, 1990 Exhibit
`1004
`May 10, 1994 Exhibit
`1005
`
`
`1 The copy of Fry, as submitted by Mercedes-Benz, includes an added cover
`sheet from the publisher, noting that the version of record was dated Jan. 1,
`1995.
`
`5
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`Patent 6,738,697 B2
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`
`E. Alleged Grounds of Unpatentability
`
`
`Claims
`
`Claims 1, 2, 10, 18, 21, 26,
`27, 32, and 61
`Claims 1, 2, 6, 10, 19, 20, 21,
`22, 32, 40, and 61
`Claims 1, 2, 5, 10, 18, 19, 21,
`26, 27, 32, 40, and 61
`Claims 1, 2, 6, 10, 19, 20, 21,
`22, 32, 40, and 61
`Claims 6, 18, 19, 20, 22, 26,
`27, and 40
`Claims 5, 6, 18, 20, 22, 26,
`and 27
`
`
`Ground
`
`§ 102(b)
`
`§ 102(a)
`
`§ 102(b)
`
`§ 102(b)
`
`Reference(s)
`
`Asano
`
`Fry
`
`DiLullo
`
`Sorden
`
`§ 103(a)
`
`Asano and Fry
`
`§ 103(a)
`
`DiLullo and Fry
`
`
`
`In support of the grounds above, Mercedes-Benz also presents a
`
`declaration by David A. McNamara (Ex. 1006).
`
`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.
`
`2007). If an inventor acts as his or her own lexicographer, the definition
`
`must be set forth in the specification with reasonable clarity, deliberateness,
`
`
`
`
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`6
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`Patent 6,738,697 B2
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`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.
`
`
`
`Mercedes-Benz 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 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
`
`7
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`Patent 6,738,697 B2
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`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.”
`
` “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.
`
`Mercedes-Benz 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
`
`8
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`Patent 6,738,697 B2
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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.
`
`Mercedes-Benz 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
`
`
`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.”
`
`
`
`9
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`Patent 6,738,697 B2
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`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, 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.
`
`10
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`
` “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.
`
`
`
`
`
`11
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`B. Alleged Anticipation of Claims 1, 2, 5, 10, 18, 19, 21, 26,
`27, 32, 40, and 61, under 35 U.S.C. § 102(b), by DiLullo
`
`Mercedes-Benz asserts that claims 1, 2, 5, 10, 18, 19, 21, 26, 27, 32,
`
`40, and 61 are anticipated, under 35 U.S.C. § 102(b), by DiLullo. In light of
`
`the arguments and evidence submitted Mercedes-Benz, we determine that
`
`Mercedes-Benz has established a reasonable likelihood that it would prevail
`
`in showing that each of claims 1, 2, 5, 10, 18, 19, 21, 26, 27, 32, 40, and 61
`
`is anticipated by DiLullo.
`
`DiLullo’s disclosure relates to managing and monitoring the status of
`
`multiple-part vehicles. Ex. 1004, Abstract. An application of the invention
`
`described in DiLullo is to assist fleet managers in the trucking industry in
`
`managing a fleet of tractor-trailers. Id. at 1:7–9, 14–17, 22–23. Fleet
`
`management involves tracking, for each tractor and trailer, the following:
`
`(1) the location, (2) availability for service, (3) unauthorized use, if any, and
`
`(4) mechanical condition. Id. at 1:22–44.
`
`DiLullo describes a status monitoring system for tractor-trailer
`
`vehicles. Ex. 1008, 2:3–5. Figure 1 of DiLullo is reproduced below:
`
`Figure 1 shows tractor-trailer vehicle 10 comprising tractor 12 and
`
`detachable trailer 14. Ex. 1004, 4:40–42. Tractor 12 includes cab 13. Id. at
`
`4:42. Tractor 12 also includes tractor power bus 18, which runs throughout
`
`
`
`12
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`tractor 12 and is energized by 12-volt battery 16. Id. at 4:43–47. Trailer 14
`
`comprises normally de-engergized trailer power bus 20, which runs
`
`throughout trailer 14. Id. at 4:48–50. Trailer power bus 20 is energized
`
`when electrically coupled via power cable 22 to tractor power bus 18. Id. at
`
`4:51–58.
`
`Each tractor 12 in the fleet is provided with interface unit (IFU) 26
`
`that communicates with onboard mobile satellite transmitter (MST) 28.
`
`Ex. 1004, 4:61–63. IFU 26 communicates with MST 28 via connection 36.
`
`Id. at 5:41–43. IFU 26 is coupled to tractor power bus 18 by means of
`
`connection 30. Id. at 5:33–35.
`
`Each trailer 14 in the fleet is provided with electronic tag 24 that
`
`identifies trailer 14. Ex. 1004, 4:59–61. Tag 24 is mounted in or on trailer
`
`14. Id. at 2:13–14. Tag 24 impresses an identification (ID) code unique to
`
`trailer 14 on trailer power bus 20 when energized. Id. at 2:13–15. When
`
`trailer 14 is connected to tractor 12, tag 24 communicates with IFU 26 via
`
`connection 34 and trailer power bus 20. Id. at 5:25–32.
`
`MST 28 is coupled to microwave antenna 32 for transmitting
`
`messages to an earth station via a space-based satellite, such as one of the
`
`GEOSTAR satellites. Ex. 1004, 4:63–67. MST 28 is capable of sending
`
`three types of transmission messages that are recognized by the GEOSTAR
`
`satellite: NORMAL, IMMEDIATE, and EMERGENCY. Id. at 6:4–7. In
`
`the absence of a comand to the contrary, MST 28 transmits NORMAL
`
`messages at regular preselected intervals. Id. at 6:7–10.
`
`Fleet managers desire regular access to operating parameters of
`
`vehicle 10. Ex. 1004, 1:42–46. Tractor sensors provide IFU 26 information
`
`regarding tractor operating parameters such as speed, engine temperature, oil
`
`13
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`pressure and the like. Id. at 6:44–48. Tag 24 may receive signals from
`
`trailer sensors regarding interior temperature and humidity of trailer 14. Id.
`
`at 6:35–39. Tag 24 may impress sensor data on power buses 18, 20 for
`
`reading and processing by IFU 26. Id. at 6:40–42. IFU 26 may, if desired,
`
`provide such information to MST 28 for inclusion with each transmission.
`
`Id. at 6:50–52.
`
`We have reviewed the arguments and evidence submitted by
`
`Mercedes-Benz with respect to claims 1, 2, 5, 10, 18, 19, 21, 26, 27, 32, 40,
`
`and 61 and the disclosure of DiLullo. For instance, the Petition points out
`
`that sensors 40 provide information regarding tractor operating parameter
`
`such as speed, engine temperature, and oil pressure, and that IFU 26 is
`
`responsive to an abnormal tractor condition as indicated by a tractor sensor
`
`to cause MST 28 to transmit the indication of the abnormal condition in an
`
`IMMEDIATE or EMERGENCY mode. Pet. 30–31 (citing Ex. 1004, 6:35–
`
`65). DiLullo discloses automatically, without manual intervention,
`
`transmitting the detected abnormal condition to a remote location. Ex. 1004,
`
`3:34–40; 6:60–65. With respect to claim 5, Figure 1 illustrates IFU 26 as
`
`positioned in the cab of the tractor, and IFU 26 includes a microcomputer
`
`having a display. Ex. 1004, 9:27–32; Figs. 1, 5.
`
`We are persuaded, on the present record, that Mercedes-Benz has
`
`shown a reasonable likelihood that it would prevail in demonstrating that the
`
`claimed invention of each of claims 1, 2, 5, 10, 18, 19, 21, 26, 27, 32, 40,
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`and 61 is anticipated by DiLullo.
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`C. Alleged Anticipation of Claims 1, 2, 6, 10, 19, 20, 21,
`22, 32, 40, and 61, under 35 U.S.C. § 102(b), by Sorden
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`Mercedes-Benz asserts that claims 1, 2, 6, 10, 19, 20, 21, 22, 32, 40,
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`and 61 are anticipated, under 35 U.S.C. § 102(b), by Sorden. In light of the
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`arguments and evidence submitted Mercedes-Benz, we determine that
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`Mercedes-Benz has established a reasonable likelihood that it would prevail
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`in showing that each of claims 1, 2, 6, 10, 19, 20, 21, 22, 32, 40, and 61 is
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`anticipated by Sorden.
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`Sorden discloses an apparatus carried on a vehicle for notifying others
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`that a vehicle accident or other abnormal situation has occurred. Ex. 1005,
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`Abstract:1-4. In the Background portion of its disclosure, Sorden states that
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`what is needed is a system that preferably allows broadcast of the type of
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`abnormality encountered, an assessment of the level of severity of the
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`abnormality, and information on the condition of the vehicle prior to and at
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`the time the abnormality occurred. Ex. 1005, 5:18-28. Sorden also discloses
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`broadcasting, in response to occurrence of an abnormal condition as
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`determined by vehicle operating sensors, the present location of the vehicle.
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`Ex. 1005, 6:11-15.
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`Sorden describes abnormality sensors 31 on a vehicle, which can be a
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`land vehicle, that detect the occurrence of an abnormal situation, such as
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`unexpected inoperability of the vehicle, rolling or side-over-side tumbling of
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`the vehicle, and unexpected immersion of the vehicle in water. Ex. 1005,
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`6:54–58; 8:34–52. Sorden discloses that when an abnormal situation is
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`sensed, its system automatically activates a transmitter which sends an
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`abnormal situation signal and other information about the situation.
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`Abstract:13–29. Figure 2 of Sorden is reproduced below:
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`Figure 2 illustrates a flow diagram of the operations performed on the
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`vehicle. As shown in the diagram, prior to transmitting information from the
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`vehicle in response to detection of an abnormal situation, the type of the
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`abnormal situation and the severity of the abnormal situation are determined
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`automatically in steps 49 and 51. Ex. 1005, 9:21–34. Such determined
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`information about the abnormal situation also are sent by the transmitter.
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`Ex. 1005, 6:30–32; 9:36–40; Abstract:27-29.
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`We have reviewed the evidence and arguments submitted by
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`Mercedes-Benz in its Petition. The evidence includes the claim chart on
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`pages 40–48 of the Petition and the declaration of Mr. McNamara. We are
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`persuaded that the submission established a reasonable likelihood that
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`Mercedes-Benz will demonstrate unpatentability of claims 1, 2, 6, 10, 19,
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`20, 21, 22, 32, 40, and 61 as anticipated by Sorden.
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`For instance, for claims 1, 21, and 61, the claim chart on pages 40–41
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`identifies correctly that in Sorden: (1) onboard sensors sense an abnormal
`
`situation; (2) an onboard system determines the type and severity of the
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`abnormal situation; and (3) the abnormal situation may be unexpected
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`inoperability of the vehicle, rolling or side-to-side tumbling of the vehicle, or
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`immersion of the vehicle in water. The type and severity of the sensed
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`abnormal situation are outputs indicative or representative of the state of the
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`vehicle. The claim chart on pages 42–43 also identifies correctly that a
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`transmitter is activated automatically and that the transmitter wirelessly
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`transmits information on the type and severity of the abnormal situation.
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`
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`Furthermore, with regard to claims 2, 10, and 32, the claim chart on
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`page 44 identifies disclosure in Sorden of sensors 31, carried on the vehicle,
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`for detecting the occurrence of an abnormal situation. With regard to claims
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`6 and 22, the claim chart on page 45 identifies the disclosure in Sorden of
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`using a cellular telephone associated with transmitter 22 for wirelessly
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`sending information about the sensed abnormal situation. For claims 19, 20,
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`and 40, the claim chart on pages 45–46 identifies the disclosure in Sorden of
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`a location determining system, using GPS (Global Positioning System)
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`technology, to determines the location of the vehicle, and the disclosure in
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`Sorden of wirelessly transmitting that determined location.
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`D. Alleged Anticipation of Claims 1, 2, 10, 18, 21, 26,
`27, 32, and 61, under 35 U.S.C. § 102(b), by Asano
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`Mercedes-Benz asserts that claims 1, 2, 10, 18, 21, 26, 27, 32, and 61
`
`are anticipated, under 35 U.S.C. § 102(b), by Asano. In light of the
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`arguments and evidence submitted Mercedes-Benz, we determine that
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`Mercedes-Benz has established a reasonable likelihood that it would prevail
`
`in showing that each of claims 1, 2, 10, 18, 21, 26, 27, 32, and 61 is
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`anticipated by Asano. The independent claims are 1 and 21. Claims 2, 10,
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`18, 21, 26, 27, 32, and 61 each depend directly or indirectly from claim 1 or
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`claim 21.
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`Asano discloses a vehicle-mounted computer, an embodiment of
`
`which is illustrated in Figure 2, reproduced below:
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`As shown in Figure 2, computer 105 has central processing unit
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`(CPU) 7 that receives operating signals from sensors by way of bus line 30,
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`to which multiplexer 36 and analog to digital conversion circuits 38 and 52
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`are connected. Ex. 1002, 6:14–30. Sensors, including engine cooling water
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`temperature sensor (TWS) 32 and air/fuel ratio sensor (O2S) 34, sense the
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`engine operating conditions. Id. at 19–22. CPU 7 carries out computations
`
`based on the engine operating conditions. Ex. 1002, 6:43–47. Additionally,
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`CPU 7 is connected to display 90 to display instructions to the driver. Id.
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`at 6:67–68.
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`Asano discloses failure diagnosis on a vehicle. In that connection,
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`Figure 6 is reproduced below:
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`Figure 6 illustrates a functional diagram of failure diagnosis
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`processing. Ex. 1002, 5:23. Computations for failure diagnosis are carried
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`out at predetermined intervals. Id. at 9:1-3. The period of each interval can
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`be about 60 milliseconds. Id. at 9:10-13. At step 6a shown in Figure 6, a
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`diagnostic mode starts onboard the vehicle. Id. at 9:10. Next, in step 6b, a
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`decision is made onboard the vehicle on whether an abnormality exists based
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`on the results of diagnosis. Id. at 9:13-14. If no abnormality exists, the
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`process ends. Id. at 9:14-15. When a decision is made in step 6b, onboard
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`the vehicle, that an abnormality exists, then an abnormality code is
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`transmitted, in step 6n, to the host computer at a dealer, through transmitter-
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`receivers. Id. at 9:15-18; Figure 6.
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`Mercedes-Benz provides a detailed claim chart that maps each claim
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`limitation to the disclosure of Asano. Pet. 12-17. We discuss specific
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`examples below.
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`1. Claims 1, 21, and 61
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`Apparatus claim 1 recites a vehicle, comprising a diagnostic system,
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`arranged on the vehicle, to diagnose the state of the vehicle or the state of a
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`component of the vehicle, and to generate an output indicative or
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`representative of that state. Claim 1 also recites a communication device
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`arranged to establish automatically wireless communication to transmit the
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`output to a remote facility. Method claim 21 recites a method for
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`monitoring a vehicle, comprising the steps of (1) diagnosing the state of the
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`vehicle or the state of a component of the vehicle by means of a diagnostic
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`system arranged on the vehicle; (2) generating an output indicative or
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`representative of that diagnosed state; and (3) transmitting that output to a
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`remote facility. Claim 61 depends from claim 21 and recites that the
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`transmitting step comprises “automatically establishing” a communications
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`channel between the vehicle and the remote facility.
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`As Mercedes-Benz notes (Pet. at 10–13), Asano discloses an onboard
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`computer that receives inputs from various sensors monitoring operating
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`conditions of the vehicle and carries out computations based on the
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`operating condition signals from the sensors. Ex. 1002, 6:14–47. Mercedes-
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`Benz correctly notes (Pet. at 12) that at least one of water temperature,
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`air/fuel ratio, air flow quantity, battery voltage, throttle valve opening angle,
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`engine speed, transmission gear position and suspension setting is detected.
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`Id. at 2:25-30; 3:59-63.
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`Mercedes-Benz notes (Pet. at 10–13) correctly that the onboard
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`computer uses sensor data to make a “basic abnormal diagnosis” and leaves
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`more advanced comprehensive diagnosis to a remote host computer. Ex.
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`1002, 9:1–9. Mercedes-Benz further notes (Pet. at 13–14) correctly that in
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`Asano, when an abnormality exists, an abnormal code is generated and is
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`transmitted to a remote host computer located at a dealer. Id. at 8:65–9:18;
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`3:10–13; Fig. 6. Also, Mercedes-Benz notes that the transmission can be
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`through a wireless radio link. Pet., 11 (citing Ex. 1002, 5:50-54). No
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`manual input is described anywhere in the specification of Asano including
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`the drawings. We determine, on the present record, that the evidence
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`supports a finding that the wireless transmission occurs automatically,
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`without manual intervention.
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`2. Claims 2, 10, and 32
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`With regard to claims 2, 10, and 32, each of which requires a plurality
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`of sensors mounted on the vehicle, each of which providing a measurement
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`related to a state of the sensor or a state of the mounting location, and a
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`processor producing an output indicative of the state of the vehicle or of a
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`component of the vehicle on the basis of such measurement, Mercedes-Benz
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`identifies such disclosures in Asano. Pet., 14–15.
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`3. Claims 18, 26, and 27
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`Claim 18 depends from claim 1 and requires a warning device
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`coupled to “the diagnostic system,” for relaying to an occupant of the
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`vehicle a warning relating to the state of the vehicle or a component of the
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`vehicle, as diagnosed by “said diagnostic system.” In that context, “said
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`diagnostic system” refers to that diagnosis performed by the diagnostic
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`system arranged on the vehicle, as recited in claim 1. Claim 18 requires
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`only that the warning be “related” to the state of the vehicle or the state of
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`the component of the vehicle, as diagnosed by the onboard diagnostic
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`system. Details of the warning need not have been determined by the
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`onboard diagnostic system. Mercedes-Benz identifies (Pet., 16) numerous
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`portions of Asano which describes displaying data, instruction, or alarm
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`relating to the state of the vehicle as dignosed by the onboard computer.
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`Claim 26 depends from claim 21, and further recites the steps of
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`arranging a display in the vehicle, and displaying the state of the vehi
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