`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.
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`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`
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`Page 1 of 24
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`Hyundai Exhibit 1014
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`Case IPR2014-00645
`Patent 6,738,697 B2
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`
`INTRODUCTION
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`On April 16, 2014, Mercedes-Benz USA, LLC (“Mercedes-Benz”)
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`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims
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`1, 2, 5, 6, 10, 18–22, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697 B2
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`(Ex. 1001, “the ’697 patent”). American Vehicular Sciences LLC (“AVS”)
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`waived the filing of a Preliminary Response on July 24, 2014. Paper 11.
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`We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a) which provides as follows:
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`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.
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`Upon consideration of Mercedes-Benz’s Petition, we determine that
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`Mercedes-Benz has established a reasonable likelihood that it would prevail
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`in showing the unpatentability of each of claims 1, 2, 5, 6, 10, 18–22, 26, 27,
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`32, 40, and 61 of the ’697 patent. Accordingly, pursuant to 35 U.S.C. § 314,
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`we institute an inter partes review as to claims 1, 2, 5, 6, 10, 18–22, 26, 27,
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`32, 40, and 61 of the ’697 patent.
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`A. Related Proceedings
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`
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`Mercedes-Benz indicates that the ’697 patent has been asserted by
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`AVS in multiple district court cases including: (1) American Vehicular
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`Sciences LLC v. Mercedes-Benz U.S. Intl., Inc., No. 6:13-cv-00310 (E.D.
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`Tex.); (2) American Vehicular Sciences LLC v. American Honda Motor Co.,
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`Inc. et al., No. 6:13-cv-226 (E.D. Tex.); (3) American Vehicular Sciences
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`2
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`LLC v. Toyota Motor Corp., et al., No. 6:12-cv-00405 (E.D. Tex.); (4)
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`American Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-cv-148
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`(E.D. Tex.); (5) American Vehicular Sciences LLC v. Hyundai Motor Co. et
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`al., No. 6:12-cv-776 (E.D. Tex.); and (6) American Vehicular Sciences LLC
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`v. BMW Group. A/K/A BMW AG et al., No. 6:12-cv-412 (E.D. Tex.). The
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`’697 patent also is the involved patent in these inter partes review
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`proceedings before the Board: Case IPR2013-00412; Case IPR2013-00413;
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`and Case IPR2014-00634.
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`B. The ’697 Patent Disclosure
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`
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`The disclosed invention of the ’697 patent is directed to a vehicle
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`diagnostic system that diagnoses the state of a vehicle or the state of a
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`component of the vehicle, and generates an output indicative or
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`representative of that diagnosed state. Ex. 1001, Abstract. A
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`communications device transmits that output to a remote location, possibly
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`via a satellite or the Internet. Ex. 1001, Abstract. In that regard, the
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`specification further states:
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`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.
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`Ex. 1001, 14:20–26.
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`
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`The Field of the Invention portion of the disclosure states that the
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`invention relates to methods and apparatus for diagnosing components in a
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`vehicle and transmitting data relating to the diagnosis, and other information
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`relating to the operating conditions of the vehicle, to one or more remote
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`3
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`locations via a telematics link. Ex. 1001, 1:37–42. The Objects of the
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`Invention portion of the disclosure states that it is an object of the invention
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`to provide a new and improved method and system for diagnosing
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`components in a vehicle and the operating status of the vehicle, and for
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`alerting the vehicle’s dealer, or another repair facility, via a telematics link,
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`that a component of the vehicle is functioning abnormally and may be in
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`danger of failing. Ex. 1001, 11:26–31.
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`C. Exemplary Claims
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`
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`Of the challenged claims 1, 2, 5, 6, 10, 18–22, 26, 27, 32, 40, and 61,
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`only claims 1 and 21 are independent claims. Claims 2, 5, 6, 10, and 18–20
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`each depend, directly or indirectly, from claim 1, and claims 22, 26, 27, 32,
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`40, and 61 each depend, directly or indirectly, from claim 21. Claims 1 and
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`21 are reproduced below:
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`A vehicle, comprising:
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`1.
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`a diagnostic system arranged on the vehicle to diagnose
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`the state of the vehicle or the state of a component of the
`vehicle and generate an output indicative or representative
`thereof; and
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`a communication device coupled to said diagnostic
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`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.
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`21. A method for monitoring a vehicle, comprising the steps
`of:
`
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`diagnosing the state of the vehicle or the state of a
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`component of the vehicle by means of a diagnostic system
`arranged on the vehicle;
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`4
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`
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`generating an output indicative or representative of the
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`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle; and
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`transmitting the output indicative or representative of the
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`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle from the vehicle to a remote location.
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`Ex. 1001, 85:16–26, 86:52–63.
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`D. Prior Art Relied Upon
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`
`Name
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`Reference
`
`Asano U.S. Patent No. 5,157,610
`
`Fry1
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`DiLullo
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`Sorden
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`
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`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
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`U.S. Patent No. 5,311,197
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`
`
`Ex. No.
`
`Date
`
`Oct. 20, 1992 Exhibit
`1002
`Exhibit
`1003
`
`Jan. 1995
`
`Jan. 30, 1990 Exhibit
`1004
`May 10, 1994 Exhibit
`1005
`
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`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.
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`E. Alleged Grounds of Unpatentability
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`
`Claims
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`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
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`§ 102(b)
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`§ 102(a)
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`§ 102(b)
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`§ 102(b)
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`Reference(s)
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`Asano
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`Fry
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`DiLullo
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`Sorden
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`§ 103(a)
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`Asano and Fry
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`§ 103(a)
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`DiLullo and Fry
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`
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`In support of the grounds above, Mercedes-Benz also presents a
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`declaration by David A. McNamara (Ex. 1006).
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`A. Claim Construction
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`ANALYSIS
`
`Principles of Law
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). The terms also are given their ordinary and customary meaning as
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`would be understood by one of ordinary skill in the art in the context of the
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). If an inventor acts as his or her own lexicographer, the definition
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`must be set forth in the specification with reasonable clarity, deliberateness,
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`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
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`1243, 1249 (Fed. Cir. 1998).
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`
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`An extraneous limitation should not be read into the claims from the
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`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
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`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
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`the presence of which in a claim is unnecessary for the purpose of making
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`sense of the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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`1994); Renishaw PLC, 158 F.3d at 1249. The construction that stays true to
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`the claim language and most naturally aligns with the inventor’s description
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`is likely the correct interpretation. See Renishaw PLC, 158 F.3d at 1250.
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`
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` “Comprising” is a term of art used in claim language, which means
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`that the named elements are essential, but other elements also may be
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`included to constitute additional components within the scope of the claim.
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`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
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`“component”
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`
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`Independent claims 1 and 21 both recite the term “component.” The
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`specification states:
`
`The term “component” refers to any part or assembly of
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`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.
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`Ex. 1001, 30:58–61.
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`
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`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
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`term “component” different from the ordinary and customary meaning, as
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`would be understood by one with ordinary skill in the art. Also, the above-
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`quoted language is not in the form of a definition, but is a portion of the
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`description of preferred embodiments. Based on the term itself,
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`“component” does not have to relate to a motor vehicle; nor does it have to
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`be capable of emitting a signal representative of its operating state. We do
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`not regard the above-quoted text as setting forth the inventor’s special
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`definition for the term “component.”
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`
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`In addition to describing a component as a part or assembly of parts
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`(Ex. 1001, 30:58–59), the ’697 patent specification provides exemplary
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`components that are less than the whole vehicle. Id. at 30:61–31:22. The
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`Board construes “component” as “a part or an assembly of parts, less than
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`the whole.”
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` “sensor system”
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`
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`Claim 10 recites the term “sensor system.” In that regard, the
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`specification states:
`
`As used herein, a “sensor system” includes any of the
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`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.
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`Ex. 1001, 10:58–61.
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`Mercedes-Benz does not contend that the inventor acted as his own
`
`lexicographer in coining a special meaning for a common term “sensor
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`system.” Also, the above-reproduced text refers to what a sensor system
`
`includes, not what it is.
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`Moreover, with regard to the phrase “as well as any type of
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`component or assembly of components which detect, sense, or measure
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`something,” we note that it would amount to impermissible functional
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`claiming if that is the meaning of a claim term. The language does not
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`invoke expressly means-plus-function treatment under 35 U.S.C. § 112, ¶ 6.2
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`Furthermore, the above-quoted text is circular, in that it uses the term sense
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`to describe a sensor system. It also is unclear how “measure” and “detect”
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`differ from “sense.”
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`
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`For all of the foregoing reasons, we do not regard the above-quoted
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`text as setting forth the inventor’s special definition for the term “sensor
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`system.” On this record, the term “sensor system” does not require an
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`express construction. We determine, however, that under the rule of
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`broadest reasonable interpretation, the term “sensor system” includes each of
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`the sensors particularly identified in the specification of the ’697 patent.
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`Dependent claims 2, 10, and 32 each recite the term “sensor.” The
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`“sensor”
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`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.
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`Mercedes-Benz does not contend that the named inventor of the ’697
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`patent acted as his own lexicographer and coined a new meaning for the
`
`term “sensor” different from the ordinary and customary meaning as would
`
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`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.”
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`be understood by one with ordinary skill in the art. The above-referenced
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`excerpt does not give one of ordinary skill adequate notice of a change in the
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`meaning of a common term or intent to redefine the term. See In re Paulsen,
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`30 F.3d at 1480. Also, the text is in a portion of the description of preferred
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`embodiments, uses the words “refers to,” and is followed by “a non-
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`exhaustive list” of more than forty exemplary automobile or truck sensors.
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`It is unclear how a “sensor” measures without sensing. Also, defining
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`“sensor” to mean a “sensing device” is circular and, thus, not meaningful.
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`For all the foregoing reasons, we do not regard the above-quoted text as
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`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
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`determine, however, that the term “sensor” includes each of the sensors
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`particularly identified in the specification of the ’697 patent.
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`“state of the vehicle”
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`
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`Independent claims 1 and 21 both recite the term “state of the
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`vehicle.” The specification states:
`
`As used herein, a diagnosis of the “state of the vehicle”
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`means a diagnosis of the condition of the vehicle with respect to
`its stability and proper running and operating condition.
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`Ex. 1001, 10:29–32.
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`
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`The above-quoted text refers to and explains “a diagnosis” of the state
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`of a vehicle, not what constitutes “state of the vehicle.” On this record, the
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`term “state of the vehicle” does not require an express construction. We
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`determine, however, that it encompasses any operating as well as structural
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`condition of the vehicle.
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` “display”
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`
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`Claim 5 recites the term “display.” The specification states, in part:
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`“The [output system] may be a display as mentioned above or a warning
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`device.” Ex. 1001, 81:34–36. The specification also refers to a display
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`separately from a warning device. Ex. 1001, 13:24–33. We determine that,
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`in the context of the ’697 patent, a warning lamp or light does not constitute
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`a “display,” and that a “display” covers a screen for showing information.
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`“display . . . arranged to display the diagnosis”
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`
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`Claim 5 recites the phrase “display . . . arranged to display the
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`diagnosis.” The specification states:
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`A display may be arranged in the vehicle in a position to
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`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.
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`Ex. 1001, 13:24–28.
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`
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`Claim 5 depends from claim 1. Claim 1 recites “a diagnostic system
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`arranged on the vehicle” that generates an output. Thus, the reference in
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`claim 5 to “the diagnosis” refers back to a diagnosis from the diagnostic
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`system arranged on the vehicle. On this record, a further construction of
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`“display . . . arranged to display the diagnosis” is not necessary.
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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
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`Mercedes-Benz asserts that claims 1, 2, 5, 10, 18, 19, 21, 26, 27, 32,
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`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
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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, 5, 10, 18, 19, 21, 26, 27, 32, 40, and 61
`
`is anticipated by DiLullo.
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`DiLullo’s disclosure relates to managing and monitoring the status of
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`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
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`management involves tracking, for each tractor and trailer, the following:
`
`(1) the location, (2) availability for service, (3) unauthorized use, if any, and
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`(4) mechanical condition. Id. at 1:22–44.
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`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
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`detachable trailer 14. Ex. 1004, 4:40–42. Tractor 12 includes cab 13. Id. at
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`4:42. Tractor 12 also includes tractor power bus 18, which runs throughout
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`tractor 12 and is energized by 12-volt battery 16. Id. at 4:43–47. Trailer 14
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`comprises normally de-engergized trailer power bus 20, which runs
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`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.
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`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.
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`Id. at 5:41–43. IFU 26 is coupled to tractor power bus 18 by means of
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`connection 30. Id. at 5:33–35.
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`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
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`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
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`connection 34 and trailer power bus 20. Id. at 5:25–32.
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`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
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`the absence of a comand to the contrary, MST 28 transmits NORMAL
`
`messages at regular preselected intervals. Id. at 6:7–10.
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`Fleet managers desire regular access to operating parameters of
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`vehicle 10. Ex. 1004, 1:42–46. Tractor sensors provide IFU 26 information
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`regarding tractor operating parameters such as speed, engine temperature, oil
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`pressure and the like. Id. at 6:44–48. Tag 24 may receive signals from
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`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
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`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
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`responsive to an abnormal tractor condition as indicated by a tractor sensor
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`to cause MST 28 to transmit the indication of the abnormal condition in an
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`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,
`
`and 61 is anticipated by DiLullo.
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`
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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
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`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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`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
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`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
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`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
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`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
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`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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`
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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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`
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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 i