`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`Hyundai Motor Company
`Petitioner
`
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`
`
`Patent No. 6,738,697
`Filing Date: July 3, 2002
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`_________________
`
`
`Inter Partes Review No. Unassigned
`
`__________________________________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`
`GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. §
`42.104(a) .......................................................................................................... 2
`
`III. THE ’697 PATENT ......................................................................................... 3
`
`A.
`
`B.
`
`Summary of the ’697 Patent .................................................................. 3
`
`The ’697 Prosecution History ............................................................... 5
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(b) ....................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes
`Review Is Requested ............................................................................. 6
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds
`on Which the Challenge to the Claims Is Based ................................... 6
`
`37 C.F.R. § 42.104(b)(3): Claim Construction ..................................... 7
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims Are
`Unpatentable ........................................................................................ 10
`
`E.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................. 10
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’697 PATENT IS UNPATENTABLE .................... 10
`
`A. Ground 1: Claims 1, 2, 10, 17, 18, 21, 26, 27, 32, and 61 Are
`Anticipated Under § 102(b) by Ishihara .............................................. 10
`
`1.
`
`2.
`
`3.
`
`Claims 1, 21, and 61 ................................................................. 11
`
`Claims 2, 10, and 32 ................................................................. 16
`
`Claims 17, 18, 26, and 27 ......................................................... 18
`
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`4.
`
`Ishihara Is Not Redundant of Any Other Grounds in This
`Petition ...................................................................................... 23
`
`B.
`
`Ground 2: Claims 5, 6, 18, 22, 26, and 27 Are Obvious over
`Ishihara and Schricker ......................................................................... 24
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claims 6 and 22 ......................................................................... 25
`
`Claims 18, 26, and 27 ............................................................... 26
`
`Claim 5 ...................................................................................... 28
`
`The Combination of Ishihara and Schricker Is Not
`Redundant of Any Other Grounds in This Petition .................. 30
`
`C.
`
`Ground 3: Claims 6, 19, 20, 22, and 40 Are Obvious over
`Ishihara and Mansell ........................................................................... 31
`
`1.
`
`2.
`
`3.
`
`Claims 6 and 22 ......................................................................... 31
`
`Claims 19, 20, and 40 ............................................................... 32
`
`The Combination of Ishihara and Mansell Is Not
`Redundant of Any Other Grounds in This Petition .................. 34
`
`D. Ground 4: Claims 1, 2, 5, 10, 17, 18, 19, 21, 26, 27, 32, 40, and
`61 Are Anticipated Under § 102(b) by DiLullo .................................. 35
`
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) .......... 38
`
`A.
`
`B.
`
`C.
`
`37 C.F.R. § 42.8(b)(1): Real Party-in-Interest .................................... 38
`
`37 C.F.R. § 42.8(b)(2): Related Matters ............................................. 38
`
`37 C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................. 39
`
`VII. CONCLUSION .............................................................................................. 40
`
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`
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`LIST OF EXHIBITS
`
`Exhibit 1001: U.S. Patent No. 6,738,697 to Breed (“the ’697 patent”)
`
`Exhibit 1002: File History of U.S. Patent No. 6,738,697 to Breed
`
`Exhibit 1003: Japanese Unexamined Patent Application Publication No.
`JP-A-H01-197145 to Ishihara (“Ishihara”)
`
`Exhibit 1004: English Translation of Japanese Unexamined Patent
`Application Publication No. JP-A-H01-197145 to Ishihara
`(“Ishihara”)
`
`Exhibit 1005: U.S. Patent No. 5,561,610 to Schricker et al. (“Schricker”)
`
`Exhibit 1006: U.S. Patent No. 5,223,844 to Mansell et al. (“Mansell”)
`
`Exhibit 1007: U.S. Patent No. 4,897,642 to DiLullo et al. (“DiLullo”)
`
`Exhibit 1008: Declaration of Christopher Wilson (“Wilson Decl.”)
`
`Exhibit 1009: Preliminary Response of Patent Owner, Paper 16 in Case
`IPR2013-00412 (October 17, 2013)
`
`Exhibit 1010: Decision, Institution of Inter Partes Review, Paper 18 in
`IPR2013-00412 (January 13, 2014)
`
`Exhibit 1011: Decision, Institution of Inter Partes Review, Paper 16 in
`IPR2013-00413 (January 13, 2014)
`
`Exhibit 1012: American Vehicular Sciences LLC’s Disclosure of Asserted
`Claims and Infringement Contentions and Identification of
`Document Production Accompanying Disclosure, in Case
`No. 6:12-cv-00776 (E.D. Tex.) (cover pleading only) (“AVS
`Infringement Contentions”)
`
`Exhibit 1013: Decision, Institution of Inter Partes Review, Paper 8 in
`IPR2014-00634 (August 26, 2014)
`
`Exhibit 1014: Decision, Institution of Inter Partes Review, Paper 12 in
`IPR2014-00645 (August 28, 2014)
`
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`Hyundai Motor Company (“Petitioner”) respectfully requests inter partes
`
`review under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 of claims 1, 2, 5, 6, 10,
`
`17-22, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697 (“the ’697 patent”),
`
`attached hereto as Exhibit 1001.
`
`The undersigned representative of Petitioner authorizes the Patent Office to
`
`charge the $23,400 Petition Fee, along with any additional fees, to Deposit
`
`Account 06-0916. Sixteen (16) claims are being reviewed.
`
`I.
`
`INTRODUCTION
`
`The ’697 patent is one of a multitude of patents owned by American
`
`Vehicular Sciences LLC (“AVS”) and asserted against the automotive industry, in
`
`an attempt to cover long-known systems and methods relating to automotive
`
`diagnostics and telematics. See, e.g., Am. Vehicular Scis. LLC v. Hyundai Motor
`
`Co. et al., No. 2:14-cv-13247 (E.D. Mich.); Am. Vehicular Scis. v. Kia Motors Inc.
`
`et al., No. 2:14-cv-13249 (E.D. Mich.); Am. Vehicular Scis. LLC v. Am. Honda
`
`Motor Co., Inc. et al., No. 2:14-cv-13251 (E.D. Mich.); Am. Vehicular Scis. LLC v.
`
`Toyota Motor Corp. et al., No. 6:13-cv-00405 (E.D. Tex.). The ’697 patent is
`
`directed to a diagnostic system and method on a vehicle that diagnoses the state of
`
`the vehicle or a component thereof, generates an output representative of the
`
`diagnosis, and then uses a communications device to automatically connect to a
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`remote facility in order to wirelessly transfer the output to the remote facility.
`
`(See, e.g., ’697 patent, Ex. 1001, claim 1.)
`
`The diagnostic system and method claimed in the ’697 patent was neither
`
`new nor non-obvious at the time the ’697 patent was filed. This Petition sets forth
`
`grounds that each independently render the claims of the ’697 patent invalid. Each
`
`of these grounds are based upon patents or printed publications that were publicly
`
`available prior to the earliest priority date of the ’697 patent. Further, none of
`
`these grounds are redundant of either any other ground set forth in this petition.
`
`The Patent Trial and Appeal Board recognized a reasonable likelihood that certain
`
`claims of the ’697 patent are invalid. (Institution Decision in IPR2014-00634,
`
`Ex. 1013, at 27-28; Institution Decision in IPR2014-00645, Ex. 1014, at 23;
`
`Institution Decision in IPR2013-00412, Ex. 1010, at 39-40; Institution Decision in
`
`IPR 2013-00413, Ex. 1011, at 31.)1 Accordingly, in this petition, Petitioner
`
`challenges claims 1, 2, 5, 6, 10, 17-22, 26, 27, 32, 40, and 61.
`
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(a)
`Petitioner certifies that (1) the ’697 patent is available for inter partes
`
`review; and (2) Petitioner is not barred or estopped from requesting inter partes
`
`
`1 Cases IPR2013-00412 and IPR2013-00413 have been terminated under 37 C.F.R.
`
`§ 42.72 pursuant to a settlement agreement between the parties.
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`review of claims 1, 2, 5, 6, 10, 17-22, 26, 27, 32, 40, or 61 of the ’697 patent on the
`
`grounds identified in this petition; nor is Petitioner in privity with any party who is
`
`barred or estopped from challenging the patent claims on the grounds identified
`
`herein. In particular, as this Petition is accompanied by a motion to join IPR2014-
`
`00634 (“the 634 IPR”) under 37 C.F.R. §§ 42.22 and 42.122(b), the one-year time
`
`limitation prescribed by 35 U.S.C. § 315(b) does not apply. See 35 U.S.C.
`
`§ 315(b) (“The time limitation set forth in the preceding sentence shall not apply to
`
`a request for joinder under subsection (c).”); see also Microsoft Corp. v.
`
`Proxyconn, Inc., Case No. IPR2013-00109, Paper No. 15 at 4 (“[T]he one-year
`
`time bar does not apply to a request for joinder.”). This petition is timely under
`
`37 C.F.R. §§ 42.22 and 42.122(b), as it is submitted within one month of August
`
`26, 2014, the date that the 634 IPR was instituted.
`
`III. THE ’697 PATENT
`Summary of the ’697 Patent
`A.
`The ’697 patent was filed on July 3, 2002, and issued on May 18, 2004. The
`
`’697 patent claims priority to U.S. Patent App. No. 08/476,077, which was filed
`
`June 7, 1995 and issued as U.S. Patent No. 5,809,437. The subject matter of
`
`claims 19, 20, and 40 of the ’697 patent disclose transmitting GPS or location
`
`information, and AVS admits that the claims have, at best, an effective filing date
`
`of June 19, 2002, the filing date of U.S. Patent App. No. 10/174,709, now U.S.
`
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`
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`Patent No. 6,735,506. (See AVS Infringement Contentions, Ex. 1012, § IV, p. 5.)
`
`None of the earlier applications referenced by the ’697 patent disclose or make any
`
`reference to transmitting GPS or location information as required by these claims.
`
`The ’697 patent is directed to a diagnostic system and method on a vehicle.
`
`The diagnosed “state of the vehicle” is a “diagnosis of the condition of the vehicle
`
`with respect to its stability and proper running and operating condition.” (’697
`
`patent, Ex. 1001, 10:29-32.) More particularly, the diagnostic system and method
`
`is able to detect various abnormalities in the operation of the vehicle as a whole
`
`and also to determine if “one of the parts of the vehicle, e.g., a component, system
`
`or subsystem, is operating abnormally.” (Id. 10:32-41, 14:34-37.) The system also
`
`includes a communications device, such as a “cellular telephone system” or
`
`“satellite” system that allows the output of the diagnostic system to be
`
`automatically transmitted to a remote location, such as a “repair facility.” (See id.
`
`1:53-60, 13:34-42.) In some embodiments, the diagnosis may be indicated to the
`
`driver either through a display or a warning system. (See id. 13:24-33, 14:39-44,
`
`38:51-59, 41:9-19, 53:23-27, 82:64-83:1, Fig. 8.) Additionally, the system can
`
`also include a location determining system, such as a GPS system; and, vehicle
`
`location information can then be transmitted to the remote facility along with the
`
`diagnostic information. (Id. 13:54-58.)
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`
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`The ’697 Prosecution History
`
`B.
`The ’697 patent was allowed after a single Office Action by the Examiner
`
`and response by the Applicant. The Office Action rejected certain claims as being
`
`anticipated by U.S. Patent No. 5,056,023 to Abe (“Abe”). (File History of ’697
`
`Patent, Ex. 1002, at 173.) The Examiner found that all elements of independent
`
`claim 1 were disclosed by Abe. (Id.) Certain claims were also rejected as being
`
`unpatentable over Abe and U.S. Pat. Pub. No. 2002/0103622 to Burge (“Burge”).
`
`(Id. at 173-74.) Burge disclosed, among other elements, “a cellular telephone”;
`
`“GPS technology”; “transmission of the output to a remote location”; and “wireless
`
`communication via the Internet or a host computer.” (Id. at 174.) Finally, the
`
`Examiner rejected certain claims as unpatentable over Abe, Burge, and U.S. Pat.
`
`No. 5,581,464 to Woll (“Woll”). (Id. at 175.) Among other things, Woll disclosed
`
`“a display . . . arranged in a vehicle.” (Id.)
`
`In an attempt to distinguish the pending claims from Abe, Burge, and Woll,
`
`the applicant amended independent claim 1 to recite that the diagnostic system was
`
`arranged “on the vehicle” and that the communications device was arranged to
`
`“automatically establish a communications channel between the vehicle and a
`
`remote facility without manual intervention” and to transmit the output
`
`“wirelessly” and to a “remote facility.” (Id. at 181.) Claim 1 ultimately issued in
`
`this form. The applicant also amended independent Claim 21 to specify that the
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`transmitted output was “indicative or representative of the diagnosed state of the
`
`vehicle or the diagnosed state of the component.” (Id. at 183.)
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(b)
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`Requested
`Inter partes review is requested for claims 1, 2, 5, 6, 10, 17-22, 26, 27, 32,
`
`40, and 61 of the ’697 patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on
`Which the Challenge to the Claims Is Based
`Inter partes review is requested in view the following prior art references:
`
`• Japanese Unexamined Patent Application Publication JP-A-H01-197145 to
`
`Ishihara et al. (“Ishihara”) (Exs. 1003 and 1004 (English translation)). Ishihara
`
`was on published December 17, 1993, and is prior art under 35 U.S.C. § 102(b).
`
`• U.S. Patent No. 5,561,610 to Schricker et al. (“Schricker”) (Ex. 1005).
`
`Schricker was filed June 30, 1994, and issued on October 1, 1996, and is prior
`
`art under 35 U.S.C. § 102(e).
`
`• U.S. Patent No. 5,223,844 to Mansell et al. (“Mansell”) (Ex. 1006). Mansell
`
`issued on June 29, 1993, and is prior art under 35 U.S.C. § 102(b).
`
`• U.S. Patent No. 4,897,642 to DiLullo et al. (“DiLullo”) (Ex. 1007). DiLullo
`
`issued on January 30, 1990, and is prior art under 35 U.S.C. § 102(b).
`
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`The specific statutory grounds on which the challenge to the claims is based
`
`and the patents or printed publications relied upon for each ground are as follows:
`
`’697 Patent Claims
`Ground
`Ground 1 Claims 1, 2, 10, 17, 18, 21, 26,
`27, 32, 61
`
`Basis for Challenge
`Anticipated under § 102(b) by
`Ishihara
`
`Ground 2 Claims 5, 6, 18, 22, 26, 27
`
`Ground 3 Claims 6, 19, 20, 22, 40
`
`Ground 4 Claims 1, 2, 5, 10, 17, 18, 19, 21,
`26, 27, 32, 40, 61
`
`Obvious under § 103 over Ishihara
`and Schricker
`Obvious under § 103 over Ishihara
`and Mansell
`Anticipated under § 102(b) by
`DiLullo
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`C.
`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this
`
`review, Petitioner construes the claim language such that the claims are given their
`
`broadest reasonable interpretation in light of the specification of the ’697 patent.
`
`For terms not specifically listed and construed below, Petitioner interprets them for
`
`purposes of this review in accordance with their plain and ordinary meaning under
`
`the required broadest reasonable interpretation.
`
`“component” — Claims 1, 2, 5, 10, 17, 18, 21, 26, and 32. In the IPR2014-
`
`00634, IPR2013-00412 and IPR2013-00413 proceedings, the Board adopted the
`
`construction “a part or an assembly of parts, less than the whole” for the term
`
`“component,” and Petitioner adopts the same. The Board further stated that
`
`“component” does not have to relate to a motor vehicle; nor does it have to be
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`capable of emitting a signal representative of its operating state. (Ex. 1013 at 7-8;
`
`Ex. 1010 at 7-8; Ex. 1011 at 7.)
`
`“display” — Claims 5 and 26. In the IPR2014-00634, IPR2013-00412, and
`
`IPR2013-00413 proceedings, the Board adopted the construction “a screen for
`
`showing information” for the term “display,” and Petitioner adopts the same.
`
`(Ex. 1013 at 12; Ex. 1010 at 13; Ex. 1011 at 13.)
`
`“diagnostic system arranged on the vehicle” — Claim 1. In the IPR2013-
`
`00412 and IPR2013-00413 proceedings, the Board found that “diagnostic system
`
`arranged on the vehicle” should be construed in accordance with its plain and
`
`ordinary meaning—while not excluding “the possibility that the diagnostic system
`
`may acquire instructions, data, or commands from a remote source” or excluding
`
`“an additional diagnostic system that is located remotely from the vehicle”—and
`
`Petitioner adopts the same. (Ex. 1010 at 14-15.)
`
`“sensor system” — Claim 10. In the IPR2014-00634, IPR2013-00412, and
`
`IPR2013-00413 proceedings, the Board found that “sensor system” should be
`
`construed in accordance with its plain and ordinary meaning, provided that the
`
`construction of the term would include each of the sensors identified in the
`
`specification of the ’697 patent, and Petitioner adopts the same. (Ex. 1013 at 10;
`
`Ex. 1010 at 9-10; Ex. 1011 at 8-10.)
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`“sensor” — Claims 2, 10, and 32. In the IPR2013-00412 and IPR2013-
`
`00413 proceedings, the Board found that “sensor” should be construed in
`
`accordance with its plain and ordinary meaning, provided that the construction of
`
`the term would include each of the sensors identified in the specification of the
`
`’697 patent, and Petitioner adopts the same. (Ex. 1013 at 10-11; Ex. 1010 at 10-
`
`11; Ex. 1011 at 10-11.)
`
`“diagnosis of the state of the vehicle” — Claim 5. In the IPR2013-00412
`
`and IPR2013-00413 proceedings, the Board adopted the construction “diagnosis of
`
`the condition of the vehicle with respect to its stability and proper running and
`
`operating condition” for the term “diagnosis of the state of the vehicle,” and
`
`Petitioner adopts the same. (Ex. 1010 at 12-13; Ex. 1011 at 12.)
`
`“state of the vehicle” — Claims 1 and 21. In the IPR2014-00634
`
`proceeding, the Board found that “state of the vehicle” should be construed in
`
`accordance with its plain and ordinary meaning, provided that the construction of
`
`the term would include any operating as well as structural condition of the vehicle,
`
`and Petitioner adopts the same. (Ex. 1013 at 11.)
`
`“control at least one part of the vehicle” — Claim 17. In the IPR2014-
`
`00634, IPR2013-00412, and IPR2013-00413 proceedings, the Board found that
`
`“control at least one part of the vehicle” should be construed in accordance with its
`
`plain and ordinary meaning and should not be limited to “controlling any particular
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`type or kind of ‘part’ of the vehicle,” and Petitioner adopts the same. (Ex. 1013 at
`
`12; Ex. 1010 at 13; Ex. 1011 at 12-13.)
`
`Because the standard for claim construction at the Patent Office is different
`
`than that used during a U.S. District Court litigation, Petitioner expressly reserves
`
`the right to argue a different claim construction in litigation for any term of the
`
`’697 patent as appropriate in that proceeding.
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims Are
`Unpatentable
`
`An explanation of how claims 1, 2, 5, 6, 10, 17-22, 26, 27, 32, 40, and 61 are
`
`unpatentable is set forth below at Section V.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`A List of Exhibits supporting this petition is included. Included at Exhibit
`
`1008 is a Declaration of Christopher Wilson under 37 C.F.R. § 1.68. Unless
`
`otherwise noted, citations to page numbers in the exhibits are to the page numbers
`
`appended to each page of the exhibits under 37 C.F.R. § 42.63(d)(2)(i), and not to
`
`page numbers present in the original document.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’697 PATENT IS UNPATENTABLE
`A. Ground 1: Claims 1, 2, 10, 17, 18, 21, 26, 27, 32, and 61 Are
`Anticipated Under § 102(b) by Ishihara
`
`Claims 1, 2, 10, 17, 18, 21, 26, 27, 32, and 61 are anticipated by Ishihara
`
`(Exs. 1003 & 1004). Ishihara describes a failure diagnosis apparatus for a vehicle
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`that detects failures on-board the vehicle and automatically transmits the failure
`
`data to a remote location via a communications device.
`
`Claims 1, 21, and 61
`
`1.
`Claims 1, 21, and 61 describe a system (and method of the same) that
`
`diagnoses the vehicle and/or its components and generates an output, and a
`
`communications device that automatically transmits the output to a remote location
`
`without manual intervention. Ishihara discloses a “failure diagnosis apparatus for a
`
`vehicle,” (Ex. 1004, p. 1, col. 1), that discloses all the elements of independent
`
`claims 1 and 21. Ishihara discloses that the “failure diagnosis apparatus 1 is
`
`configured to include an on-board apparatus 2,” (id. p. 2, col. 2), and the “on-board
`
`apparatus 2 is configured to include a ʻcontrol unit 4’ that controls various devices
`
`or systems on board [the vehicle] and detects failures.” (Id. p. 2, col. 2; Figs. 1 &
`
`2.) Specifically, Ishihara discloses a “control unit 4” with a “failure detection
`
`section 16b [that] determines whether or not abnormality exists in the input signals
`
`11a to 14a from each of the above sensors 11 to 14,” (id. p. 2, col. 2–p. 3, col. 1),
`
`in connection with various monitored vehicle components. If it is determined “that
`
`there is a failure, an identification code for failure content is appended in front of
`
`. . . failure data, and whether or not a warning lamp 22 needs to be turned on is
`
`determined based on the identification code,” and the code and data are wirelessly
`
`“transmitted” to a “failure diagnosis station . . . outside the vehicle, such as a
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`service shop.” (Id. p. 4, col. 1; Figs. 1 & 2.) The on-board generation of an
`
`identification code and determination of whether a warning lamp needs to be
`
`activated show that the failure detection section 16b performs an on-board
`
`diagnosis, thus meeting claims 1 and 21’s requirement of generating “an output
`
`indicative or representative” of a diagnosis performed by a “diagnostic system
`
`arranged on the vehicle.” (Wilson Decl. ¶ 41.)
`
`Ishihara further discloses “a transmitting unit that transmits, at an occurrence
`
`of the failure, an output signal from the failure detection unit to a failure diagnosis
`
`station outside the vehicle,” (Ex. 1004, p. 2, col. 1), where “all data is
`
`automatically transmitted to the failure diagnosis station outside the vehicle.” (Id.
`
`p. 2, col. 1; see also id. Figs. 1 & 2.) The claim charts below identify the specific
`
`portions of Ishihara that disclose all of the limitations of claims 1, 21, and 61:
`
`’697 Patent –
`Claim 1
`(1.pre) A
`vehicle,
`comprising:
`(1.a) 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
`
`Ishihara (Exs. 1003 & 1004)
`
`See, e.g., Title (“Failure Diagnosis Apparatus for Vehicle”);
`p. 1, col. 1 (“The present invention relates to a failure diagnosis
`apparatus for a vehicle . . . .”).
`See, e.g., p. 2, col. 1 (“The configuration, which has a failure
`detection unit that detects a failure of an on-board device and a
`transmitting unit that transmits, at an occurrence of the failure,
`an output signal from the failure detection unit to a failure
`diagnosis station outside the vehicle, . . . .”);
`p. 2, col. 2 (“The failure diagnosis apparatus 1 is configured to
`include an on-board apparatus 2 . . . . The on-board apparatus 2
`is configured to include a control unit 4 that controls various
`devices or systems on board and detects failures thereof . . . .”);
`p. 2, col. 2 (“The control unit 4 controls an automatic
`transmission mounted in the vehicle. To the unit 4 are
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`

`
`
`output
`indicative or
`representative
`thereof; and
`
`(1.b) a
`communications
`device coupled
`to said
`diagnostic
`system and
`arranged to
`automatically
`establish a
`communications
`
`connected a vehicle speed sensor 11 that detects vehicle speed, a
`throttle sensor 12 that detects the degree of throttle opening of
`the engine, a turbine sensor 13 that detects turbine rotational
`frequency of a torque converter, and an idle switch 14 that
`detects idle status of the engine, and output signals 11a, 12a,
`13a, and 14a from these sensors 11, 12, 13, and 14 are input to a
`computer 16 in the control unit 4 . . . .”);
`p. 3, col. 1 (“The computer 16 is configured to include a control
`section 16a and failure detection section 16b . . . . The failure
`detection section 16b determines whether or not abnormality
`exists in the input signals 11a to 14a from each of the above
`sensors 11 to 14 and the control signals 18a to 20a in light of
`data or a program saved in the memory 17 to detect the
`occurrence of a failure in the automatic transmission or its
`control system. For a predetermined abnormality, a warning
`lamp 22 is turned on via the output processing circuit 21 at the
`time of its occurrence.”);
`p. 4, col. 1 (“[I]n Step S1, the input signals 11a to 14a from each
`of the sensors 11 to 14 and control signals 18a to 20a output to
`each of the solenoids 18 to 20 used for controlling the automatic
`transmission are input to the failure detection section 16b of the
`computer 16, and whether or not a failure exists is detected
`based on a program saved in memory 17. If it is determined in
`Step S2 that there is a failure, an identification code for failure
`content is appended in front of the failure data.”);
`See also Fig. 1 (showing a vehicle with an on-board “control
`unit”); Fig. 2 (showing control unit 4, with a “controller” and
`“failure detector” that receive signals from various “sensor[s]”
`and provide output to a “memory” and “transmitted/received
`data processing circuit”).
`See, e.g., p. 2, col. 1 (“An objective of the present invention is to
`provide a failure diagnosis apparatus for a vehicle that transmits
`to a failure diagnosis station outside the vehicle all data related
`to a failure . . . .”);
`p. 2, col. 1 (“The configuration, which has a failure detection
`unit that detects a failure of an on-board device and a
`transmitting unit that transmits, at an occurrence of the failure,
`an output signal from the failure detection unit to a failure
`diagnosis station outside the vehicle, . . . .”);
`p. 2, col. 1 (“[A]ll data is automatically transmitted to the failure
`
`- 13 -
`
`

`

`
`
`channel
`between the
`vehicle and a
`remote facility
`without manual
`intervention and
`wirelessly
`transmit the
`output of said
`diagnostic
`system to the
`remote facility.
`
`
`
`’697 Patent – Claim 21
`(21.pre) A method for monitoring a
`vehicle, comprising the steps of:
`
`diagnosis station outside the vehicle . . . .”);
`p. 2, col. 2 (“The failure diagnosis apparatus 1 is configured to
`include an on-board apparatus 2 and a failure diagnosis station 3
`that is outside of vehicle. The on-board apparatus 2 is
`configured to include a control unit 4 that controls various
`devices or systems on board and detects failures thereof, a
`display apparatus 5 that is connected to the control unit 4, a
`communication control unit 6 that controls the communication
`between the control unit 4 and the failure diagnosis station 3
`outside the vehicle, and an antenna 7 that transmits and receives
`a communication signal to/from the unit 6.”);
`p. 3, cols. 1-2 (“The communication control circuit 6 is
`configured to include . . . a transmitted data buffer 28 that stores
`a failure data signal output from the control unit 4, a transmitted
`data modulation circuit 29 that converts the data signal into an
`easily-transmittable signal, and a transmitting circuit 30 that
`transmits the modulated failure data signal to the failure
`diagnosis station 3 via the antenna 7. The communication
`control unit 6 is provided with a communication control circuit
`31 that controls flow between the received signal and the
`transmitted signal as described above to pass the signals from/to
`the transmitted-received data processing circuit 23 in the control
`unit 4.”);
`p. 4, col. 1 (“If it is determined in Step S2 that there is a failure,
`an identification code for failure content is appended in front of
`the failure data . . . . Next in Step S5, the above failure data is
`transmitted . . . from the communication control unit 6 to the
`failure diagnosis station 3 outside the vehicle, such as a service
`shop.”);
`Fig. 1 (showing a vehicle with both a “control unit” 4 and a
`“communication control unit” 6 with an antenna 8 that
`wirelessly transmits and receives communication signals from
`the vehicle); Fig. 2 (showing communication control circuit 6
`receiving a signal from control unit 4 for transmission to a
`remote site).
`
`Ishihara (Exs. 1003 & 1004)
`See, e.g., p. 1, col. 1 (“The present invention
`relates to a failure diagnosis apparatus for a
`vehicle . . . .”).
`
`- 14 -
`
`

`

`
`
`(21.a) 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;
`(21.b) generating an output
`indicative or representative of the
`diagnosed state of the vehicle or the
`diagnosed state of the component of
`the vehicle; and
`
`(21.c) 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.
`
`
`’697 Patent – Claim 61
`61. The method of claim 21,
`wherein the step of transmitting the
`output to the remote facility
`comprises the step of automatically
`establishing a communications
`channel between the vehicle and the
`remote facility without manual
`intervention to thereby enable the
`
`See, e.g., the discussion and disclosure
`above for claim (1.a) in the claim chart
`above, particularly, p. 2, col. 1; p. 2, col. 2;
`p. 3, col. 1; p. 4, col. 1; Fig. 1; Fig. 2.
`
`See, e.g., p. 2, col. 1 (“The configuration,
`which has a failure detection unit that
`detects a failure of an on-board device and a
`transmitting unit that transmits, at an
`occurrence of the failure, an output signal
`from the failure detection unit to a failure
`diagnosis station outside the vehicle, . . . .”);
`p. 4, col. 1 (“[I]n Step S1, the input signals
`11a to 14a from each of the sensors 11 to 14
`and control signals 18a to 20a output to each
`of the solenoids 18 to 20 used for
`controlling the automatic transmission are
`input to the failure detection section 16b of
`the computer 16, and whether or not a
`failure exists is detected based on a program
`saved in memory 17. If it is determined in
`Step S2 that there is a failure, an
`identification code for failure content is
`appended in front of the failure data.”).
`See, e.g., the discussion and disclosure
`above for claim (1.b) in the claim chart
`above, particularly, p. 2, col. 1; p. 2, col. 2;
`p. 3, cols. 1-2; p. 4, col. 1; Fig. 1; Fig. 2.
`
`Ishihara (Exs. 1003 & 1004)
`See, e.g., p. 2, col. 1 (“The configuration,
`which has a failure detection unit that
`detects a failure of an on-board device and a
`transmitting unit that transmits, at an
`occurrence of the failure, an output signal
`from the failure detection unit to a failure
`diagnosis station outside the vehicle, . . . .”);
`p. 2, col. 1 (“[A]ll data is automatically
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`- 15 -
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`

`

`
`
`output to be transmitted from the
`vehicle to the remote facility.
`
`transmitted to the failure diagnosis station
`outside the vehicle . . . .”).
`
`Claims 2, 10, and 32
`
`2.
`Claims 2 and 10 depend upon claim 1 and further require a plurality of
`
`sensors mounted on the vehicle and a processor that performs a diagnosis based on
`
`the sensor data. Claim 32 depends upon claim 21 and further requires mounting a
`
`plurality of sensors on the vehicle. To accomp