`571-272-7822
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`Paper 8
`Entered: September 29, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO. INC.,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00629
`Patent 8,036,788 B2
`
`____________
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`Page 1 of 23
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`Hyundai Exhibit 1009
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`I. INTRODUCTION
`On April 15, 2014, American Honda Motor Co., Inc. (“Honda”) filed
`a Petition requesting an inter partes review of claims 1-7, 13, and 20 of U.S.
`Patent No. 8,036,788 B2 (Ex. 1001, “the ’788 patent”). Paper 1 (“Pet.”).
`The Patent Owner, American Vehicular Sciences LLC (“AVS”) filed a
`limited Preliminary Response, waiving its right to submit substantive
`arguments on patentability. Paper 6, 2 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD.– The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of Honda’s Petition and AVS’s Preliminary
`Response, we determine that the information presented in the Petition
`establishes that there is a reasonable likelihood that Honda would prevail in
`showing the unpatentability of claims 1–7, 13, and 20 of the ’788 patent.
`Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter partes review
`for claims 1-7, 13, and 20 of the ’788 patent.
`A. Related Proceedings
`AVS has asserted the ’788 patent against Honda in the following co-
`pending district court case: Am. Vehicular Sciences. LLC v. American Honda
`
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`Motor Co., Inc., No. 6:13-cv-00226 (E.D. Tex.).1 We previously instituted
`an inter partes review of claims 1, 3, 4, 6, 7, 8, 9, 11, 15, 16, and 18 of the
`’788 patent in Toyota Motor Corp. v. American Vehicular Scis. LLC, Case
`IPR2013-00417 (the “’417 IPR”).
`B. The ’788 Patent Disclosure
`The ’788 patent discloses a system and a method for monitoring the
`condition of a vehicle. Ex. 1001, 3:35–38; 4:1–14. Sensors monitor
`components of the vehicle and are connected to a diagnostic module. Id. at
`3:39–41, 46–47. The diagnostic module determines an actual or potential
`failure of the component or subsystem. Id. at 3:49-50. The diagnostic
`module controls a communications unit, which communicates through a
`wireless communications network with a remote site. Id. at 3:38–39, 48.
`The remote site is any site or location interested in receiving
`information about the diagnostic or prognostic status of the components of
`the vehicle. Id. at 3:53–56. The ’788 patent describes diagnostics as
`generally determining the present condition of the component. Id. at 7:41–
`42. The ’788 patent describes prognostics as determining when a
`component will fail. Id. at 7:45-46.
`The method described collects status data for vehicle maintenance and
`monitors a triggering event on a vehicle. Ex. 1001, 4:42–49. The triggering
`event relates to a diagnostic or prognostic analysis of at least one component
`or subsystem of the vehicle. Id. The triggering event initiates a transmission
`between the communications unit and a remote site. Id. The transmission
`includes a diagnostic or prognostic message about the component or
`
`1 Honda states that the ’788 patent is the subject of three other pending
`lawsuits and another that was dismissed with prejudice. Pet. 58-59. None of
`the other lawsuits name Honda as a defendant. Id.
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`subsystem, e.g., a message about a failure, predicted failure, or fault code
`generation of the component or subsystem. Id.
`Figure 3 of the ’788 patent is reproduced below:
`
`
`Figure 3 is a schematic of a vehicle illustrating a total diagnostic
`system utilizing the diagnostic module. Ex. 1001, 20:32–36. The sensors
`shown in Figure 3 are mounted on components within the engine of the
`vehicle including, among other sensors, the following: microphone 2,
`coolant thermometer 3, oil pressure sensor 4, oil level sensor 5, air flow
`meter 6, voltmeter 7, ammeter 8, engine knock sensor 10, oil turbidity sensor
`11, throttle position sensor 12, oxygen sensor 17, transmission fluid level
`sensor 25, coolant level sensor 27, transmission fluid turbidity sensor 28,
`brake pressure sensor 29, and coolant pressure sensor 30. Id. at Figs. 3, 4;
`20:59–21:10.
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`Figure 20C of the ’788 patent is reproduced below:
`
`
`Figure 20C is a block diagram showing a general system for obtaining
`information about a vehicle or vehicle component. Ex. 1001, 54:26–27.
`Control system 628 is coupled to and controls antenna array 622, enabling
`reception of return signals from sensors 627. Id. at 54:40–43. The
`information is directed to display/telematics/adjustment unit 629 where the
`information can be displayed on display 629 to the driver, sent to a remote
`location for analysis via a telematics unit 629, and/or used to control or
`adjust a component on, in, or near the vehicle. Id. at 54:61–66.
`C. Exemplary Claims
`Independent claims 1 and 4 are challenged by Honda. Each of claims
`2, 3, 7, and 13 depends directly from claim 1, and each of claims 5, 6, and 20
`depends directly from claim 4. Claims 1 and 4 are reproduced below:
`1. A method for providing status data for vehicle maintenance,
`comprising:
`monitoring for a triggering event on a vehicle having a
`wireless communications unit, the triggering event relating to a
`diagnostic or prognostic analysis of at least one of a plurality of
`different components or subsystems of the vehicle; and
`initiating a wireless transmission between the
`communications unit and a remote site separate and apart from
`the vehicle in response to the triggering event, the transmission
`
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`including a diagnostic or prognostic message about the at least
`one component or subsystem.
`
`Ex. 1001, 96:2-13.
`
`4. A system for providing status data for vehicle maintenance,
`comprising:
`a diagnostic module including at least one sensor for
`monitoring a plurality of different components or subsystems of
`the vehicle, said diagnostic module being arranged to analyze
`monitoring data provided by said at least one sensor and detect
`a triggering event relating to a diagnostic or prognostic analysis
`of at least one of the plurality of different components or
`subsystems of the vehicle; and
`a wireless communications unit arranged to interface
`with a wireless communications network, said communications
`unit being coupled to said diagnostic module and initiating a
`wireless transmission between said communications unit and a
`remote site separate and apart from the vehicle in response to
`the triggering event, the transmission including a diagnostic or
`prognostic message about the at least one component or
`subsystem.
`
`Ex. 1001, 96:19–36.
`
`
`6
`
`D. Prior Art Relied Upon
`
`Honda relies upon the following prior art references:
`
`Reference
`Asano
`Fry2
`
`Description
`US 5,157,610
`Diesel Locomotive
`Reliability Improvements by
`
`2 The copy of Fry, as submitted by Honda, includes an added cover sheet
`from the publisher, noting that the version of record is dated January 1,
`1995. Ex. 1005, 1.
`
`
`
`Exhibit No.
`Prior Art Date
`Oct. 20, 1992 Ex. 1004
`Jan. 1, 1995
`Ex. 1005
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`Reference
`
`Description
`System Monitoring, 209
`Proc. Inst. of Mechanical
`Engineers, Part F: J. of Rail
`& Rapid Transit 1 (1995)
`US 4,675,675
`Corwin
`Chatham US 5,532,122
`Scholl
`US 5,400,017
`Ishihara
`Japanese Patent App. Pub.
`No. H01-197145
`
`
`
`Prior Art Date
`
`Exhibit No.
`
`Jun. 23, 1987 Ex. 1006
`Jul. 2, 1996
`Ex. 1007
`Mar. 21, 1995 Ex. 1008
`Dec. 17, 1993 Ex. 10103
`
`1-7
`
`E. The Alleged Grounds of Unpatentability
`Honda alleges the following grounds for unpatentability.
`Claims
`Basis
`Reference(s)
`§ 102 (b)
`Asano
`
`§ 102 (a)
`1, 3, 4, 6, and 7
`1, 3, 4, 6, 7, 13, and 20 § 102 (b)
`1, 3, 4, 6, and 7
`§ 102 (e)
`1-7, 13, and 20
`§ 102 (a) and (e)
`1, 3, 4, 6, 7, 13, and 20 § 102 (b)
`2 and 5
`§ 103 (a)
`
`Fry
`Corwin
`Chatham
`Scholl
`Ishihara
`Ishihara and
`Asano
`
`
`
`
`3 All citations in this Decision to “Ishihara” are to the English translation
`(Ex. 1010) of the Japanese Unexamined Patent Application (Ex. 1009).
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`II. ANALYSIS
`A. Claim Construction
`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). For an inventor to act as his or her own lexicographer, the definition
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998).
`An extraneous limitation should not be read into the claims from the
`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`whose presence 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).
`
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`Honda adopts as its proposed constructions our prior claim
`constructions from the ’417 IPR. Pet. 8-9. AVS’s Preliminary Response
`takes no position on claim construction. The terms and their constructions
`are listed below.
`“component/components” (claims 1, 3, 4, 6, and 7)
`The term “components” is recited, for example, in claim 1:
`“monitoring a triggering event . . . relating to a diagnostic or prognostic
`analysis of at least one of a plurality of different components or subsystems
`of the vehicle” (emphasis added).
`The specification of the ‘788 patent describes the term “component”
`
`as:
`
`generally 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,
`8:5-8.
`
`The specification does not propose 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 does not appear to be in the form of a definition. Rather, the text is
`a portion of the description of preferred embodiments, and uses the words
`“refers to” after the term “component.” The evidence falls short of that
`standard required for recognizing a new definition, i.e., reasonable clarity,
`deliberateness, and precision. Accordingly, we do not regard the above-
`quoted text as setting forth a special definition for the term “component.”
`Instead, the text describes how components operate and interact with other
`elements in an operative environment.
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`Thus, we construe “component” as any part or assembly of parts
`which is less than the whole. 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, whatever that means.
`“sensor” (claims 4 and 7)
`The term sensor is recited, for example, in claim 4: “a diagnostic
`module including at least one sensor for monitoring a plurality of different
`components or subsystems of the vehicle” (emphasis added).
`The specification of the ’788 patent describes the term “sensor” as:
`generally refers to any measuring, detecting 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.” Ex.1001, 8:19-24.
`
`The specification does not propose a new meaning for the term
`“sensor” different from the ordinary and customary meaning as would 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 and uses the words “refers to,” which are followed by a
`“partial non-exhaustive list” of more than forty exemplary automobile or
`truck sensors.
`We do not regard the above-quoted text as setting forth a special
`definition for “sensor.” “Sensor” possesses its ordinary and customary
`meaning as would be understood by one with ordinary skill, and does not
`require an express construction. “Sensor” includes each of the sensors
`particularly identified in the specification of the ’788 patent.
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`“triggering event” (claims 1, 3, 4, 6, and 7)
`The term “triggering event” is recited in claim 1, which states in
`pertinent part: “monitoring for a triggering event on a vehicle having a
`wireless communications unit, the triggering event relating to a diagnostic or
`prognostic analysis” (emphasis added).
`The ’788 patent describes a triggering event as “a failure, predicted
`failure or fault code generation of the component or subsystem.” Ex. 1001,
`4:54-57. In the context of the claim language this description is consistent
`with the ordinary meaning of “triggering event.” “Triggering event” means
`“an event that starts or causes something to happen.”
`“diagnostic or prognostic message” (claims 1 and 4)
`The term “diagnostic or prognostic message” is recited in claim 1,
`which states in pertinent part: “the transmission including a diagnostic or
`prognostic message about the at least one component or subsystem”
`(emphasis added).
`The specification of the ’788 patent states the following:
`Generating diagnostic or prognostic information about the
`component or subsystem may entail determining whether the
`component or subsystem is about to fail. In this case, the
`transmission of diagnostic or prognostic messages from the
`communications unit is a transmission of an indication of the
`actual potential failure of the component or subsystem. Ex.
`1001, 4:15-20.
`
` Thus, we construe “diagnostic or prognostic message” to mean
`“diagnostic or prognostic information related to actual or potential failure of
`a component.”
`
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`B. Anticipation by Asano
`Honda contends that claims 1–7 of the ’788 patent are unpatentable as
`anticipated under 35 U.S.C. § 102(b) by Asano. Pet. 10–17. For the reasons
`discussed below, we are persuaded that Honda has made a sufficient
`showing that there is a reasonable likelihood that it would prevail with
`respect to claims 1–7 on the ground that those claims are anticipated by
`Asano.
`
`Asano
`Asano discloses a vehicle-mounted computer, an embodiment of
`which is illustrated in Figure 2 of Asano, reproduced below:
`
`
`As shown in Figure 2, computer 105 has central processing unit
`(CPU) 7 that receives operating signals from sensors by way of bus line 30,
`to which multiplexer 36 and analog to digital conversion circuitry 38 and 52
`are connected. Ex. 1003, 6:14–28. Sensors, including engine cooling water
`temperature sensor (TWS) 32 and air/fuel ratio sensor (O2S) 34, sense the
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`engine operating conditions. Id. CPU 7 carries out computations based on
`the engine operating conditions. Id. at 6:43–47. Additionally, CPU 7 is
`connected to display 90 to display instructions to the driver. Id. at 6:67–68.
`Asano provides further disclosure of failure diagnosis on a vehicle, an
`embodiment of which is illustrated in Figure 6 of Asano, reproduced below:
`
`
`Figure 6 illustrates a functional block diagram of failure diagnosis
`processing. Ex. 1003, 5:23. Computations for failure diagnosis are carried
`out at predetermined intervals. Id. at 9:1–3. The period of each interval can
`be about 60 milliseconds. Id. at 9:10–13. At step 6a, shown in Figure 6, a
`diagnostic mode starts onboard the vehicle. Id. at 9:10. Next, in step 6b, a
`decision is made on the vehicle as to whether an abnormality exists based on
`the results of the diagnosis. Id. at 9:13–14. If no abnormality exists, the
`process ends. Id. at 9:14–15. When a decision is made at step 6b, on the
`vehicle side, that an abnormality exists, then an abnormality code is
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`transmitted through transmitter-receiver 5, in step 6n, to the host computer at
`the dealer side. Id. at 9:15–18; Fig. 6.
`Claims 1–7
`We have reviewed the evidence and arguments submitted by Honda at
`pages 10–17 of the Petition and the testimony of Christopher Wilson (Ex.
`1011). Ex. 1011 ¶ 37. We are persuaded that the submission establishes a
`reasonable likelihood that Honda would demonstrate the unpatentability of
`claims 1–7 as anticipated by Asano.
`For example, method claim 1 recites monitoring “the triggering event
`relating to a diagnostic or prognostic analysis of at least one of a plurality of
`different components or subsystems of the vehicle.” Independent system
`claim 4 recites a similar limitation, i.e., “detect a triggering event relating to
`a diagnostic or prognostic analysis of at least one of the plurality of different
`components or subsystems of the vehicle.” Asano discloses a diagnostic
`mode using “data indicative of the condition of other control subjects.”
`Ex. 1004, 9:6–10. The diagnostic mode is carried out “at predetermined
`intervals of about 60ms.” Id. at 9:10–13. “A decision on whether any
`abnormality exists is made based on the diagnosis results.” Id. at 9:13–14;
`Fig. 6. Claim 1 further requires, a “transmission including a diagnostic or
`prognostic message about the at least one component or subsystem” is made
`to a “remote site.” Asano also discloses this limitation. Id. at 9:15–18;
`Fig. 1.
`
`Anticipation by Corwin
`C.
`Honda contends that claims 1, 3, 4, 6, 7, 13, and 20 are unpatentable
`as anticipated, under 35 U.S.C. § 102(b), by Corwin. Pet. 29–35. For the
`reasons discussed below, we are persuaded that Honda has made a sufficient
`
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`showing that there is a reasonable likelihood that it would prevail with
`respect to claims 1, 3, 4, 6, 7, 13, and 20 on the ground that those claims are
`anticipated by Corwin.
`
`Corwin
`Corwin describes monitoring aircraft components during flight and
`supplying the data to an Automatic Fault Reporting System (AFRS) when
`failures are detected. Ex. 1006, 5:40–45; 7:8–9; Abstract. Inputs to AFRS
`are received from “various equipment” on the aircraft via the aircraft wiring.
`Id. at 7:68–8:2. AFRS implements signal processing of fault related data on
`board the operational aircraft. Id. at Abstract. AFRS detects a fault
`condition, determines a most likely cause and assigns a fault code. Id. at
`2:43–57. Failure outputs are provided to ground personnel when faults or
`excessive differences are detected. Id. at 7:28–32; 8:2–4; Abstract.
`Claims 1, 3, 4, 6, 7, 13, and 20
`We have reviewed the evidence and arguments submitted by Honda at
`pages 29–35 of the Petition and the testimony of Christopher Wilson (Ex.
`1011). Ex. 1011 ¶ 39. We are persuaded that the submission establishes a
`reasonable likelihood that Honda would demonstrate the unpatentability of
`claims 1, 3, 4, 6, 7, 13, and 20 as anticipated by Corwin.
`For example, method claim 1 recites, in pertinent part, “monitoring
`for a triggering event on a vehicle . . . relating to a diagnostic or prognostic
`analysis of at least one of a plurality of different components or
`subsystems.” Corwin discloses an “Automatic Fault Reporting System” or
`AFRS, that “monitor[s] and compares outputs from various aircraft
`electronic units.” Ex. 1006, 7:28–29. The AFRS detects faults based on
`“programmed fault conditions” and every system is monitored for faults.
`
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`Id. at 2:51–54; 7:49–50. Claim 1 further recites that a “transmission
`including a diagnostic or prognostic message about the at least one
`component or subsystem” is made to a “remote site.” Corwin also discloses
`this limitation. See id. at 3:44–48; 2:55–57; 10:9–23.
`Claims 13 and 20 both depend from claim 1 and each require that “the
`remote site is a repair or service facility for the vehicle.” Corwin discloses
`fault codes and information regarding failures is transmitted to “ground
`based maintenance operations.” Id. at 5:41–45. The information is used by
`the ground maintenance to acquire parts and scheduling. Id. at 5:52–55.
`D. Anticipation by Ishihara
`Honda contends that claims 1, 3, 4, 6, 7, 13, and 20 are unpatentable
`as anticipated, under 35 U.S.C. § 102(b), by Ishihara. Pet. 51-55. For the
`reasons discussed below, we are persuaded that Honda has made a sufficient
`showing that there is a reasonable likelihood that it would prevail with
`respect to claims 1, 3, 4, 6, 7, 13, and 20 on the ground that those claims are
`anticipated by Ishihara.
`
`Ishihara
`Ishihara discloses a failure diagnosis apparatus for a vehicle. Ex.
`1010, p. 1, col. 1. The diagnosis apparatus receives instructions from a
`failure diagnosis station outside of the vehicle and includes a display which
`shows only those with failures having a high significance. Id.
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`Figure 1 of Ishihara is shown below:
`
`
`
`
`Figure 1 shows on-board failure diagnosis apparatus 2 and failure
`diagnosis station 3 that is outside of vehicle. On-board apparatus 2 includes
`control unit 4 that controls various devices or systems on-board and detects
`failures of those systems. Ex. 1010, p. 2, col. 2. Display apparatus 5 is
`connected to the control unit 4. Id. Communication control unit 6 controls
`communication between control unit 4 and failure diagnosis station 3. Id.
`Figure 2 of Ishihara is reproduced below:
`
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`Figure 2 is a block diagram showing, among other things, sensors 11,
`12, 13, and 14. The sensors detect vehicle speed and other engine
`conditions. Ex. 1010, p. 2, col. 2. The output of sensors 11, 12, 13, and 14
`is input to computer 16 in the control unit 4 via input processing circuit 15.
`Id. Computer 16 includes control section 16a and a failure detection section
`16b. Ex. 1010, p. 3, col. 1. Control section 16a outputs control signals
`controlling operation of the automatic transmission. Id. The failure
`detection section 16b determines whether or not abnormality exists in the
`input signals from each of the above sensors and the control signals in light
`of data or a program saved in memory 17 of computer 16. Id.
`Upon occurrence of a failure, a diagnosis unit detects the failure and a
`transmitting unit transmits an output signal to the off vehicle failure
`diagnosis station. Ex. 1010, p. 2, col. 1. At failure diagnosis station 3 the
`failure is categorized. Id. For a predetermined abnormality, warning lamp
`22 is turned on via output processing circuit 21 at the time of its occurrence.
`Id.
`
`Claims 1, 3, 4, 6, 7, 13, and 20
`We have reviewed the evidence and arguments submitted by Honda at
`pages 51–55 of the Petition and the testimony of Christopher Wilson (Ex.
`1011). Ex. 1011 ¶¶ 49-56. We are persuaded that the submission
`establishes a reasonable likelihood that Honda would demonstrate the
`unpatentability of claims 1, 3, 4, 6, 7, 13, and 20 as anticipated by Ishihara.
`For example, method claim 1 recites, in pertinent part: “monitoring
`for a triggering event on a vehicle . . . relating to a diagnostic or prognostic
`analysis of at least one of a plurality of different components or
`subsystems.” Ishihara discloses that “on-board apparatus” includes a control
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`unit that detects failure of various devices. Ex. 1010, p. 2, col. 2. Ishihara
`further discloses that the control unit includes computer 16, which “is
`configured to include a control section 16a and a failure detection section
`16b.” Id. at p. 3, col. 1. “The failure detection section 16b determines
`whether or not abnormality exists” in signals received from various
`“sensors.” Id. Claim 1 further requires, a “transmission including a
`diagnostic or prognostic message about the at least one component or
`subsystem” is made to a “remote site.” Ishihara also discloses this
`limitation. Id. at p. 2, col. 2; Fig. 1.
`Claims 13 and 20 both depend from claim 1 and each require that “the
`remote site is a repair or service facility for the vehicle.” Ishihara discloses
`“communication between the control unit 4 and the failure diagnosis
`station 3 outside the vehicle.” Id. at p. 2, col. 2; Fig, 1.
`E. Obviousness Based on Ishihara and Asano
`Honda contends that claims 2 and 5 of the ’788 patent are
`unpatentable as obvious under 35 U.S.C. § 103(a) over Ishihara and Asano.
`Pet. 56–58. For the reasons discussed below, we are persuaded that Honda
`has made a sufficient showing that there is a reasonable likelihood that it
`would prevail with respect to claims 2 and 5 on the ground that those claims
`would have been obvious over Ishihara and Asano.
`Claims 2 and 5
`Claim 2 and claim 5 depend from claims 1 and 4, respectively.
`Claims 2 and 5 recite as an additional limitation that “the remote site is a
`dealer of the vehicle.” As discussed above, Ishihara discloses all the
`limitations of claims 1 and 4. Honda acknowledges Ishihara does not teach
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`that the remote site is a “dealer of the vehicle.” Pet. 56. Asano is cited for
`the missing limitation. Id. (citing Ex. 1004, 5:36–40).
`Honda alleges that as of the priority date claimed, June 1995, it “was
`well-known in the art that vehicle dealers often included service facilities
`performed many, if not more, of the same services and activities relating to
`vehicle repair and maintenance as performed by standalone service shops.”
`Id. (citing Ex. 1011 ¶ 61). Thus, on this record, we are persuaded Honda has
`made a sufficient showing that it would have been obvious to one of
`ordinary skill to implement Ishihara’s failure diagnosis apparatus such that it
`would transmit wirelessly from “the vehicle to a dealer in addition to, or in
`lieu of, a service shop.” Id. at 56-57 (citing Ex. 1011 ¶ 45). Honda has
`demonstrated a reasonable likelihood of prevailing in establishing that
`claims 2 and 5 would have been obvious over Ishihara and Asano.
`F. Anticipation by Fry
`Honda contends that claims 1, 3, 4, 6, and 7 are unpatentable as
`anticipated under 35 U.S.C. § 102(a) by Fry. Pet. 20–29. We have reviewed
`Honda’s arguments that Fry is not redundant of other asserted grounds. Pet.
`28–29. We are not persuaded and conclude that this asserted ground is
`redundant in light of the grounds on the basis of which we have instituted
`review for the same claims. We, therefore, exercise our discretion not to
`authorize inter partes review on this ground. See 37 C.F.R. § 42.108(a).
`G. Anticipation by Chatham
`Honda contends that claims 1, 3, 4, 6, and 7 are unpatentable as
`anticipated under 35 U.S.C. § 102(e) by Chatham. Pet. 37–43. We have
`reviewed Honda’s arguments that Chatham is not redundant of other
`asserted grounds. Pet. 43–45. We are not persuaded and conclude that this
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`asserted ground is redundant in light of the grounds on the basis of which we
`have instituted review for the same claims. We, therefore, exercise our
`discretion not to authorize inter partes review on this ground. See 37 C.F.R.
`§ 42.108(a).
`
`H. Anticipation by Scholl
`Honda contends that claims 1–7, 13, and 20 are unpatentable as
`anticipated under 35 U.S.C. § 102(a) and (e) by Scholl. Pet. 45-49. We
`have reviewed Honda’s arguments that Scholl is not redundant of other
`asserted grounds. Pet. 49–51. We are not persuaded and conclude that this
`asserted ground is redundant in light of the grounds on the basis of which we
`have instituted review for the same claims. We, therefore, exercise our
`discretion not to authorize inter partes review on this ground. See 37 C.F.R.
`§ 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Honda
`would prevail in showing the unpatentability of claims 1–7, 13, and 20 of the
`’788 patent. The Board has not made a final determination of the
`patentability of any challenged claim.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
`the ’788 patent is hereby instituted as to claims 1-7, 13, and 20 on the
`following grounds:
`1. Claims 1–7 under 35 U.S.C. § 102(b) as anticipated by Asano;
`and
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`2. Claims 1, 3, 4, 6, 7, 13, and 20 under 35 U.S.C. § 102(b) as
`anticipated by Corwin;
`3. Claims 1, 3, 4, 6, 7, 13, and 20 under 35 U.S.C. § 102(b) as
`anticipated by Ishihara;
`4. Claims 2 and 5 under 35 U.S.C. § 103 as obvious over Ishihara
`and Asano;
`
`FURTHER ORDERED that no ground other than those specifically
`granted above is authorized for inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`grounds of unpatentability authorized above; the trial commences on the
`entry date of this decision.
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`For PETITIONER:
`
`Joseph Melnik
`Joseph M. Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`
`For PATENT OWNER:
`
`Scott P. McBride
`Thomas J. Wimbiscus
`Stephanie F. Samz
`MCANDREWS HELD & MALLOY, LTD.
`smcbride@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`ssamz@mcandrews-ip.com
`
`
`
`
`
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