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. 8,036,788
`Filing Date: August 9, 2007
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`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.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................ 1
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`GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(a) .......... 2
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`
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`I.
`
`II.
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`III. THE ‘788 PATENT .......................................................................................... 3
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`A.
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`B.
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`Summary of the ‘788 Patent .................................................................. 3
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`Prosecution History of the ‘788 Patent ................................................. 4
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`IV.
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`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R. §
`42.104(b) .......................................................................................................... 4
`
`A.
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`B.
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`C.
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`D.
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`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes Review
`Is Requested ........................................................................................... 4
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`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds On
`Which The Challenge to the Claims Is Based .......................................... 5
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`37 C.F.R. § 42.104(b)(3): Claim Construction ..................................... 6
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`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable .......................................................................................... 7
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`E.
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`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................... 8
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`V.
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘788 PATENT IS UNPATENTABLE ...................... 8
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`A. Ground 1: Claims 1, 2, 3, 4, 5, 6, and 7 are Unpatentable under
`35 U.S.C. § 102(b) as Anticipated by Asano ........................................ 8
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`1.
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`2.
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`3.
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`Claims 1 and 4 ............................................................................. 8
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`Claims 2, 3, 5, 6, and 7 .............................................................14
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`Asano is Not Redundant of the Grounds Instituted in the
`IPR2013-00417 Proceeding or of any other Grounds in
`this Petition ...............................................................................15
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`B.
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`Ground 2: Claims 1, 3, 4, 6, 7, 13, and 20 are Unpatentable under
`35 U.S.C. § 102(b) as Anticipated by Corwin ........................................17
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`1.
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`2.
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`3.
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`Claims 1 and 4 ...........................................................................17
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`Claims 3, 6, 7, 13, and 20 .........................................................22
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`Corwin is Not Redundant of the Grounds Instituted in the
`IPR2013-00417 Proceeding or of any other Grounds in
`this Petition ...............................................................................23
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`C.
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`Ground 3: Claims 1, 3, 4, 6, 7, 13, and 20 are Unpatentable
`under 35 U.S.C. § 102(b) as Anticipated by Ishihara .........................24
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`1.
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`2.
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`3.
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`Claims 1, 3, 4, 6, and 7 ..............................................................24
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`Claims 13 and 20.......................................................................28
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`Ishihara is Not Redundant of the Other Presented
`Grounds .....................................................................................28
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`D. Ground 4: Claims 2 and 5 are Unpatentable under 35 U.S.C. §
`103(a) as Obvious over Ishihara in view of Asano .............................28
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`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) .............31
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`A.
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`B.
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`C.
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`C.F.R. § 42.8(b)(a): Real Party-In-Interest ...........................................31
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`C.F.R. § 42.8(b)(2): Related Matters ....................................................31
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`C.F.R. § 42.8(B)(3) AND (4): LEAD AND BACK-UP
`COUNSEL AND SERVICE INFORMATION ....................................32
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`VII. CONCLUSION ..............................................................................................33
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`LIST OF EXHIBITS
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`Exhibit 1001: U.S. Patent No. 8,036,788 to Breed (“the ‘788 patent”)
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`Exhibit 1002: Decision, Institution of Inter Partes Review, Paper 14, in Case
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`IPR2013-00417 (Jan. 13, 2014)
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`Exhibit 1003: File History of U.S. Patent No. 8,036,788 to Breed
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`Exhibit 1004: U.S. Patent No. 5,157,610 to Asano et al. (“Asano”)
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`Exhibit 1005: U.S. Patent No. 4,675,675 to Corwin et al. (“Corwin”)
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`Exhibit 1006: Japanese Unexamined Patent Application Publication No. JP-A-
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`H01-197145 to Ishihara et al. (“Ishihara”)
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`Exhibit 1007: English Translation of Japanese Unexamined Patent Application
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`Publication No. JP-A-H01-197145 to Ishihara et al. (“Ishihara”)
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`Exhibit 1008: Declaration of Christopher Wilson (“Wilson Decl.”)
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`Exhibit 1009: Decision, Institution of Inter Partes Review, Paper 8, in Case
`IPR2014-00629 (Sep.29, 2014)
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`Hyundai Motor Company (“Petitioner”) respectfully request inter partes
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`review under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 of claims 1-7, 13, and
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`20 of U.S. Patent No. 8,036,788 (“the ‘788 patent”), attached hereto as Exhibit
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`1001.
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`The undersigned representative of Petitioner authorizes the Patent Office to
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`charge the $23,000 Petition Fee, along with any additional fees, to Deposit
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`Account 06-0916. Nine claims are being reviewed; accordingly no excess claim
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`fees are required.
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`I.
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`INTRODUCTION
`This Petition for Inter Partes Review is being filed along with a motion
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`requesting joinder with the pending inter partes review initiated by Honda Motor
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`Co. (“Honda”) concerning the ’788 patent: American Honda Motor Co. Inc., v.
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`American Vehicular Sciences, LLC, Case No. IPR2014-00629. This Petition
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`proposes the same grounds of rejection on which the Board instituted inter partes
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`review of claims 1-7, 13, and 20. (IPR2014-00629 Institution Decision, Ex. 1009,
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`at 21-22.)
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`The ‘788 patent is one of a multitude of patents owned by American
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`Vehicular Sciences LLC (“AVS”) and asserted against the automotive industry, in
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`an attempt to cover long-known systems and methods relating to automotive
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`safety. See, e.g., Am. Vehicular Scis. LLC v. Hyundai Motor Co. et al., No. 2:14-
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`cv-13247 (E.D. Mich.) (“the 247 action”); Am. Vehicular Scis. v. Kia Motors Inc.
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`et al., No. 2:14-cv-13249 (E.D. Mich.); American Vehicular Sciences LLC v.
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`American Honda Motor Co., Inc. et al., No. 2:14-cv-13251 (E.D. Mich.);
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`American Vehicular Sciences LLC v. Toyota Motor Corp. et al., No. 2:14-cv-
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`13016 (E.D. Mich.). The ‘788 patent is directed to “methods and systems for
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`transmitting a diagnostic or prognostic message from a moving object such as a
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`vehicle to a remote site.” (‘788 patent, Ex. 1001, 3:6-8.) The claimed methods and
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`systems of the ‘788 patent were neither new nor non-obvious when the ‘788 patent
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`was filed. Accordingly, in this Petition, Petitioner challenges the validity of claims
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`1-7, 13, and 20.
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`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(a)
`Petitioner certifies that (1) the ‘788 patent is available for inter partes
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`review; and (2) Petitioner is not barred or estopped from requesting inter partes
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`review, nor is Petitioner in privity with any party who is barred or estopped from
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`challenging the patent claims on the grounds identified herein. In particular, as this
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`Petition is accompanied by a motion to join IPR2014-00629 under 37 C.F.R. §§
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`42.22 and 42.122(b), the one-year time limitation prescribed by 35 U.S.C. § 315(b)
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`does not apply. See 35 U.S.C. § 315(b) (“The time limitation set forth in the
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`preceding sentence shall not apply to a request for joinder under subsection (c).”);
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`see also Microsoft Corp. v. Proxyconn, Inc., Case No. IPR2013-00109, Paper No.
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`15 at 4 (“[T]he one-year time bar does not apply to a request for joinder.”). This
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`Petition is timely under 37 C.F.R. §§ 42.22 and 42.122(b), as it is submitted within
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`one month of September 29, 2014, the date that IPR2014-00629 was instituted.
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`III. THE ‘788 PATENT
`Summary of the ‘788 Patent
`A.
`The ‘788 patent was filed on August 9, 2007, and issued on October 11,
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`2011. The ‘788 patent claims priority to a long chain of earlier applications, the
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`earliest of which is U.S. Application No. 08/476,077, filed on June 7, 1995.
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`The ‘788 patent is directed to “methods and systems for transmitting a
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`diagnostic or prognostic message from a . . . vehicle to a remote site.” (‘788 patent,
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`Ex. 1001, 3:6-8.) The system includes one or more sensors that monitor a plurality
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`of vehicle components or subsystems and are coupled to or part of a “diagnostic
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`module.” (Id. 3:39-41, 46-47.) The diagnostic module monitors for a “triggering
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`event”, which can be (i) the failure of, (ii) the predicted failure of, or (iii) the
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`generation of a fault code in connection with the monitored vehicle components or
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`subsystems. (Id. 4:54-56; 62-65.) In response to the triggering event, a
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`communications unit initiates a wireless communication between the vehicle and a
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`remote site, the transmission including a diagnostic or prognostic message about
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`the component or subsystem. (Id. 4:65-5:4.)
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`Prosecution History of the ‘788 Patent
`B.
`The claims of the ‘788 patent were issued after limited prosecution. (See
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`generally File History of ‘788 patent, Ex. 1003.) On December 9, 2010, the
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`Examiner issued the only Office Action rejection, rejecting all pending claims in
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`view of U.S. Patent No. 6,434,458 to Laguer-Diaz (“Laguer-Diaz”). The Examiner
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`found that Laguer-Diaz anticipated all pending claims except for claims 17, 20, 27,
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`and 34, which the Examiner found to be obvious. (Id. at 276-81.)
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`In response the applicant amended independent claims 16 and 19 to recite
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`“at least one of a plurality of different components or subsystems,” as opposed to
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`“at least one component or subsystem.” (Id. at 334.) Two dependent claims were
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`also amended. The applicant also argued that claims 24, 26-31, and 33-36 were
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`entitled to the benefit of the June 7, 1995 filing date of U.S. App. No. 08/476,077,
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`which precedes the date of Laguer-Diaz, and the applicant further argued to
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`distinguish dependent claims 25 and 32 from Laguer-Diaz. (Id. at 337-38.) On May
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`25, 2011, all pending claims were allowed. (Id. at 343.)
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`IV.
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`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R. §
`42.104(b)
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes Review Is
`A.
`Requested
`Inter partes review is requested for claims 1, 2, 3, 4, 5, 6, 7, 13, and 20 of
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`the ‘788 patent.
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`B.
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`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 of the following prior art references:
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`• U.S. Patent No. 5,157,610 to Asano et al. (“Asano”) (Ex. 1004). Asano issued
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`on October 20, 1992, and is therefore prior art under 35 U.S.C. § 102(b).
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`• U.S. Patent No. 4,675,675 to Corwin et al. (“Corwin”) (Ex. 1005). Corwin
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`issued on June 23, 1987, and is therefore prior art under 35 U.S.C. § 102(b).
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`• Japanese Unexamined Patent Application Publication No. JP-A-H01-197145 to
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`Ishihara et al. (“Ishihara”) (Exs. 1006 and 1007 (English translation)). Ishihara was
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`published on December 17, 1993, and qualifies as prior art under 35 U.S.C. §
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`102(b).
`
`The specific statutory grounds on which the challenge to the claims is based
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`and the patents and printed publications relied upon for each ground are as follows:
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`‘788 Patent Claims
` Ground
`Ground 1 Claims 1-7
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`Basis for Challenge
`Anticipated under § 102(b) by Asano
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`Ground 2 Claims 1, 3, 4, 6, 7, 13, 20 Anticipated under § 102(b) by
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`Corwin
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`Ground 3 Claims 1, 3, 4, 6, 7, 13, 20 Anticipated under § 102(b) by
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`Ishihara
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`Ground 4 Claims 2, 5
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`Obvious under § 103(a) by Ishihara in
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`view of Asano
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`37 C.F.R. § 42.104(b)(3): Claim Construction
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`C.
`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this
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`review, Petitioner construes the claim language such that the claims are given their
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`broadest reasonable interpretation in light of the specification of the ‘788 patent.
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`For terms not specifically listed and construed below, Petitioner interprets them for
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`purposes of this review in accordance with their plain and ordinary meaning under
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`the required broadest reasonable interpretation.
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`“component” - Claims 1, 3, 4, 6, and 7. In the IPR2013-00417 and
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`IPR2014-00629 proceedings, the Board adopted the construction “a part or an
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`assembly of parts, less than the whole” for the term “component,” and Petitioner
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`adopts the same. (Institution Decision, Ex. 1002, at 8-9; Institution Decision, Ex.
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`1009, at 9-10).
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`“sensor” - Claims 4 and 7. In the IPR2013-00417 and IPR2014-00629
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`proceedings, the Board did not set forth an express construction of the term
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`“sensor,” finding that the term “possesses its ordinary and customary meaning, as
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`would be understood by one of ordinary skill.” (Institution Decision, Ex. 1002, at
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`10-11; Institution Decision, Ex. 1009, at 10.) However, the Board found that
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`“sensor” includes each of the sensors particularly identified in the specification of
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`the ‘788 patent. (Institution Decision, Ex. 1002, at 10-11; Institution Decision, Ex.
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`1009, at 10.) Petitioner adopts the same construction as the Board, and notes that
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`examples of “sensors” are identified at column 8, lines 25-44 of the ‘788 patent.
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`“triggering event” - Claims 1, 3, 4, 6, and 7. In the IPR2013-00417 and
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`IPR2014-00629 proceedings, the Board adopted the construction “an event that
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`starts or causes something to happen” for the term “triggering event,” and
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`Petitioner adopts the same. (Institution Decision, Ex. 1002, at 11; Institution
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`Decision, Ex. 1009, at 11.).
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`“diagnostic or prognostic message” - Claims 1 and 4. In the IPR2013-00417
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`proceeding, the Board adopted the construction “diagnostic or prognostic
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`information related to actual or potential failure of a component” for the phrase
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`“diagnostic or prognostic message,” and Petitioner adopts the same. (Institution
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`Decision, Ex. 1002, at 11-12; Institution Decision, Ex. 1009, at 11.)
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`Because the standard for claim construction at the Patent Office is different
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`than that used during a U.S. district court litigation, see In re Am. Acad. of Sci.
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`Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner
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`reserves the right to argue a different claim construction in litigation for any term
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`of the ‘788 patent as appropriate in that proceeding.
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`D.
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`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable
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`An explanation of how claims 1, 2, 3, 4, 5, 6, 7, 13, and 20 are unpatentable
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`is set forth below at Section V.
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`37 C.F.R. § 42.104(b)(5): Supporting Evidence
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`E.
`A List of Exhibits supporting this Petition is included. Included at Exhibit
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`1008 is a Declaration of Christopher Wilson under 37 C.F.R. § 1.68. Unless
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`otherwise noted, citations to page numbers in this Petition are to the page numbers
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`appended to each page of the exhibits under CFR 42.63(d)(2)(i) and not to any
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`page numbers present in the original document.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘788 PATENT IS UNPATENTABLE
`A. Ground 1: Claims 1, 2, 3, 4, 5, 6, and 7 are Unpatentable under 35
`U.S.C. § 102(b) as Anticipated by Asano
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`Claims 1, 2, 3, 4, 5, 6, and 7 are anticipated by Asano (Ex. 1004). Asano is
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`listed on the face of the ‘788 patent, but was not relied on or cited by the Examiner
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`during prosecution. Asano relates to “a system and method for load sharing
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`processing operations between a vehicle mounted station and a stationary base
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`station . . . .” (Ex. 1004, 1:7-10.) In the embodiment disclosed in Asano, “the
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`vehicle-mounted computer makes a basic abnormal diagnosis and transmit[s] the
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`data to the host computer.” (Id. 9:4-6.) “The host computer then makes more
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`advanced, comprehensive and appropriate diagnosis . . . .” (Id. 9:6-9.)
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`Claims 1 and 4
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`1.
`Claim 1 is directed a “method for providing status data for vehicle
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`maintenance,” including monitoring for a triggering event relating to a diagnostic
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`or prognostic analysis of a vehicle component or subsystem, and initiating a
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`wireless transmission of a diagnostic or prognostic message from a
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`communications unit on the vehicle and a remote site. Asano discloses each of the
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`limitations of claim 1. Asano discloses “monitoring for a triggering event on a
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`vehicle . . . relating to a diagnostic or prognostic analysis of at least one of a
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`plurality of different components or subsystems,” as claim 1 requires. Asano
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`discloses that in the “diagnostic mode,” data on the vehicle is monitored “at
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`predetermined intervals of about 60ms.” (Id. 9:10-13; see also id. 9:50-52 (“[T]he
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`vehicle-mounted computer carries out data sampling at every predetermined
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`interval to detect abnormalities.”) Asano teaches the existence of an abnormality as
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`a “triggering event.” (See id. 9:13-14. (“A decision on whether any abnormality
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`exists is made based on the diagnosis results.”); Fig. 6.) The system of Asano
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`monitors components and subsystems of the vehicle such as “water temperature,
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`air/fuel ratio, air flow quantity, battery voltage, [etc].” (Id. 3:59-63.)
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`Asano also discloses “initiating a wireless transmission between [a]
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`communications unit [on the vehicle] and a remote site . . . in response to the
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`triggering event, the transmission including a diagnostic or prognostic message,”
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`as required by claim 1. Asano discloses that “[w]hen an abnormality exists, the
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`abnormal code is transmitted to the host computer on the dealer side through the
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`transmitter-receivers 5 and 11.” (Id. 9:15-18; see also id. Fig. 1 (showing
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`transmitter-receiver 5 on the vehicle communicating with transmitter-receiver 11
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`on the host computer side); Fig. 6.) The transmission to the host computer includes
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`“the necessary data including sampling values,” (id. 9:55-59), which, along with
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`the “abnormal code,” (id. 9:16), is a “diagnostic or prognostic message.” Asano
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`teaches that the transmission from the vehicle to the host computer is made
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`“through a telecommunications network,” (id. 5:36-40), and that the
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`“telecommunications path 10 . . . may be wired or wireless.” (Id. 5:50-51.) Thus,
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`Asano anticipates claim 1, as further detailed in the claim chart below.
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`Claim 4 is directed to a system for providing status data for vehicle
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`maintenance, with a diagnostic module arranged to monitor sensor data for a
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`triggering event, and a wireless communications unit that initiates a wireless
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`transmission of a diagnostic or prognostic message to a remote site. The limitations
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`of claim 4 are substantially similar to the limitations of claim 1, and are disclosed
`
`by Asano. The “vehicle mounted station” disclosed in Asano is “a diagnostic
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`module including at least one sensor for monitoring a plurality of different
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`components or subsystems,” as required in claim 4. (See id. 2:25-30.) The “vehicle
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`mounted station” is also “arranged to analyze monitoring data provided by at least
`
`one sensor and detect a triggering event relating to a diagnostic or prognostic
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`analysis,” as required in claim 4. (See id. 9:50-52; 9:10-14.)
`
`Asano also discloses “a wireless communications unit arranged to interface
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`with a wireless communications network” as required in claim 4, teaching that
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`“transmitter-receiver 5” (id. 9:15-18; Fig. 1) transmits data over a
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`“telecommunications network,” (id. 5:36-40), which may be “wireless.” (Id. 5:50-
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`51.) Finally, Asano discloses that the “communications unit [is] coupled to [the]
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`diagnostic module and initiat[es] a wireless transmission between said
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`communications unit and a remote site in response to the triggering event, the
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`transmission including a diagnostic or prognostic message” as required by claim 4.
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`(See id. 9:15-18; Fig. 1 (showing transmitter-receiver 5 coupled to vehicle
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`computer).) Accordingly, Asano anticipates claim 4, as further detailed in the
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`claim chart below.
`
`‘788 Patent,
`Claim 1
`(1.pre) A method
`for providing
`status data for
`vehicle
`maintenance,
`comprising:
`
`(1.a) 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
`
`
`
`
`
`Asano (Ex. 1004)
`
`See, e.g., 2:9-15 (“According to one aspect of this invention
`there is provided a method of load sharing processing
`operations between a vehicle mounted station and a
`stationary base station including the steps of said vehicle
`mounted station detecting operating conditions of the
`vehicle, transmitting data representative of the detected
`operating conditions to the base station . . . .”).
`See, e.g., 3:10-11 (“In a feature of the invention the vehicle
`mounted station is arranged to detect an abnormality . . . .”);
`3:59-63 (“Advantageously the detecting means is adapted to
`detect at least one of water temperature, air/fuel ration, air
`flow quantity, battery voltage, throttle valve opening angle,
`engine speed, transmission gear position and suspension
`setting.”);
`8:65-9:14 (“FIG. 6 shows an example of a failure diagnosis
`. . . . This embodiment is based on the concept of having the
`vehicle- mounted computer make a basic abnormal
`diagnosis and transmit the data to the host computer. . . . In
`step 6a, the diagnostic mode starts. This is carried out in
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`-11-
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`subsystems of the
`vehicle; and
`
`(1.b) 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
`including a
`diagnostic or
`prognostic
`message about the
`at least one
`component or
`subsystem.
`
`parallel with the general program and for example, is
`repetitive at predetermined intervals of about 60 ms. In step
`6b, a decision on whether any abnormality exists is made
`based on the diagnosis results.”);
`9:15-18 (“When an abnormality exists, the abnormal code is
`transmitted to the host computer on the dealer side through
`the transmitter-receivers 5 and 11.”);
`9:46-55 (“FIG. 7 shows an example regarding life
`prediction or failure prediction in accordance with data
`collected through sampling over a long period of time . . . .
`In step 7a, the vehicle- mounted computer carries out data
`sampling at every predetermined interval to detect
`abnormalities. Detection of abnormalities in this case is a
`very simple detection of abnormalities and a high-level
`failure diagnosis is carried out by the host computer.”).
`See also Figs. 6 and 7.
`See, e.g., 2:14-15 (“. . . transmitting data representative of
`the detected operating conditions to the base station . . . .”);
`3:10-13 (“In a feature of the invention the vehicle mounted
`station is arranged to detect an abnormality and to transmit
`data indicative thereof to said base station . . . .”);
`5:36-40 (“[I]nformation is transmitted between a vehicle
`and a host computer located, for example, at a stationary,
`ground based dealership location through a
`telecommunications network.”);
`5:46-54 (“A transmitter-receiver 5 for transmitting and/or
`receiving information to and from the host computer 18 is
`provided within processor 105. A telecommunication path
`10 which may be wired or wireless, e.g. a radio link
`interconnects the vehicle side located processor 105 with a
`stationary host computer station 25 including a transmitter-
`receiver 11 on the host computer station side of the path.”);
`9:15-18 (“When an abnormality exists, the abnormal code is
`transmitted to the host computer on the dealer side through
`the transmitter-receivers 5 and 11.”);
`9:55-59 (“In step 7b, an existence of abnormalities is
`confirmed and in step 7c, the vehicle-mounted computer
`transmits the necessary data including sampling values to
`the host computer through the transmitter-receivers 5, 11
`
`
`
`-12-
`
`

`
`and completes the flow process.”).
`See also Figs. 1 (showing “communication path” between
`“vehicle” and “host computer”), 6, 7
`
`Asano (Ex. 1004)
`See, e.g., 3:34-42 (“[T]here is
`provided a system for load sharing
`processing operations between a
`vehicle mounted station and a
`stationary base station, said vehicle
`mounted station including detecting
`means for detecting operating
`conditions of the vehicle, first
`transmitting means for transmitting
`data representative of the detected
`operating conditions to the base
`station . . . .”).
`See, e.g., discussion and disclosure
`above for claim (1.a) in the above
`claim chart, particularly, 3:10-11;
`3:59-63; 8:65-9:14; 9:15-18; 9:46-55;
`Figs. 6 and 7.
`
`See, e.g., discussion and disclosure
`above for claim (1.b) in the above
`claim chart, particularly, 2:14-15;
`3:10-13; 5:36-40; 5:46-54; 9:15-18;
`9:55-59; Figs. 1, 6, and 7.
`
`‘788 Patent, Claim 4
`(4.pre) A system for providing status
`data for vehicle maintenance,
`comprising:
`
`(4.a) 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
`(4.b) 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.
`
`-13-
`
`
`
`
`
`

`
`Claims 2, 3, 5, 6, and 7
`
`2.
`Claim 2 is dependent upon independent claim 1, and Claim 5 is dependent
`
`upon independent claim 4. Claim 2 and Claim 5 each require that “the remote site
`
`is a dealer of the vehicle.” Asano anticipates claims 2 and 5, disclosing the
`
`“information is transmitted between a vehicle and a host computer located, for
`
`example, at a stationary, ground based dealership location . . . .” (Id. 5:36-40; see
`
`also id. 5:60-63.)
`
`Claim 3 is dependent upon claim independent 1, and Claim 6 is dependent
`
`upon independent claim 4. Claims 3 and 6 each require that the “triggering event is
`
`a failure, predicted failure or fault code generation” of the monitored component or
`
`subsystem. Asano anticipates claims 3 and 6 because it discloses that the “vehicle-
`
`mounted computer carries out . . . computations for a failure diagnosis . . . .” (Id.
`
`8:67-9:3.) Asano discloses that “a decision on whether any abnormality exists is
`
`made based on the diagnosis results.” (Id. 9:13-14.) “When an abnormality exists,
`
`the abnormal code is transmitted to the host computer on the dealer side.” (Id.
`
`9:15-17.) Asano’s generation of an “abnormal code” is a “fault code generation”
`
`required in the claims. (See also id. Fig. 6 (showing “diagnostic mode” and
`
`“abnormality code”).)
`
`Claim 7 is dependent upon claim 1, and requires that “the step of monitoring
`
`for the triggering event comprises providing at least one sensor that monitors the . .
`
`
`
`-14-
`
`

`
`. component or subsystem.” Asano anticipates claim 7, as the “vehicle mounted
`
`station” described in Asano “detects . . . at least one of water temperature, air flow
`
`ratio air fuel quantity, battery voltage, throttle value opening angle, engine speed,
`
`transmission gear position and suspension setting. (Id. 2:25-30.) As taught in
`
`Asano, these operating conditions of these components and subsystems are
`
`monitored by “sensors” that, for example, “sense the engine operating conditions,
`
`inter alia, the engine cooling water temperature (TWS) 32 and the air/fuel ratio
`
`(O2S) 34. (Id. 6:19-22; see also id. 6:28-33 (describing an “inlet pipe air flow
`
`sensor” and “engine angle sensor”); see also id. Fig. 2.) Data from these sensors
`
`are connected to the vehicle computer via “bus line 30.” (See id. 6:14-18; Fig. 2.)
`
`As described above, the vehicle computer “monitor[s] for the triggering event”
`
`when it determines “whether any abnormality exists” in the diagnostic mode. (Id.
`
`9:10-14.) Accordingly, Asano anticipates claim 7.
`
`3.
`
`Asano is Not Redundant of the Grounds Instituted in the
`IPR2013-00417 Proceeding or of any other Grounds in this
`Petition
`
`The foregoing ground of anticipation by Asano is not redundant of any of
`
`the grounds based on Ishihara. For example, Asano offers a more robust disclosure
`
`of the limitation of the wireless transmission “including a diagnostic or prognostic
`
`message” required in claims 1 and 4 (and all claims dependent upon those claims),
`
`as compared to Ishihara. Asano teaches that the “vehicle-mounted computer
`
`
`
`-15-
`
`

`
`make[s] a basic abnormal diagnosis.” (Ex. 1004, 9:4-6.) Asano further discloses
`
`that “a decision on whether any abnormality exists is made based on the diagnosis
`
`results.” (Id. 9:13-14.) When the “existence of abnormalities is confirmed . . . the
`
`vehicle-mounted computer transmits the necessary data including sampling values
`
`to the host computer.” (Id. 9:55-58.) Thus Asano discloses that at the time of the
`
`wireless transmission, the vehicle- mounted computer has already made a
`
`diagnosis, and a message based on that diagnosis is transmitted wirelessly to the
`
`remote site. In comparison, Ishihara discloses transmission of “failure data” and an
`
`“identification code” to the “failure diagnosis station 3 outside the vehicle” (Ex.
`
`1007, p. 4, col. 1.) Although the message disclosed in Ishihara contains failure
`
`information, the disclosure of Ishihara does not rise to the same level of specificity
`
`as Asano that the information in the message is based on a “diagnosis.”
`
`Furthermore, Asano is not redundant of the other new ground presented in
`
`this Petition. For example, Asano offers a more robust disclosure of the “sensor”
`
`requirement of independent claim 4 (and all claims dependent upon that claim),
`
`than Corwin (Ex. 1005). While Corwin discloses that the “AFRS monitor[s] and
`
`compares outputs from various aircraft electronic units,” (Ex. 1005, 7:28-29), its
`
`disclosure of at least one “sensor” is not as specific as Asano, which discloses
`
`“detecting means . . . adapted to detect at least one of water temperature, air/fuel
`
`ration, air flow quantity, battery voltage . . . .” (Ex. 1004, 3:59-63.) In at least the
`
`
`
`-16-
`
`

`
`aforementioned respects, Asano is not redundant of the other new ground
`
`presented in this Petition.
`
`B. Ground 2: Claims 1, 3, 4, 6, 7, 13, and 20 are Unpatentable under 35
`U.S.C. § 102(b) as Anticipated by Corwin
`
`Claims 1, 3, 4, 6, 7, 13, and 20 are anticipated by Corwin (Ex. 1005).
`
`Corwin was not before or considered by the Examiner during prosecution of the
`
`‘788 patent. Corwin relates to “fault reporting and, more particularly, to an aircraft
`
`maintenance scheduling system by which fault-related data onboard an operational
`
`aircraft is processed through a communications channel to a ground terminal. (Ex.
`
`1005, 1:4-8.)
`
`Claims 1 and 4
`
`1.
`Corwin discloses each of the limitations of claim 1. Corwin discloses
`
`“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,” as claim 1 requires. Corwin discloses that an “Automatic Fault
`
`Reporting System” or AFRS, that “monitor[s] and compares outputs from various
`
`aircraft electronic units.” (Id. 7:28-29.) The AFRS monitors “presently installed
`
`digital and analog system outputs” and detects faults based on “programmed fault
`
`conditions.” (Id. 2:51-54.) “[E]very system on the airplane” is monitored for faults,
`
`(id. 7:49-50), including systems such as “fuel,” landing gear, “engines,” “brakes,”
`
`etc. (Id. 8:5-37.)
`
`
`
`-17-
`
`

`
`Corwin also discloses “initiating a wireless transmission b