Trials@uspto.gov Paper 18
`571-272-7822
`
`Entered: January 13, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TOYOTA MOTOR CORPORATION
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner.
`
`
`Case IPR2013-00412
`Patent 6,738,697
`
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Page 1 of 41
`
`Hyundai Exhibit 1008
`
`
`571-272-7822
`
`Entered: January 13, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TOYOTA MOTOR CORPORATION
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner.
`
`
`Case IPR2013-00412
`Patent 6,738,697
`
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Page 1 of 41
`
`Hyundai Exhibit 1008
`
`
`
`Case IPR2013-00412
`Patent 6,738,697
`
`
`INTRODUCTION
`
`On July 8, 2013, Toyota Motor Corporation (“Toyota” or
`
`“Petitioner”) filed a petition (Paper 4, “Pet.”) requesting an inter partes
`
`review of claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 of U.S. Patent No.
`
`6,738,697 (Ex. 1001, “the ’697 patent”). American Vehicular Sciences LLC
`
`(“AVS” or “Patent Owner”) filed a preliminary response (Paper 16, “Prelim.
`
`Resp.”) on October 17, 2013. 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 Toyota’s petition and AVS’s preliminary
`
`response, we determine that there is a reasonable likelihood that Toyota
`
`would prevail in showing the unpatentability of claims 1, 2, 10, 17-21, 26,
`
`27, 32, 40, and 61 of the ’697 patent. Accordingly, pursuant to 35 U.S.C.
`
`§ 314, we institute an inter partes review as to claims 1, 2, 10, 17-21, 26, 27,
`
`32, 40, and 61 of the ’697 patent.
`
`We determine that there is not a reasonable likelihood that Toyota
`
`would prevail in showing the unpatentability of claim 5. Therefore, we
`
`decline to institute an inter partes review as to claim 5 of the ’697 patent.
`
`A. Related Proceedings
`
`
`
`Toyota indicates that the ’697 patent has been asserted by AVS in the
`
`following district court cases: (1) American Vehicular Sciences LLC v.
`
`2
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`Patent 6,738,697
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`Toyota Motor Corp., et al., No. 6:12-CV-405 (E.D. Tex., filed June 25,
`
`2012); (2) American Vehicular Sciences LLC v. BMW Grp. A/K/A BMW AG
`
`et al., No. 6:12-CV-412 (E.D. Tex., filed June 25, 2012); (3) American
`
`Vehicular Sciences LLC v. Hyundai Motor Co. et al., No. 6:12-CV-776
`
`(E.D. Tex., filed October 15, 2012); (4) American Vehicular Sciences LLC v.
`
`Kia Motors Corp., No. 6:13-CV-148 (E.D. Tex., filed February 13, 2013);
`
`American Vehicular Sciences LLC v. American Honda Motor Co., Inc. et al.,
`
`No. 6:13-CV-226 (E.D. Tex., filed March 8, 2013); and American Vehicular
`
`Sciences LLC v. Mercedes-Benz U.S. Intl., Inc., No. 6:13-CV-310 (E.D.
`
`Tex., filed April 3, 2013). Pet. 1-2.
`
`
`
`Toyota indicates that this petition was filed “simultaneously” with the
`
`petition in IPR2013-00413, which also involves the ’697 patent. Pet. 2.
`
`B. The ’697 Patent Disclosure
`
`
`
`The disclosed invention of the ’697 patent is directed to a vehicle
`
`diagnostic system that diagnoses the state of a vehicle or the state of a
`
`component of the vehicle, and generates an output indicative or
`
`representative of that diagnosed state. Ex. 1001, Abstract: 1-3. A
`
`communications device transmits that output to a remote location, possibly
`
`via a satellite or the Internet. Ex. 1001, Abstract: 3-6. In that regard, the
`
`specification further states:
`
`Transmission of the output to a remote location may entail
`arranging a communications device comprising a cellular
`telephone system including an antenna on the vehicle. The
`output may be to a satellite for transmission from the satellite to
`the remote location. The output could also be transmitted via
`the Internet to a web site or host computer associated with the
`remote location.
`
`Ex. 1001, 14:20-26.
`
`3
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`The Field of the Invention portion of the disclosure states that the
`
`invention relates to methods and apparatus for diagnosing components in a
`
`vehicle and transmitting data relating to the diagnosis, and other information
`
`relating to the operating conditions of the vehicle, to one or more remote
`
`locations via a telematics link. Ex. 1001, 1:37-42.
`
`
`
`The Objects of the Invention portion of the disclosure states that it is
`
`an object of the invention to provide a new and improved method and
`
`system for diagnosing components in a vehicle and the operating status of
`
`the vehicle, and for alerting the vehicle’s dealer, or another repair facility,
`
`via a telematics link, that a component of the vehicle is functioning
`
`abnormally and may be in danger of failing. Ex. 1001, 11:26-31.
`
`C. Exemplary Claims
`
`
`
`Of the challenged claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61,
`
`only claims 1 and 21 are independent claims. Claims 2, 5, 10, and 17-20
`
`each depend directly or indirectly from claim 1, and claims 26, 27, 32, 40,
`
`and 61 each depend directly or indirectly from claim 21. Claims 1 and 21
`
`are reproduced below:
`
`A vehicle, comprising:
`
`1.
`
`a diagnostic system arranged on the vehicle to diagnose
`
`the state of the vehicle or the state of a component of the
`vehicle and generate an output indicative or representative
`thereof; and
`
`
`
`a communication device coupled to said diagnostic
`system and arranged to automatically establish a
`communications channel between the vehicle and a remote
`facility without manual intervention and wirelessly transmit the
`output of said diagnostic system to the remote facility.
`
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`4
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`21. A method for monitoring a vehicle, comprising the steps
`of:
`
`
`diagnosing the state of the vehicle or the state of a
`
`component of the vehicle by means of a diagnostic system
`arranged on the vehicle;
`
`generating an output indicative or representative of the
`
`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle; and
`
`transmitting the output indicative or representative of the
`
`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle from the vehicle to a remote location.
`
`(emphasis added).
`
`D. Prior Art Relied Upon
`
`
`
`Fry1
`
`Diesel Locomotive Reliability
`Improvements by System Monitoring,
`209 PROC. INST. OF MECHANICAL
`ENGINEERS, PART F: J. OF RAIL & RAPID
`TRANSIT 1 (1995) (“Fry”)
`Ishihara Japanese Published Application
`H01-197145 (“Ishihara”)
`
`
`
`English Translation of Ishihara
`
`Asano
`
`Patent 5,157,610 (“Asano”)
`
`
`
`January, 1995 Exhibit
`1002
`
`Dec. 17, 1993 Exhibit
`1003
`Exhibit
`1004
`Oct. 20, 1992 Exhibit
`1005
`
`
`
`
`1 The copy of Fry, as submitted by Toyota, includes an added notation from a
`third party source that it was published in January 1995. Ex. 1002, Abstract
`Page. AVS challenges the alleged publication date of January, 1995.
`However, there is sufficient evidence to institute a review on the basis of the
`January 1995 date. Objections to evidence supporting the Petition are
`governed by 37 C.F.R. § 42.64(b).
`
`5
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`E. Alleged Grounds of Unpatentability
`
`
`
`
`Claims
`
`Ground
`
`Reference(s)
`
`Claims 1, 2, 10, 17, 19-21,
`32, 40, and 61
`Claims 1, 2, 5, 10, 17, 18, 21,
`26, 27, 32, and 61
`Claims 1, 2, 5, 10, 17, 18, 21,
`26, 27, 32, and 61
`Claims 5, 18, 19, 20, 26, 27,
`and 40
`Claims 5, 18, 19, 20, 26, 27,
`and 40
`
`§ 102(a)
`
`Fry
`
`§ 102(b)
`
`Ishihara
`
`§ 102(b)
`
`Asano
`
`§ 103(a)
`
`Fry and Ishihara
`
`§ 103(a)
`
`Fry and Asano
`
`A. Claim Construction
`
`
`ANALYSIS
`
`Principles of Law
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). The terms also are given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art in the context of the
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). If an inventor acts as his or her own lexicographer, the definition
`
`must be set forth in the specification with reasonable clarity, deliberateness,
`
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`
`1243, 1249 (Fed. Cir. 1998).
`
`
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`6
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`An extraneous limitation should not be read into the claims from the
`
`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`
`the presence of which in a claim is unnecessary for the purpose of making
`
`sense of the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994); Renishaw PLC, 158 F.3d at 1249. The construction that stays true to
`
`the claim language and most naturally aligns with the inventor’s description
`
`is likely the correct interpretation. See Renishaw PLC, 158 F.3d at 1250.
`
`
`
` “Comprising” is a term of art used in claim language, which means
`
`that the named elements are essential, but other elements also may be
`
`included to constitute additional components within the scope of the claim.
`
`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
`
`“component”
`
`
`
`Independent claims 1 and 21 both recite the term “component.”
`
`According to Toyota, “component” means “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.” Pet. 6:12-14.
`
`Petitioner cites the specification, which states:
`
`The term “component” refers to any part or assembly of
`
`parts which is mounted to or a part of a motor vehicle and
`which is capable of emitting a signal representative of its
`operating state.
`
`Ex. 1001, 30:58-61.
`
`
`
`Toyota does not contend that the named inventor of the ’697 patent
`
`acted as his own lexicographer and coined a new meaning for the term
`
`“component” different from the ordinary and customary meaning as would
`
`be understood by one with ordinary skill in the art. Neither does AVS.
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`7
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`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 the standard required for recognizing a new
`
`definition, i.e., reasonable clarity, deliberateness, and precision. We do not
`
`regard the above-quoted text as setting forth the inventor’s special definition
`
`for the term “component.” Instead, the text describes how components
`
`operate and interact with other elements in an operative environment.
`
`
`
`The Board construes “component” simply as “a part or an assembly of
`
`parts, 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.
`
`“part”
`
`
`
`Claim 17 recites the term “part.” According to Toyota, “part” means
`
`“any component, sensor, system or subsystem of the vehicle such as the
`
`steering system, braking system, throttle system, navigation system, airbag
`
`system, seatbelt retractor, air bag inflation valve, air bag inflation controller
`
`and air bag vent valve, as well as those listed below in the definitions of
`
`‘component’ and ‘sensor.’” Pet. 6:20 to 7:5. Petitioner cites the
`
`specification, which states:
`
`As used herein, a “part” of the vehicle includes any
`
`component, sensor, system or subsystem of the vehicle such as
`the steering system, braking system, throttle system, navigation
`system, airbag system, seatbelt retractor, air bag inflation valve,
`air bag inflation controller and airbag vent valve, as well as
`those listed below in the definitions of “component” and
`“sensor”.
`
`Ex. 1001, 10:51-57.
`
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`Toyota does not contend that the named inventor of the ’697 patent
`
`acted as his own lexicographer and coined a new meaning for the term
`
`“part” different from the ordinary and customary meaning as would be
`
`understood by one with ordinary skill in the art. Neither does AVS. Also,
`
`the above-quoted language does not appear to be in the form of a definition
`
`for the word “part.” Rather, the text is about what would be regarded as a
`
`part of the vehicle that is described in the specification.
`
`
`
`Accordingly, we do not regard the above-quoted text as setting forth
`
`the inventor’s special definition for the term “part.” On this record, the term
`
`“part” does not require express construction. The record does not indicate
`
`that the ordinary and customary meaning of the word, from the perspective
`
`of one with ordinary skill in the art, is different from the word’s plain and
`
`ordinary usage in the English language.
`
`“sensor system”
`
`
`
`Claim 10 recites the term “sensor system.” According to Toyota,
`
`“sensor system” means “any of the sensors listed below in the definition of
`
`‘sensor’ as well as any type of component or assembly of components which
`
`detect, sense or measure something.” Pet. 7:12-16. In that regard, the
`
`specification states:
`
`As used herein, a “sensor system” includes any of the
`
`sensors listed below in the definition of “sensor” as well as any
`type of component or assembly of components which detect,
`sense, or measure something.
`
`Ex. 1001, 10:58-61.
`
`
`
`The cited portion of the specification does not support adequately
`
`Toyota’s proposed construction. Toyota has not contended that the inventor
`
`acted as his own lexicographer in coining a special meaning for the common
`
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`term “sensor system.” Neither has AVS. Also, the above-reproduced text
`
`refers to what a sensor system includes, not what it is.
`
`
`
`Moreover, with regard to the phrase “as well as any type of
`
`component or assembly of components which detect, sense, or measure
`
`something,” we note that it amounts to impermissible functional claiming.
`
`See Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 12 (1946).
`
`The language does not invoke means-plus-function treatment under
`
`35 U.S.C. § 112, ¶ 6.2
`
`
`
`Furthermore, the above-quoted text is circular, in that it uses the term
`
`sense to describe a sensor system. It also is unclear in what ways “measure”
`
`and “detect” differ from “sense.”
`
`
`
`For all of the foregoing reasons, we do not regard the above-quoted
`
`text as setting forth the inventor’s special definition for the term “sensor
`
`system.” On this record, the term “sensor system” does not require an
`
`express construction. We agree, however, that under the rule of broadest
`
`reasonable interpretation, the term “sensor system” includes each of the
`
`sensors particularly identified in the specification of the ’697 patent.
`
`“sensor”
`
`Dependent claims 2, 10, and 32 each recite the term “sensor.”
`
`According to Toyota, the term “sensor” means “any measuring or sensing
`
`device mounted on a vehicle or any of its components including new sensors
`
`
`2 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 329 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as
`35 U.S.C. § 112(f). Because the ’697 patent has a filing date before
`September 16, 2012 (effective date of AIA), we use the citation “§ 112, ¶ 6.”
`
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`mounted in conjunction with the diagnostic module in accordance with the
`
`invention.” Pet. 7:7-11. Toyota cites to the specification, which states:
`
`The term “sensor” refers to any measuring or sensing device
`mounted on a vehicle or any of its components including new
`sensors mounted in conjunction with the diagnostic module in
`accordance with the invention. A partial, non-exhaustive list of
`common sensors mounted on an automobile or truck is: . . . .
`
`Ex. 1001, 31:23-32:11.
`
`Neither Toyota nor AVS contends that the named inventor of the ’697
`
`patent acted as his own lexicographer and coined a new meaning for the
`
`term “sensor” different from the ordinary and customary meaning as would
`
`be understood by one with ordinary skill in the art. The above-referenced
`
`excerpt does not give one of ordinary skill adequate notice of a change in the
`
`meaning of a common term or intent to redefine the term. See In re Paulsen,
`
`30 F.3d at 1480. Also, the text is in a portion of the description of preferred
`
`embodiments, uses the words “refers to,” and is followed by a “non-
`
`exhaustive list” of more than forty exemplary automobile or truck sensors.
`
`Regarding the portion of Toyota’s proposed construction defining
`
`“sensor” as a “measuring or sensing device,” neither Toyota nor AVS
`
`explains how a “sensor” measures without also sensing. Additionally,
`
`defining “sensor” to mean a “sensing device” is circular and, thus, not
`
`meaningful. Concerning the portion of Toyota’s proposed construction
`
`defining “sensor” as “any . . . device mounted on a vehicle or any of its
`
`components,” we note that the requirement of being mounted on a vehicle is
`
`extraneous as far as the claimed subject matter is concerned. Toyota has not
`
`provided a persuasive reason for reading into the ordinary meaning of
`
`“sensor” the requirement of being mounted on a vehicle.
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` For all the foregoing reasons, we do not regard the above-quoted text
`
`as setting forth the inventor’s special definition for “sensor.” The term
`
`possesses its ordinary and customary meaning, as would be understood by
`
`one with ordinary skill, and does not require an express construction. We
`
`agree, however, that the term “sensor” includes each of the sensors
`
`particularly identified in the specification of the ’697 Patent.
`
`“state of the vehicle”
`
`
`
`Independent claims 1 and 21 both recite the term “state of the
`
`vehicle.” According to the Petitioner, “state of the vehicle” means “a
`
`diagnosis of the condition of the vehicle with respect to its stability and
`
`proper running and operating condition.” Pet. 7:17-19. Petitioner cites to
`
`the specification, which states:
`
`As used herein, a diagnosis of the “state of the vehicle”
`
`means a diagnosis of the condition of the vehicle with respect to
`its stability and proper running and operating condition.
`
`Ex. 1001, 10:29-32.
`
`
`
`
`
`The cited portion of the specification does not support adequately
`
`Petitioner’s proposed construction. The above-quoted text refers to and
`
`explains “a diagnosis” of the state of a vehicle, not what constitutes “state of
`
`the vehicle.” On this record, the term “state of the vehicle” does not require
`
`an express construction.
`
`“diagnosis of the state of the vehicle”
`
`
`
`Claims 1 and 21 both recite the term “diagnosis of the state of the
`
`vehicle.” AVS contends that “diagnosis of the state of the vehicle” means
`
`“diagnosis of the condition of the vehicle with respect to its stability and
`
`proper running and operating condition.” Prelim. Resp. 9:5-8. The
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`contention is supported by the above-quoted portion of the specification.
`
`See Ex. 1001, 10:29-32.
`
`“control at least one part of the vehicle”
`
`
`
`Claim 17 recites the phrase “control at least one part of the vehicle.”
`
`AVS contends that the phrase means “variably directing the operation of at
`
`least one part of the vehicle based on the diagnosis.” Prelim. Resp. 10:8-11
`
`(citing Ex. 1001, 41:9-18, 84:9-19). Our review of the cited portion of the
`
`specification reveals only examples of what action may be taken, not any
`
`restrictive definition. On this record, there is no need for any express
`
`construction of this term. It suffices to say that the term is not limited to
`
`controlling any particular type or kind of “part” of the vehicle.
`
`“display”
`
`
`
`Claim 5 recites the term “display.” AVS contends that “display”
`
`means “a screen for showing information, as opposed to a warning lamp.”
`
`Prelim. Resp. 10:11-12. According to AVS, the specification clearly
`
`distinguishes a display from a warning lamp. AVS cites to the specification,
`
`which states: “The [output system] may be a display as mentioned above or
`
`a warning device.” Prelim. Resp. 10:12-15 (citing Ex. 1001, 81:32-36).
`
`AVS also cites to a portion of the specification that refers to a display
`
`separately from a warning device. Prelim. Resp. 10:15 to 11:2 (citing Ex.
`
`1001, 13:24-33). Having considered the portions of the specification cited
`
`by AVS, we agree with AVS that, in the context of the ’697 patent, a
`
`warning lamp or light does not constitute a “display,” and that a “display”
`
`covers a screen for showing information.
`
`
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`“display . . . arranged to display the diagnosis”
`
`
`
`Claim 5 recites the phrase “display . . . arranged to display the
`
`diagnosis.” AVS contends that the phrase means “the display is able to
`
`show the diagnosis output from the diagnostic system onboard the vehicle.”
`
`Prelim. Resp. 11:3-6 (citing Ex. 1001, 13:24-28; claim 1).
`
`
`
`AVS’s contention follows from a plain reading of the phrase in the
`
`claim. Claim 5 depends from claim 1. Claim 1 recites “a diagnostic system
`
`arranged on the vehicle” that generates an output. Thus, the reference in
`
`claim 5 to “the diagnosis” refers back to a diagnosis from the diagnostic
`
`system arranged on the vehicle. AVS’s construction is just what the claim
`
`language indicates. On this record, there is no need for any express
`
`construction of “display . . . arranged to display the diagnosis.”
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`“diagnostic system arranged on the vehicle”
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`Claims 1 and 21 both recite “diagnostic system arranged on the
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`vehicle.” AVS contends that the phrase means “a system having all the
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`components for diagnosing the state of the vehicle or the state of a
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`component of the vehicle located on the vehicle.” Prelim. Resp. 9:14-17. In
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`that connection, AVS cites to the specification, which refers to a prior art
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`reference in which “the determination of the problem occurs at the remote
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`site by human technicians.” Ex. 1001, 3:9-13. AVS also cites to the
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`specification (Ex. 1001), in column 10, lines 29-41. Our review of that
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`portion of the specification reveals only an indication of what constitutes a
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`diagnosis of the “state of the vehicle,” and not anything about what
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`constitutes a diagnostic system that is “arranged on the vehicle” as opposed
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`to one that is “not arranged on the vehicle.”
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`It seems to follow from the recitation that the diagnostic system is
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`arranged on the vehicle, that the components of the diagnostic system are
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`located physically on the vehicle. The focal point of contention is unclear.
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`On this record, there does not appear to be a need for any express
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`construction of “arranged on the vehicle.” We essentially agree with AVS,
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`but note that we do not exclude the possibility that the diagnostic system
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`may acquire instructions, data, or commands from a remote source. It is the
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`components that actually perform the substantive diagnostic processing that
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`must be located physically on the vehicle.
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`Also, requiring a diagnostic system to be arranged on the vehicle does
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`not exclude an additional diagnostic system that is located remotely from the
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`vehicle. Note that each of independent claims 1 and 21 uses the term
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`“comprising,” which is a term of art meaning that the named elements are
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`essential, but other elements also may be included to constitute additional
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`components within the scope of the claim. See Genentech, Inc., 112 F.3d at
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`501.
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`We are cognizant the Objects of the Invention portion of the
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`disclosure states:
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`It is important to note that raw sensor data is not transmitted
`from the vehicle [to] the remote location for analysis and
`processing by the devices and/or personnel at the remote
`location. Rather, in accordance with the invention, a diagnosis
`of the vehicle or the vehicle component is performed on the
`vehicle itself and this resultant diagnosis is transmitted.
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`Ex. 1001, 14:27-33.
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`
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`However, “[t]he name of the game is the claim.” In re Hiniker Co.,
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`150 F.3d 1367, 1369 (Fed. Cir. 1998). Stated objectives and preferred
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`embodiments are not read automatically into claims. We see nothing in
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`claim 1 or claim 21 that reasonably can be read as prohibiting transmission
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`of raw sensor data to a remote location, or locating an additional diagnostic
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`system remotely. An extraneous limitation should not be read into the
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`claims. E.g., E.I. du Pont de Nemours & Co., 849 F.2d at 1433. An
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`extraneous limitation is one the presence of which in a claim is unnecessary
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`for the purpose of making sense of the claim. See, e.g., In re Paulsen, 30
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`F.3d at 1480; Renishaw PLC, 158 F.3d at 1249.
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`B. Alleged Anticipation of Claims 1, 2, 5, 10, 17, 18, 21,
`26, 27, 32, and 61, under 35 U.S.C. § 102(b), by Asano
`
`Toyota contends that claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61
`
`are anticipated, under 35 U.S.C. § 102(b), by Asano. Pet. 4, 38. In light of
`
`the arguments and evidence submitted by both parties, Toyota has
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`established a reasonable likelihood that each of claims 1, 2, 10, 17, 18, 21,
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`26, 27, 32, and 61 is anticipated by Asano. However, Toyota has not
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`established a reasonable likelihood that claim 5 is anticipated by Asano.
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`The independent claims are 1 and 21. Claims 2, 5, 10, 17, 18, 26, 27,
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`32, and 61 each depend directly or indirectly from claim 1 or claim 21.
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`Asano
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`Asano discloses a vehicle-mounted computer, an embodiment of
`
`which is illustrated in Figure 2, reproduced below:
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`As shown in Figure 2, computer 105 has central processing unit
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`(CPU) 7 that receives operating signals from sensors by way of bus line 30,
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`to which multiplexer 36 and analog to digital conversion circuits 38 and 52
`
`are connected. Ex. 1005, 6:14-30. Sensors, including engine cooling water
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`temperature sensor (TWS) 32 and air/fuel ratio sensor (O2S) 34, sense the
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`engine operating conditions. Id. at 19-22. CPU 7 carries out computations
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`based on the engine operating conditions. Ex. 1005, 6:43-47. Additionally,
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`CPU 7 is connected to display 90 to display instructions to the driver. Id.
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`at 6:67-68.
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`Asano provides further disclosure of failure diagnosis on a vehicle. In
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`that connection, Figure 6 is reproduced below:
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`Figure 6 illustrates a functional diagram of failure diagnosis
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`processing. Ex. 1005, 5:23. Computations for failure diagnosis are carried
`
`out at predetermined intervals. Ex. 1005, 9:1-3. The period of each interval
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`can be about 60 milliseconds. Ex. 1005, 9:10-13. At step 6a shown in
`
`Figure 6, a diagnostic mode starts onboard the vehicle. Ex. 1005, 9:10.
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`Next, in step 6b, a decision is made onboard the vehicle on whether an
`
`abnormality exists based on the results of diagnosis. Ex. 1005, 9:13-14. If
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`no abnormality exists, the process ends. Ex. 1005, 9:14-15. When a
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`decision is made in step 6b, onboard the vehicle, that an abnormality exists,
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`then an abnormality code is transmitted, in step 6n, to the host computer at a
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`dealer, through transmitter-receivers. Ex. 1005, 9:15-18; Figure 6.
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`1. Claims 1 and 21
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`Apparatus claim 1 recites a vehicle, comprising a diagnostic system,
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`arranged on the vehicle, to diagnose the state of the vehicle or the state of a
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`component of the vehicle, and to generate an output indicative or
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`representative of that state. Method claim 21 recites a method for
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`monitoring a vehicle, comprising the steps of (1) diagnosing the state of the
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`vehicle or the state of a component of the vehicle by means of a diagnostic
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`system arranged on the vehicle, and (2) generating an output indicative or
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`representative of that diagnosed state.
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`As pointed out by Toyota, Asano discloses a vehicle including such a
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`diagnostic system arranged on the vehicle, as well as a monitoring method
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`making use of a diagnostic system arranged on the vehicle.
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`Toyota notes that Asano discloses sensors for sensing vehicle engine
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`operating conditions. Pet. 38:14-15 (citing Ex. 1005, 6:19-34). Toyota
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`notes that Asano discloses various detectors that detect vehicle operating
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`parameters such as water temperature, air/fuel ratio, air flow quantity,
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`battery voltage, throttle valve opening angle, engine speed, transmission
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`gear position, and suspension setting. Pet. 38:15-19 (citing Ex. 1005, 3:59-
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`66). Toyota notes that sensor data are provided to a computer onboard the
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`vehicle. Pet. 38:19-20 (citing ex. 1005, 6:14-18). Toyota’s assertions are
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`supported by the record, and, thus, we are persuaded. As we have described
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`above with regard to the disclosure of Asano, Figure 2 of Asano shows that
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`onboard computer 105 receives sensor signals by way of bus line 30,
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`multiplexer 36 and analog to digital conversion circuits 38 and 52. Ex.
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`1005, 6:14-30.
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`Toyota notes that in Asano, the vehicle-mounted computer makes a
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`basic abnormality diagnosis. Pet. 38:20-21 (citing Ex. 1005, 9:4-6). Toyota
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`notes that in Asano, when an abnormality exists, an abnormal code is
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`generated by the computer and is transmitted to a remote host computer
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`located at a dealer. Pet. 38:21-39:2 (citing Ex. 1005, 9:15-18). Toyota notes
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`that transmission of the abnormal code can be through a wireless radio link.
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`Pet. 39:2-4 (citing Ex. 1005, 5:50-54).
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`Asano does describe that the onboard computer “makes a basic
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`abnormal diagnosis.” Ex. 1005, 9:4-6. Asano also states, referring to above-
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`reproduced Figure 6:
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`In step 6b, a decision on whether any abnormality exists is
`made based on the diagnosis results. When no abnormality
`exists, the process ends. When an abnormality exists, the
`abnormal code is transmitted to the host computer on the dealer
`side through the transmitter-receivers 5 and 11.
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`Ex. 1005, 9:13-18.
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`
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`Toyota further provides a detailed claim chart that maps each claim
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`limitation to the disclosure of Asano. Pet. 41-49. Toyota’s assertions are
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`supported by the record.
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`
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`AVS argues that Asano’s diagnostic system is not “arranged on the
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`vehicle” as required by claims 1 and 21, and, thus, does not generate,
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`onboard the vehicle, an output indicative of the diagnosed state of the
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`vehicle or component of the vehicle. Prelim. Resp. 27-29. For reasons
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`discussed below, we are unpersuaded.
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`
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`AVS states: “It is not enough for an on-board vehicle processor to
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`merely collect sensor data. The processor actually computes a diagnosis of
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`the state of the vehicle or components and generate[s] an output of that
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`diagnosis—on board the vehicle itself and not on a remote computer.”
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`Prelim. Resp. 28:14-17 (emphasis in original).
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`According to AVS, Asano does not teach that diagnosis is performed
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`by a processor onboard the vehicle, because the onboard device is used
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`“only” for detecting operating conditions, which are then transmitted to a
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`remote base station that processes the data to provide a diagnosis. Prelim.
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`Resp. 29:1-10. In that regard, AVS states:
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`Indeed, Asano expressly discloses that the vehicle-mounted
`statio
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