Trials@uspto.gov Paper 16
`Tel: 571-272-7822 Entered: January 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner.
`
`
`Case IPR2013-00413
`Patent 6,738,697
`
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`
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`Page 1 of 32
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`Hyundai Exhibit 1009
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`Tel: 571-272-7822 Entered: January 13, 2014
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`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 IPR2013-00413
`Patent 6,738,697
`
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Page 1 of 32
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`Hyundai Exhibit 1009
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`
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`Case IPR2013-00413
`Patent 6,738,697
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`
`INTRODUCTION
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`On July 8, 2013, Toyota Motor Corporation (“Toyota” or
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`“Petitioner”) filed a petition (Paper 3, “Pet.”) requesting an inter partes
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`review of claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 of U.S. Patent No.
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`6,738,697 (Ex. 1101, “the ‟697 patent”). American Vehicular Sciences LLC
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`(“AVS” or “Patent Owner”) filed a preliminary response (Paper 15, “Prelim.
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`Resp.”) on October 17, 2013. We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a) which provides as follows:
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`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of Toyota‟s petition and AVS‟s preliminary
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`response, we determine that Toyota has established a reasonable likelihood
`
`that Toyota would prevail in showing the unpatentability of each of claims 1,
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`2, 5, 10, 17-21, 26, 27, 32, 40, and 61 of the ‟697 patent. Accordingly,
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`pursuant to 35 U.S.C. § 314, we institute an inter partes review as to claims
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`1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61 of the ‟697 patent.
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`A. Related Proceedings
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`
`
`Toyota indicates that the ‟697 patent has been asserted by AVS in the
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`following district court cases: (1) American Vehicular Sciences LLC v.
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`Toyota Motor Corp., et al., No. 6:12-CV-405 (E.D. Tex. filed June 25,
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`2012) (hereinafter, “the ‟405 Litigation”); (2) American Vehicular Sciences
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`LLC v. BMW Grp. A/K/A BMW AG et al., No. 6:12-CV-412 (E.D. Tex. filed
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`2
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`June 25, 2012); (3) American Vehicular Sciences LLC v. Hyundai Motor Co.
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`et al., No. 6:12-CV-776 (E.D. Tex. filed Oct. 15, 2012); (4) American
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`Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-CV-148 (E.D. Tex.
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`filed Feb. 13, 2013); (5) American Vehicular Sciences LLC v. American
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`Honda Motor Co., Inc. et al., No. 6:13-CV-226 (E.D. Tex. filed Mar. 8,
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`2013); and (6) American Vehicular Sciences LLC v. Mercedes-Benz U.S.
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`Intl., Inc., No. 6:13-CV-310 (E.D. Tex. filed Apr. 3, 2013). Pet. 1-2. Toyota
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`further indicates that its petition was filed “simultaneously” with a petition
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`in IPR2013-00412, which also involves the ‟697 patent. Pet. 2.
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`B. The ’697 Patent Disclosure
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`
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`The disclosed invention of the ‟697 patent is directed to a vehicle
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`diagnostic system that diagnoses the state of a vehicle or the state of a
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`component of the vehicle, and generates an output indicative or
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`representative of that diagnosed state. Ex. 1101, Abstract. A
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`communications device transmits that output to a remote location, possibly
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`via a satellite or the Internet. Ex. 1101, Abstract. In that regard, the
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`specification further states:
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`Transmission of the output to a remote location may entail
`arranging a communications device comprising a cellular
`telephone system including an antenna on the vehicle. The
`output may be to a satellite for transmission from the satellite to
`the remote location. The output could also be transmitted via
`the Internet to a web site or host computer associated with the
`remote location.
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`Ex. 1101, 14:20-26.
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`
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`The Field of the Invention portion of the disclosure states that the
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`invention relates to methods and apparatus for diagnosing components in a
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`vehicle and transmitting data relating to the diagnosis, and other information
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`relating to the operating conditions of the vehicle, to one or more remote
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`locations via a telematics link. Ex. 1101, 1:37-42.
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`
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`The Objects of the Invention portion of the disclosure states that it is
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`an object of the invention to provide a new and improved method and
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`system for diagnosing components in a vehicle and the operating status of
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`the vehicle, and for alerting the vehicle‟s dealer, or another repair facility,
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`via a telematics link, that a component of the vehicle is functioning
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`abnormally and may be in danger of failing. Ex. 1101, 11:26-31.
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`C. Exemplary Claims
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`
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`Of the challenged claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61,
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`only claims 1 and 21 are independent claims. Claims 2, 5, 10, and 17-20
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`each depend, directly or indirectly, from claim 1, and claims 26, 27, 32, 40,
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`and 61 each depend, directly or indirectly, from claim 21. Claims 1 and 21
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`are reproduced below:
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`A vehicle, comprising:
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`1.
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`a diagnostic system arranged on the vehicle to diagnose
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`the state of the vehicle or the state of a component of the
`vehicle and generate an output indicative or representative
`thereof; and
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`a communication device coupled to said diagnostic
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`system and arranged to automatically establish a
`communications channel between the vehicle and a remote
`facility without manual intervention and wirelessly transmit the
`output of said diagnostic system to the remote facility.
`
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`21. A method for monitoring a vehicle, comprising the steps
`of:
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`
`
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`diagnosing the state of the vehicle or the state of a
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`component of the vehicle by means of a diagnostic system
`arranged on the vehicle;
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`generating an output indicative or representative of the
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`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle; and
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`transmitting the output indicative or representative of the
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`diagnosed state of the vehicle or the diagnosed state of the
`component of the vehicle from the vehicle to a remote location.
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`(emphasis added).
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`D. Prior Art Relied Upon
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`Simms
`DiLullo
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`Patent 5,334,974 Aug. 2, 1994
`Patent 4,897,642
`Jan. 30, 1990
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`Ex. 1102
`Ex. 1103
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`E. Alleged Grounds of Unpatentability
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`
`
`
`Claims
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`Ground
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`Reference(s)
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`Claims 1, 2, 5, 10, 17-21, 26,
`27, 32, 40, and 61
`Claims 1, 2, 5, 10, 17, 18, 19,
`21, 26, 27, 32, 40, and 61
`Claims 5, 18, 20, 26, and 27
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`§§ 102(a) and
`102(e)
`§ 102(b)
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`Simms
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`DiLullo
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`§ 103(a)
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`Simms and DiLullo
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`In support of the grounds above, Toyota also presents a Declaration
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`by Mr. Scott Andrews (Ex. 1106).
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`A. Claim Construction
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`ANALYSIS
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`Principles of Law
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). The terms also are given their ordinary and customary meaning as
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`would be understood by one of ordinary skill in the art in the context of the
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). If an inventor acts as his or her own lexicographer, the definition
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`must be set forth in the specification with reasonable clarity, deliberateness,
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`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
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`1243, 1249 (Fed. Cir. 1998).
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`
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`An extraneous limitation should not be read into the claims from the
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`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
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`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
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`the presence of which in a claim is unnecessary for the purpose of making
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`sense of the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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`1994); Renishaw PLC, 158 F.3d at 1249. The construction that stays true to
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`the claim language and most naturally aligns with the inventor‟s description
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`is likely the correct interpretation. See Renishaw PLC, 158 F.3d at 1250.
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`
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` “Comprising” is a term of art used in claim language, which means
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`that the named elements are essential, but other elements also may be
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`included to constitute additional components within the scope of the claim.
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`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
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`“component”
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`
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`Independent claims 1 and 21 both recite the term “component.”
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`According to Toyota, “component” means “any part or assembly of parts
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`which is mounted to or a part of a motor vehicle and which is capable of
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`emitting a signal representative of its operating state.” Pet. 5. Toyota cites
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`the specification, which states:
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`The term “component” refers to any part or assembly of
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`parts which is mounted to or a part of a motor vehicle and
`which is capable of emitting a signal representative of its
`operating state.
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`Ex. 1101, 30:58-61.
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`
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`Toyota does not contend that the named inventor of the ‟697 patent
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`acted as his own lexicographer and coined a new meaning for the term
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`“component” different from the ordinary and customary meaning, as would
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`be understood by one with ordinary skill in the art. Neither does AVS.
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`Also, the above-quoted language does not appear to be in the form of a
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`definition. Rather, the text is a portion of the description of preferred
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`embodiments, and uses the words “refers to” after the term “component.”
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`The evidence falls short of the standard required for recognizing a new
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`definition, i.e., reasonable clarity, deliberateness, and precision. We do not
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`regard the above-quoted text as setting forth the inventor‟s special definition
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`for the term “component.” Instead, the text describes how components
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`operate and interact with other elements in an operative environment.
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`
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`The Board construes “component” as “a part or an assembly of parts,
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`less than the whole.” Based on the term itself, “component” does not have
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`to relate to a motor vehicle; nor does it have to be capable of emitting a
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`signal representative of its operating state.
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`“part”
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`
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`Claim 17 recites the term “part.” According to Toyota, “part” means
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`“any component, sensor, system or subsystem of the vehicle such as the
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`steering system, braking system, throttle system, navigation system, airbag
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`system, seatbelt retractor, air bag inflation valve, air bag inflation controller
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`and air bag vent valve, as well as those listed below in the definitions of
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`„component‟ and „sensor.‟” Pet. 6. Toyota cites the specification, which
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`states:
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`As used herein, a “part” of the vehicle includes any
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`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”.
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`Ex. 1101, 10:51-57.
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`
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`Toyota does not contend that the named inventor of the ‟697 patent
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`acted as his own lexicographer and coined a new meaning for the term
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`“part” different from the ordinary and customary meaning, as would be
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`understood by one with ordinary skill in the art. Neither does AVS. Also,
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`the above-quoted language does not appear to be in the form of a definition
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`for the word “part.” Rather, the text is about what would be regarded as a
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`part of the vehicle that is described in the specification.
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`
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`Accordingly, we do not regard the above-quoted text as setting forth
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`the inventor‟s special definition for the term “part.” On this record, the term
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`“part” does not require express construction. The record does not indicate
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`that the ordinary and customary meaning of the word, from the perspective
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`of one with ordinary skill in the art, is different from the word‟s plain and
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`ordinary usage in the English language.
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`“sensor system”
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`
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`Claim 10 recites the term “sensor system.” According to Toyota,
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`“sensor system” means “any of the sensors listed below in the definition of
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`„sensor‟ as well as any type of component or assembly of components which
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`detect, sense or measure something.” Pet. 7. In that regard, the
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`specification states:
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`As used herein, a “sensor system” includes any of the
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`sensors listed below in the definition of “sensor” as well as any
`type of component or assembly of components which detect,
`sense, or measure something.
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`Ex. 1101, 10:58-61.
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`The cited portion of the specification does not support adequately
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`Toyota‟s proposed construction. Toyota has not contended that the inventor
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`acted as his own lexicographer in coining a special meaning for a common
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`term “sensor system.” Neither has AVS. Also, the above-reproduced text
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`refers to what a sensor system includes, not what it is.
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`Moreover, with regard to the phrase “as well as any type of
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`component or assembly of components which detect, sense, or measure
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`something,” we note that it amounts to impermissible functional claiming.
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`The language does not invoke means-plus-function treatment under 35
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`U.S.C. § 112, ¶ 6.1
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`
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`Furthermore, the above-quoted text is circular, in that it uses the term
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`sense to describe a sensor system. It also is unclear in what ways “measure”
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`and “detect” differ from “sense.”
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`
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`For all of the foregoing reasons, we do not regard the above-quoted
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`text as setting forth the inventor‟s special definition for the term “sensor
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`system.” On this record, the term “sensor system” does not require an
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`1 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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`express construction. We agree, however, that under the rule of broadest
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`reasonable interpretation, the term “sensor system” includes each of the
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`sensors particularly identified in the specification of the ‟697 patent.
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`“sensor”
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`Dependent claims 2, 10, and 32 each recite the term “sensor.”
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`According to Toyota, the term “sensor” means “any measuring or sensing
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`device mounted on a vehicle or any of its components including new sensors
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`mounted in conjunction with the diagnostic module in accordance with the
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`invention.” Pet. 6. Toyota cites to the specification, which states in part:
`
`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: . . . .
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`Ex. 1101, 31:23-29.
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`Neither Toyota nor AVS contends that the named inventor of the ‟697
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`patent acted as his own lexicographer and coined a new meaning for the
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`term “sensor” different from the ordinary and customary meaning as would
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`be understood by one with ordinary skill in the art. The above-referenced
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`excerpt does not give one of ordinary skill adequate notice of a change in the
`
`meaning of a common term or intent to redefine the term. See In re Paulsen,
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`30 F.3d at 1480. Also, the text is in a portion of the description of preferred
`
`embodiments, uses the words “refers to,” and is followed by “a non-
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`exhaustive list” of more than forty exemplary automobile or truck sensors.
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`Regarding the portion of Toyota‟s proposed construction defining
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`“sensor” as a “measuring or sensing device,” neither Toyota nor AVS
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`explains how a “sensor” measures without also sensing. Additionally,
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`defining “sensor” to mean a “sensing device” is circular and, thus, not
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`meaningful.
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`Concerning the portion of Toyota‟s proposed construction defining
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`“sensor” as “any . . . device mounted on a vehicle or any of its components,”
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`we note that the requirement of being mounted on a vehicle is extraneous as
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`far as the claimed subject matter is concerned. Toyota has not provided a
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`persuasive reason for reading into the ordinary meaning of “sensor” the
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`requirement of being mounted on a vehicle.
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`For all the foregoing reasons, we do not regard the above-quoted text
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`as setting forth AVS‟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,
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`however, that the term “sensor” includes each of the sensors particularly
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`identified in the specification of the ‟697 Patent.
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`“state of the vehicle”
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`
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`Independent claims 1 and 21 both recite the term “state of the
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`vehicle.” According to Toyota, “state of the vehicle” means “diagnosis of
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`the condition of the vehicle with respect to its stability and proper running
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`and operating condition.” Pet. 7. Toyota cites to the specification, which
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`states:
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`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.
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`Ex. 1101, 10:29-32.
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`
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`The cited portion of the specification does not support adequately
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`Toyota‟s proposed construction. The above-quoted text refers to and
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`explains “a diagnosis” of the state of a vehicle, not what constitutes “state of
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`the vehicle.” On this record, the term “state of the vehicle” does not require
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`an express construction.
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`“diagnosis of the state of the vehicle”
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`
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`Claim 1 recites “to diagnose the state of the vehicle or the state of a
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`component of the vehicle.” Claim 21 recites “diagnosing the state of the
`
`vehicle or the state of a component of the vehicle.” AVS contends that
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`“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. 8-9. The contention is supported by the above-
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`quoted portion of the specification. Ex. 1101, 10:29-32. On this record, we
`
`are persuaded that AVS‟s proposed construction applies to “diagnose the
`
`state of the vehicle,” as recited in claim 1, and “diagnosing the state of the
`
`vehicle,” as recited in claim 21.
`
`AVS proposes similar constructions for the following related terms:
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`“output indicative or representative of the diagnosed state of the vehicle or
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`the diagnosed state of the component of the vehicle,” recited in claim 21,
`
`and “output indicative or representative thereof,” recited in claim 1.
`
`Prelim. Resp. 9. On this record, these related terms do not require any
`
`additional construction.
`
`“control at least one part of the vehicle”
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`
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`Claim 17 recites the phrase “control at least one part of the vehicle.”
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`AVS contends that the phrase means “variably directing the operation of at
`
`least one part of the vehicle.” Prelim. Resp. 9 (citing Ex. 1101, 41:9-18)..
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`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, an
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`express construction of this term is not needed. It suffices to say that the
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`term is not limited to controlling any particular type or kind of “part” of the
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`vehicle.
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`“display”
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`
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`Claim 5 recites the term “display.” AVS contends that “display”
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`means “a screen for showing information, as opposed to a warning lamp.”
`
`Prelim. Resp. 9-10. According to AVS, the specification clearly
`
`distinguishes a display from a warning lamp. AVS cites to the specification,
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`which states in part: “The [output system] may be a display as mentioned
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`above or a warning device.” Prelim. Resp. 10 (citing Ex. 1101, 81:32-36).
`
`AVS also cites to a portion of the specification that refers to a display
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`separately from a warning device. Prelim. Resp. 10 (citing Ex. 1101, 13:24-
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`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
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`showing information.
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`“display . . . arranged to display the diagnosis”
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`
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`Claim 5 recites the phrase “display . . . arranged to display the
`
`diagnosis.” AVS contends that the phrase means “the display shows the
`
`diagnosis output from the diagnostic system arranged on the vehicle.”
`
`Prelim. Resp. 10 (citing Ex. 1101, 13:24-28).
`
`
`
`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
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`arranged on the vehicle” that generates an output. Thus, the reference in
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`claim 5 to “the diagnosis” refers back to a diagnosis from the diagnostic
`
`system arranged on the vehicle. On this record, an express construction of
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`“display . . . arranged to display the diagnosis” is not needed.
`
`B. Alleged Anticipation of Claims 1, 2, 5, 10, 17-21,
`26, 27, 32, 40, and 61, under 35 U.S.C. §§ 102(a) and 102(e), by
`Simms
`
`Toyota contends that claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61
`
`are anticipated, under 35 U.S.C. §§ 102(a) and 102(e), by Simms. Pet. 11-
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`32. In light of the arguments and evidence submitted by both parties, Toyota
`
`has not established a reasonable likelihood that any of claims 1, 2, 5, 10, 17-
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`21, 26, 27, 32, 40, and 61 is anticipated by Simms.
`
`Regarding Toyota‟s assertion of Simms as prior art under
`
`35 U.S.C. § 102(a) or, alternatively, under 35 U.S.C. § 102(e), Toyota
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`submitted as Exhibit 1102 a copy of U.S. Patent No. 5,334,974 to Simms
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`(“Simms”), which shows on the face of the patent an issue date of August 2,
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`1994. The face of Simms also indicates that the patent granted from an
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`application that was filed in the United States on February 6, 1992. AVS
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`claims a priority date of June 7, 1995, for the ‟697 Patent. Prelim. Resp. 2.
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`Thus, based on this record, Toyota has established a reasonable likelihood
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`that Simms issued in the United States before the invention by AVS and,
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`therefore, is prior art under 35 U.S.C. § 102(a). Additionally, based on this
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`record, Toyota has established a reasonable likelihood that Simms was
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`granted on an application filed in the United States before the invention by
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`AVS and, therefore, is prior art under 35 U.S.C. § 102(e).
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`Simms
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`Simms discloses a personal security system, an embodiment of which
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`is illustrated in Figure 1, reproduced below:
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`As shown in Figure 1, the personal security system described in
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`Simms includes mobile security assembly 30 incorporated in automobile 20.
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`Ex. 1102, 5:4-8. An antenna on automobile 20 establishes a communication
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`link via satellite. Id. at 3:48-54. Once a communication link is established,
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`mobile security assembly 30 communicates via the communication link
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`location data as well as emergency and personal information to central
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`dispatch station 40, which is manned by a central dispatch operator. Id. at
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`5:12-23.
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`Central dispatch station 40 comprises touch-tone telephone 48
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`connected to communications console 42, which in turn is connected to one
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`or more display consoles 49. Ex. 1102, col. 12:51-56. An incoming call is
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`received by communication console 42 via touch-tone telephone 48 and
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`modem 46. Id. at 12:59-63. One or more display consoles 49 are connected
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`via a network to communication console 42 so that incoming personal
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`security messages may be allocated as appropriate to one or more display
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`consoles 49, for example, to accommodate a high frequency of incoming
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`calls. Id. at 12:63-68.
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`Whether Simms Anticipates Any of
`Claims 1, 2, 5, 10, 17-21, 26, 27, 32, 40, and 61
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`The independent claims are 1 and 21. Each of claims 2, 5, 10, and 17
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`through 20 depends, directly or indirectly, from claim 1. Each of claims 26,
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`27, 32, 40, and 61 depends directly from claim 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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`AVS asserts that Simms does not teach diagnosis being performed
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`onboard a vehicle, as required by claims 1 and 21. Prelim. Resp. 14. AVS
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`asserts that “it is not enough for an on-board vehicle processor to merely
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`collect sensor data—it must actually diagnose the state of the vehicle or
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`components.” Id. As discussed above, claims 1 and 21 each recite “a
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`diagnostic system arranged on the vehicle.” It follows from this recitation
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`that the components that actually perform the substantive diagnostic
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`processing must be located on the vehicle.
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`Toyota asserts that this limitation of claims 1 and 21 is met by a
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`microcontroller that monitors signals from various sensors. Pet. 15. Toyota
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`supports its assertion by citing to description in Simms of mobile security
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`assembly 30, including mobile unit 32 and a plurality of remote sensors 41.
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`Pet. 17-19 (citing Ex. 1102, 4:4-18; 6:7-11, 19-30; 7:5-8, 23-25; 8:16-25;
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`11:65-12:11; Figs. 4, 6A).
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`Toyota notes that the system described in Simms monitors a variety of
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`remote sensors. Pet. 12 (citing Ex. 1102, 6:19-30; 1:33-34); see also Pet. 17
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`(citing Ex. 1102, 6:19-30). Toyota‟s assertion is supported by the record.
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`Simms describes that mobile security assembly 30 includes remote sensors
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`41. Ex. 1102, 6:7-11. Simms also describes that remote sensors 41
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`automatically initiate specific help requests upon detecting various alarm
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`conditions. Id. at 6:19-20. Exemplary remote sensors identified in Simms
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`include: (1) “smoke or heat detectors for detecting a fire within the vehicle”
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`(Ex. 1102, 6:21-22); (2) “a tamper switch or motion detector for detecting
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`possible theft of the vehicle” (Id. at 6:23-24); (3) “an impact detector for
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`detecting a collision” (Id. at 6:24-25); and (4) “a sensor for detecting
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`activation of a vehicle air-bag” (Id. at 6:25-26).
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`Toyota further asserts that these remote sensors diagnose “various
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`vehicle emergencies (such as fire, theft, collision, airbag activation, vehicle
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`breakdown, or the like).” Pet. 12 (citing Ex. 1102, 6:19-30; 1:33-34).
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`However, as described in Simms, these remote sensors provide raw sensor
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`data. Smoke and heat detectors detect smoke and heat nearby. Similarly,
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`tamper switches, motion detectors, and impact detectors detect interference,
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`detect motion, and detect impact, respectively.
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`Toyota further supports its assertion with the declaration of an expert,
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`Mr. Andrews. Ex. 1106 ¶¶ 44-46, 56-58. Mr. Andrews states that Simms
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`describes that “[v]arious vehicle conditions can be diagnosed, including an
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`„accident‟ or „vehicle breakdown.‟” Ex. 1106 ¶ 45. Mr. Andrews cites to a
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`portion of Simms that states: “[e]mergency situations may arise as the result
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`of an accident or vehicle breakdown.” Ex. 1102, 1:33-34. This sentence is
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`found in a section describing background. Ex. 1102, 1:25. The excerpt
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`describes situations that may arise, rather than a diagnosis performed by the
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`system described in Simms.
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`Mr. Andrews also states that the microcontroller illustrated in Figure 4
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`of Simms receives input from remote sensors and generates diagnostic
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`outputs as a result. Ex. 1106 ¶ 45. Mr. Andrews follows the statement with
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`a reproduction of Figure 4 of the Simms patent showing microcontroller 310
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`and remote sensors 41 shaded in gray. Id.
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`Simms describes the operation of microcontroller 310 shown in
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`Figure 4 as follows. After mobile security assembly 30 is activated (Ex.
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`1102, 10:53-55) and microcontroller 310 reads identification information
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`and requests new position information (Id. at 10:55-62), microcontroller 310
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`polls remote sensors 41 and push button switches 33 to determine whether a
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`personal security situation exists. Id. at 11:65-67. Thus, the components
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`identified by Mr. Andrews in Figure 4, microcontroller 310 and remote
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`sensors 41, merely involve microprocessor 310 polling raw sensor data from
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`remote sensors 41.
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`The description in Simms continues: “if a personal security situation
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`is detected . . . microcontroller 310 attempts to transmit the personal
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`security system message.” Ex. 1102, 12:7-11. In the claim chart for this
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`element, Toyota also cites to additional description that Simms provides of
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`the message: “[t]he processor is activated upon occurrence of an alarm
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`condition to input position coordinates from the LORAN-C receiver, and to
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`compose a digital code corresponding to the alarm condition, to the
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`identification information, and to the position coordinates.” Pet. 17 (citing
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`18
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`Id. at 4:14-18 (emphasis added)). However, the code corresponding to an
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`alarm simply identifies an activated sensor. Toyota has not shown
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`adequately how substantive diagnostic processing is performed on the
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`vehicle.
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`Additional description in Simms further indicates that substantive
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`diagnostic processing is not performed on the vehicle. The various vehicle
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`emergencies must be confirmed by a person: “six push buttons 33 which are
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`mounted on the face . . . allow the mobile person to manually enter and
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`confirm that a personal security situation has arisen.” Ex. 1102, 6:31-35.
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`Confirmation by a mobile person completes a call for help: “[f]our of the
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`push buttons 33 are dedicated to each of four common types of emergency
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`assistance, i.e., fire, paramedics, police, and roadside service . . . .” Ex.
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`1102, 6:36-39. Thus, we are not persuaded that Simms describes substantive
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`diagnostic processing that is performed on the vehicle.
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`AVS also argues that Simms is concerned with monitoring the
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`personal security of a passenger, rather than the operating state of the vehicle
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`and its components. Prelim. Resp. 14. As discussed above, under the
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`Board‟s construction, the diagnosis of the state of the vehicle, as required by
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`each of claims 1 and 21, must be of “the condition of the vehicle with
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`respect to its stability and proper running and operating condition.”
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`The mobile security assembly described in Simms is part of a personal
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`security system. Ex. 1102, Abstract. The personal security system need not
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`be used in connection with a vehicle, but, instead, “may be hand-carried by a
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`pedestrian” (Ex. 1102, 5:10-11) or used “wherever the personal security of a
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`mobile person is compromised” (Ex. 1102, 1:11-12). Nonetheless, because
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`the system simply passes along the identity of an activated sensor rather than
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`performing a substantive diagnostic processing, we are not persuaded that
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`Simms describes diagnosis being performed onboa
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