Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper No. 8
`Entered: June 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`VELOCITY PATENT LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00276
`Patent 5,954,781
`____________
`
`
`
`Before GLENN J. PERRY, RAMA G. ELLURU, and PETER P. CHEN,
`Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper No. 8
`Entered: June 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`VELOCITY PATENT LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00276
`Patent 5,954,781
`____________
`
`
`
`Before GLENN J. PERRY, RAMA G. ELLURU, and PETER P. CHEN,
`Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Case IPR2015-00276
`Patent 5,954,781
`
`
`I. INTRODUCTION
`
`
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and
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`17–32 of U.S. Patent No. 5,954,781 (Ex. 1001, “the ’781 patent”). Paper 2
`
`(“Pet.”). Velocity Patent LLC (“Patent Owner”) filed a Preliminary
`
`Response. Paper 6 (“Prelim. Resp.”). We have statutory authority under
`
`35 U.S.C. § 314, which provides that an inter partes review may not be
`
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
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`Upon consideration of the Petition, we are not persuaded Petitioner
`
`has demonstrated a reasonable likelihood that it would prevail in showing
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`the unpatentability of any of the challenged claims of the ’781 patent.
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`Accordingly, we do not institute an inter partes review of the ’781 patent.
`
`A.
`
`Related Proceedings
`
`Patent Owner filed a Complaint against a subsidiary of Petitioner, and
`
`a company under whose name Petitioner does business, in the U.S. District
`
`Court for the Northern District of Illinois, alleging infringement of the ’781
`
`patent. Velocity Patent LLC v. Audi of America, Inc., Case No. 1:13-cv-
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`08418-JWD (N.D. Ill.). Pet. 1. Patent Owner has filed other lawsuits in the
`
`Northern District of Illinois alleging infringement of the ’781 patent by other
`
`parties. Pet. 5–6; Paper 5, 1. On May 22, 2014, Petitioner filed a request for
`
`ex parte reexamination of the ’781 patent, which is pending as Control No.
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`90/013,252 (the “Reexamination”). Id.
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`
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`Patent 5,954,781
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`B.
`
`The ’781 Patent
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`The ’781 patent is titled, “Method and Apparatus for Optimizing
`
`Vehicle Operation.” The subject matter of the challenged claims of the ’781
`
`patent relates generally to a system which notifies the driver of
`
`recommended corrections in vehicle operation and, under certain conditions,
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`automatically initiates corrective action. Ex. 1001, 1:5–10. Figure 1 of the
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`’781 patent is reproduced below.
`
`
`
`
`
`
`
`Figure 1 is a block diagram of the ’781 system. Ex. 1001, 5:42–44. System
`
`10 includes processor subsystem 12 (“for example, a microprocessor”), and
`
`memory subsystem 14 connected by bus 16 to processor subsystem 12. Id.
`
`at 5:54–58. State sensors and level sensors, including road speed sensor 18,
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`rpm sensor 20, manifold pressure sensor 22, throttle sensor 24, windshield
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`wiper sensor 30, and brake sensor 32, collectively monitor the operation of
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`the vehicle and are coupled to processor subsystem 12. Id. at 2:12–16, 5:65–
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`6:7. System 10 also includes upshift notification circuit 34, downshift
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`notification circuit 36, overinjection notification circuit 38, and vehicle
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`proximity alarm circuit 40, coupled to processor subsystem 12, all of which
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`may be configured to provide visual or audible notifications to the driver of
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`the vehicle. Id. at 7:9–25.
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`Processor subsystem 12 periodically polls and receives data from the
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`series of sensors to determine when to activate the fuel overinjection
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`notification circuit or other notification circuits, and issue notifications. Id.
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`at Abstract, 2:17–20, 5:65–6:7, 6:42–46, 12:64–13:20. See Pet. 2–5; Prelim.
`
`Resp. 4–10. The ’781 patent also describes automatic initiation of corrective
`
`action, for example throttle reduction by throttle controller 26, if the vehicle
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`is operated unsafely. Ex. 1001, Abstract, 4:3–11, 7:5–6, 7:49–53, 10:15–29.
`
`C.
`
`Illustrative Claim
`
`Claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 17–32 are the subject of the
`
`petition. Claims 1, 7, 13, 17, 23, 26, 28, and 31 are independent.
`
`Independent claim 1 is illustrative of the challenged claims and is
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`reproduced as follows.
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`1. Apparatus for optimizing operation of a vehicle, comprising:
`
` a
`
` plurality of sensors coupled to a vehicle having an engine,
`said plurality of sensors, which collectively monitor operation
`of said vehicle, including a road speed sensor, an engine speed
`sensor, a manifold pressure sensor and a throttle position
`sensor;
`
` a
`
` processor subsystem, coupled to each one of said plurality of
`sensors, to receive data therefrom;
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`
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`4
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`a memory subsystem, coupled to said processor subsystem, said
`memory subsystem storing therein a manifold pressure set
`point, an RPM set point, and present and prior levels for each
`one of said plurality of sensors;
`
` a
`
` fuel overinjection notification circuit coupled to said
`processor subsystem, said fuel overinjection notification circuit
`issuing a notification that excessive fuel is being supplied to
`said engine of said vehicle;
`
`an upshift notification circuit coupled to said processor
`subsystem, said upshift notification circuit issuing a notification
`that said engine of said vehicle is being operated at an excessive
`speed;
`
`said processor subsystem determining, based upon data
`received from said plurality of sensors, when to activate said
`fuel overinjection circuit and when to activate said upshift
`notification circuit.
`
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the following five references.
`
`
`Reference
`
`Title
`
`Date
`
`Ex. No.
`
`Automotive Electronics Handbook 1995
`
`Ex. 1002
`
`Issued Aug. 9,
`1983
`
`Issued Dec. 17,
`1985
`
`Issued Oct. 18,
`1994
`
`Published Feb.
`1, 1996
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Jurgen
`
`Smith
`
`U.S. Patent No. 4,398,174
`
`Habu
`
`U.S. Patent No. 4,559,599
`
`Davidian
`
`U.S. Patent No. 5,357,438
`
`Tonkin
`
`PCT No. WO 96/02853
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`
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`5
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`E.
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`The Asserted Grounds
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`
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`Petitioner contends the challenged claims are unpatentable based on
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`the following four grounds.
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`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Jurgen, Smith, and Habu
`
`Jurgen, Smith, Habu, and
`Davidian
`Davidian
`
`Davidian and Tonkin
`
`
`
`§ 103
`
`§ 103
`
`§ 102
`
`§ 103
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`1, 2, 4, 5, 7, 8, 10, 12, 13, 15,
`and 28–30
`
`17–27
`
`31
`
`32
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`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. See 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). See In re Cuozzo Speed Techs., 778 F.3d 1271, 1282 (Fed. Cir. 2015)
`
`(holding that broadest reasonable interpretation standard “was properly
`
`adopted by PTO regulation” for IPR proceedings). Claim terms generally
`
`are given their ordinary and customary meaning, as would be understood by
`
`one of ordinary skill in the art in the context of the entire disclosure. See In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes a construction for a single term, “fuel
`
`overinjection notification circuit,” stating that the term means a circuit that
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`“provides the driver with . . . an alert that his or her driving is fuel
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`inefficient.” Pet. 8. Patent Owner proposes that this term means “a circuit
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`that provides a driver with a notification that his or her driving is fuel
`
`efficient or inefficient.” Prelim. Resp. 11.
`
`The independent claims of the ’781 patent recite that the fuel
`
`overinjection notification circuit is “coupled to said processor subsystem,
`
`said fuel overinjection notification circuit issuing a notification that
`
`excessive fuel is being supplied to said engine of said vehicle.” See, e.g.,
`
`Ex. 1001, 14:1–4. This description of the fuel overinjection notification
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`circuit also appears in part throughout the specification, see, e.g., id. at
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`Abstract, 2:15–19, 3:10–15, 4:15-18, 7:18–19. We cannot discern how the
`
`constructions proffered by Petitioner or Patent Owner add any clarity to the
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`term, the meaning of which is discernible from the context of the claims and
`
`specification. Therefore, for purposes of this Decision, we conclude that no
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`explicit construction is necessary for this term. We also determine that no
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`explicit construction is necessary for the other terms proposed by Patent
`
`Owner.
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`
`
`B. 35 U.S.C. § 325(d)
`
`Patent Owner argues that we should exercise our discretion to deny
`
`review of the challenged claims pursuant to 35 U.S.C. § 325(d). Prelim.
`
`Resp. 13–18. Section 325(d) provides that in “determining whether to
`
`institute or order a proceeding under this chapter, chapter 30, or chapter 31,
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`the Director may take into account whether, and reject the petition or request
`
`because, the same or substantially the same prior art or arguments previously
`
`were presented to the Office.” Patent Owner argues that the Petition should
`
`be denied under § 325(d) because “Petitioner discloses substantially the
`
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`same references presented in Reexamination,” and “Petitioner presents
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`substantially similar arguments as it did in Reexamination.” Prelim. Resp.
`
`15–16. We decline to exercise our discretion to reject the Petition under
`
`§ 325(d) because the prior art and arguments presented by Petitioner are not
`
`substantially similar to those presented in the pending Reexamination.
`
`In particular, Petitioner argues that the Smith reference, asserted here
`
`but not in the Reexamination, teaches one or more limitations of twenty-four
`
`of the twenty-six challenged claims. Pet. 9–54. Smith discloses a fuel
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`consumption signaling system including “an alarm circuit connected in
`
`series with an indicator circuit including an indicator light connected in
`
`parallel with a vacuum operated switch pneumatically connected to the
`
`engine manifold.” Ex. 1003, Abstract. Although Smith was listed by Patent
`
`Owner in an Information Disclosure Statement filed in the Reexamination, it
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`was not argued by Petitioner in the Reexamination, or substantively
`
`addressed or even cited by the Examiner. Indeed, Patent Owner concedes
`
`“the Examiner noted that ‘it should be assumed that only the most cursory
`
`review of the cited documents consistent with [MPEP] guidelines has been
`
`performed.’ (Ex. 1011 at 25.)” Prelim. Resp. 15–16 and n. 8. Because
`
`Smith was not meaningfully considered in the Reexamination, we do not
`
`exercise our discretion to deny review under § 325(d).
`
`
`
`C.
`
`Claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 28–30: Asserted
`Obviousness over Jurgen, Smith, and Habu
`
`
`Petitioner contends claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 28–30
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Jurgen, Smith,
`
`and Habu. Pet. 9–33. Claims 1, 7, 13, and 28 are independent. Claims 2, 4,
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`and 5 depend from claim 1, claims 8, 10, and 12 depend from claim 7, claim
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`15 depends from claim 13, and claims 29 and 30 depend from claim 28.
`
`Jurgen (Exhibit 1002)
`
`Jurgen, titled “Automotive Electronics Handbook,” is a compilation of
`
`chapters by various authors describing implementations of electronic
`
`components in vehicles. Prelim. Resp. 30; Ex. 1002, vii–xvi. Petitioner
`
`cites to chapters of Jurgen describing sensors, automotive microcontrollers,
`
`engine control, transmission control, cruise control, and on-board and off-
`
`board diagnostics. Pet. 12–51; Ex. 1002, vii–xvi.
`
`Habu (Ex. 1004)
`
`Habu, titled “Optimum Shift Position Indication Using Successive
`
`Two-Dimensional Data Maps,” describes a shift indication apparatus for
`
`indicating shift position in vehicles equipped with manual transmission, in
`
`order to maintain optimum fuel consumption. Ex. 1004, Abstract, 1:33–39.
`
`Habu discloses an apparatus with sensors for engine rotation, throttle valve,
`
`and shift position, a microcomputer with memory for storing engine speed
`
`data, and an indicator for indicating preferable shift positions for a driver,
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`“so as to enable the economical running of the car to be realized.” Id.,
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`Abstract, Fig. 1, 2:23–36.
`
`Smith (Ex. 1003)
`
`Smith, titled “Fuel Consumption Signalling System,” describes a
`
`system for signaling both efficient and inefficient fuel consumption
`
`conditions, using an alarm circuit connected in series with an indicator
`
`circuit. Ex. 1003, Abstract, Fig. 1, 2:32–36, 3:58–60. If the engine of a
`
`vehicle operates inefficiently (“a fuel wasteful fashion”), the alarm circuit
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`illuminates an alarm light and also activates an audio alarm if the inefficient
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`fuel consumption condition lasts beyond a preset amount of time. Id. at
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`2:49–58, 5:23–27.
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`Analysis
`
`Petitioner contends that the combination of Jurgen, Smith, and Habu
`
`teaches or suggests the limitations of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15,
`
`and 28–30. Pet. 9–33.
`
`Patent Owner argues that Petitioner does not attempt to “explain why
`
`an ordinary artisan would modify Smith to incorporate processor control into
`
`Smith’s system,” Prelim. Resp. 48, and argues further that one of ordinary
`
`skill in the art would not combine Jurgen, Smith, and Habu, id. at 32–41.
`
`An invention “composed of several elements is not proved obvious merely
`
`by demonstrating that each of its elements was, independently, known in the
`
`prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). For
`
`example, for the limitation of independent claims 1, 7, 13, and 28, reciting
`
`“a fuel overinjection notification circuit coupled to said processor
`
`subsystem,” Petitioner cites Smith’s disclosure of “an alarm circuit
`
`connected in series with an indicator circuit including an indicator light
`
`connected in parallel with a vacuum operated switch pneumatically
`
`connected to the engine manifold,” where the alarm circuit “is not actuated
`
`until the engine is operated in a fuel wasteful fashion.” Pet. 9–10, 16–17;
`
`Ex. 1003, Abstract, 5:23–27. Smith does not teach or suggest a “processor
`
`subsystem” (which the ’781 patent describes as “for example, a
`
`microprocessor,” Ex. 1001, 5:54–55), or any digital components, but
`
`Petitioner contends that Jurgen discloses a microcontroller, and Habu
`
`discloses a microcomputer. Pet. 10, 13–14; Ex. 1002, 12.1, 22.6, 14.3; Ex.
`
`1004, Fig. 1, 2:33–42.
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`A determination of unpatentability on a ground of obviousness,
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`however, must also include “‘articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.’” KSR, 550
`
`U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
`
`obviousness evaluation “should be made explicit,” and it “can be important
`
`to identify a reason that would have prompted a person of ordinary skill in
`
`the relevant field to combine the elements in the way the claimed new
`
`invention does.” Id. Petitioner, which did not supply expert testimony to
`
`support its assertions, attempts through argument of counsel to provide a
`
`rationale for combining Jurgen, Smith, and Habu, citing to some excerpts
`
`from Jurgen, Smith, and Habu. Pet. 11–12. Petitioner argues these excerpts
`
`state motivations to combine, as follows:
`
`[T]o provide the needed accuracy and adaptability in order to
`minimize exhaust emissions and fuel consumption, provide
`optimal driveability for all operating conditions, minimize
`evaporative emissions, and provide system diagnosis when
`malfunctions occur.
`
`Pet. 11 (quoting Ex. 1002, 12.1).
`
`
`[T]o “provide optimal driveability for all operating conditions.”
`
`Pet. 11 (quoting Ex. 1002, 12.1).
`
`
`[T]o “provide[] the fuel metering and ignition timing precision
`to minimize fuel consumption.[”]
`
`Pet. 11 (quoting Ex. 1002, 12.4).
`
`
`[T]o encourage “fuel efficient driving techniques.”
`
`Pet. 11 (quoting Ex. 1003, 1:22–24).
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`[T]o “obtain preferable shift positions relating to optimum fuel
`consumption rate in accordance with . . . data detected.”
`
`Pet. 11 (quoting Ex. 1004, Abstract). Citing to the Board’s decision in Cisco
`
`Systems, Inc. v. Constellation Techs. LLC, Case IPR2014-01179 (PTAB
`
`Feb. 4, 2015) (Paper 7) (“Cisco”), Patent Owner contends that “[r]ote
`
`recitation of some of the respective goals of Jurgen, Smith and Habu does
`
`not explain a motivation to combine them to create the inventions of the
`
`’781 Patent.” Prelim. Resp. 35. Patent Owner further contends:
`
`Petitioner does not explain how any of the listed
`motivation(s) would individually or collectively lead to a
`combination teaching the challenged ’781 Patent’s inventions.
`Instead, Petitioner summarily states: “like the ’781 [P]atent,
`Jurgen, Smith, and Habu are concerned with, for example,
`improving fuel efficiency.” (Pet. at 12.) This “fails to explain
`why a person of ordinary skill in the art would have combined
`elements from specific references in the way the claimed
`invention does.” Cisco, IPR2014-01179, Paper 7 at 16 (quoting
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694
`F.3d 1312 (Fed. Cir. 2012) (emphasis in original)).
`
`Prelim. Resp. 36 (footnote omitted). Patent Owner adds:
`
`
`It is the norm for a patent or other literature to note that it
`
`is directed to improving some issue in an art. Typically, there
`are many patents directed at improving on that same issue. It
`does not necessarily follow, as Petitioner suggests, that one of
`skill in the art would combine each prior art reference
`containing boilerplate statements concerning a desire
`to
`improve on a particular technical issue. See Innogenetics, N.V.
`v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)
`(“[K]nowledge of a problem and motivation to solve it are
`entirely different from motivation
`to combine particular
`references to reach the particular claimed method.”).
`
`Prelim. Resp. 36–37.
`
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`We agree with Patent Owner that Petitioner’s rationale for combining
`
`Jurgen, Smith, and Habu is premised on a handful of conclusory assertions
`
`by counsel, unsupported by testimony of an expert witness. Rather than
`
`articulated reasoning with rational underpinnings as to why one of ordinary
`
`skill in the art would have looked to Smith’s indicator light connected in
`
`parallel with a vacuum operated switch pneumatically connected to the
`
`engine manifold, in considering how to implement a fuel overinjection
`
`notification circuit coupled to a processor subsystem, Petitioner has provided
`
`only a few sentences of conclusory contentions. Absent from Petitioner’s
`
`argument is any explanation of how the teachings of Jurgen, Smith, and
`
`Habu might be combined to arrive at the claimed invention, e.g., by
`
`combining and applying specific teachings of Smith with Jurgen and Habu
`
`to account for all the features of the challenged claims. See KSR, 550 U.S. at
`
`418.
`
`Petitioner’s quoted snippets from Jurgen, Smith, and Habu about
`
`improving fuel efficiency are generic and bear no relation to any specific
`
`combination of prior art elements. Specifically, Petitioner “fails to explain
`
`why a person of ordinary skill in the art would have combined elements
`
`from specific references in the way the claimed invention does.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328
`
`(Fed. Cir. 2012). Thus, we are not persuaded that the Petition demonstrates
`
`a reasonable likelihood that Petitioner would prevail in establishing
`
`unpatentability of independent claims 1, 7, 13, and 28, and of dependent
`
`claims 2, 4, 5, 8, 10, 12, 15, 29, and 30.
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`D. Claims 17–27: Asserted Obviousness over Jurgen, Smith, Habu, and
`Davidian
`
`
`Claims 17–27 “are similar to the above claims,” Pet. 33, but recite
`
`additional limitations of a radar sensor and vehicle proximity alarm, which
`
`Petitioner asserts are taught by Davidian. Pet. 33; Ex. 1001, 17:34–20:37.
`
`Claims 17, 23, and 26 are independent, and claims 18–22 depend from claim
`
`17, claims 24 and 25 depend from claim 23, and claim 27 depends from
`
`claim 26. For a rationale to combine Jurgen, Smith, Habu, and Davidian,
`
`Petitioner reiterates the same excerpts cited for claims 1, 2, 4, 5, 7, 8, 10, 12,
`
`13, 15, and 28–30, and cites an excerpt from Davidian for adding an anti-
`
`collision system for vehicles. Pet. 34. We determine that, as explained
`
`above, Petitioner fails to provide articulated reasoning with rational
`
`underpinning for combining Jurgen, Smith, Habu, and Davidian. See KSR,
`
`550 U.S. at 418. We, therefore, are not persuaded that the Petition
`
`demonstrates a reasonable likelihood that Petitioner would prevail in
`
`establishing unpatentability of independent claims 17, 23, and 26, and of
`
`dependent claims 18–22, 24, 25, and 27.
`
`E. Dependent claims 2, 4, 5, 8, 10, 12, 15, 21, 24, 25, and 27
`
`Petitioner has not proposed constructions for any of the means-plus-
`
`function limitations recited in dependent claims 2, 4, 5, 8, 10, 12, 15, 21, 24,
`
`25, and 27. We determine that Petitioner has not met its burden to
`
`demonstrate a reasonable likelihood that the challenged dependent claims
`
`are unpatentable because it has not provided constructions for the means-
`
`plus-function limitations. See 37 C.F.R. § 42.104(b)(3) (“[w]here the claim
`
`to be construed contains a means-plus-function or step-plus-function
`
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`limitation as permitted under 35 U.S.C. § 112(f), the construction of the
`
`claim must identify the specific portions of the specification that describe the
`
`structure, material, or acts corresponding to each claimed function”).
`
`Without a proper claim construction of the means-plus-function limitations,
`
`we cannot discern the scope of these dependent claims in order to determine
`
`whether they are unpatentable over the asserted references. We decline to
`
`construe the means-plus-function limitations ab initio where Petitioner has
`
`not provided argument as to the scope of these claims.
`
`For example, dependent claim 2 recites “means for determining when
`
`road speed for said vehicle is increasing,” “means for determining when
`
`throttle position for said vehicle is increasing,” and “means for comparing
`
`manifold pressure to said manifold pressure set point.” Ex. 1001, 14:16–21.
`
`We decline to speculate on the specific disclosure in the ’781 patent
`
`describing structure corresponding to the means-plus-function limitations
`
`recited in claim 2 and in the other dependent claims with means-plus-
`
`function limitations.
`
`Moreover, because Petitioner has failed to identify sufficient structure
`
`for a claim construction of the means-plus-function limitations, Petitioner
`
`necessarily also has failed to specify where such structure is found in Jurgen,
`
`Smith, Habu, and Davidian, pursuant to 37 C.F.R. § 42.104(b)(4).
`
`Accordingly, for these reasons we decline to institute trial on dependent
`
`claims 2, 4, 5, 8, 10, 12, 15, 21, 24, 25, and 27, in addition to the bases
`
`described above in II.C. and II.D.
`
`
`
`
`
`
`
`
`15
`
`
`
`Case IPR2015-00276
`Patent 5,954,781
`
`
`
`
`F.
`
`Claims 31 and 32: Asserted Anticipation by Davidian (claim 31) and
`Obviousness over Davidian and Tonkin (claim 32)
`
`
`We also decline to institute a trial on independent claim 31 and
`
`dependent claim 32, which were disclaimed by Patent Owner in the
`
`Reexamination and cancelled by the Board in another inter partes review
`
`proceeding involving the ’781 Patent, Mercedes-Benz USA LLC and
`
`Mercedes-Benz U.S. International, Inc. v. Velocity Patent LLC, Case
`
`IPR2014-01247 (PTAB). In particular, in the Reexamination, Patent Owner
`
`recorded a statutory disclaimer of claims 31 and 32. See Mercedes-Benz
`
`USA LLC and Mercedes-Benz U.S. International, Inc. v. Velocity Patent
`
`LLC, Ex. 2001. Pursuant to Patent Owner’s request for adverse judgment,
`
`id. Paper 19, the Board granted Patent Owner’s request to cancel claims 31
`
`and 32. Id., Paper 20. As a result, Petitioner’s challenges to these two
`
`cancelled claims are moot. See Prelim. Resp. 60.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are not persuaded the information
`
`presented in the Petition establishes a reasonable likelihood that Petitioner
`
`would prevail in establishing unpatentability of claims 1, 2, 4, 5, 7, 8, 10, 12,
`
`13, 15, and 28–30 as obvious over Jurgen, Smith, and Habu, of claims 17–27
`
`as obvious over Jurgen, Smith, Habu, and Davidian, of claim 31 as
`
`anticipated by Davidian, and of claim 32 as obvious over Davidian and
`
`Tonkin.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`16
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`
`
`Case IPR2015-00276
`Patent 5,954,781
`
`
`PETITIONER:
`
`Michael J. Lennon
`Clifford A. Ulrich
`Kenyon & Kenyon LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`PATENT OWNER:
`
`Brian C. Kwok
`Mavrakakis Law Group LLP
`bkwok@mavllp.com
`
`Patrick Richards
`Richards Patent Law P.C.
`patrick@richardspatentlaw.com
`
`
`
`17
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`
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