UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 5,954,781
`Issue Date: Sep. 21, 1999
`Title: METHOD AND APPARATUS FOR OPTIMIZING VEHICLE
`OPERATION
`__________________________________________________________________
`
`PETITIONER’S REQUEST FOR REHEARING UNDER
`37 C.F.R. §§ 42.71(c) and (d)
`
`Case No. IPR2015-00276
`__________________________________________________________________
`
`
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 5,954,781
`Issue Date: Sep. 21, 1999
`Title: METHOD AND APPARATUS FOR OPTIMIZING VEHICLE
`OPERATION
`__________________________________________________________________
`
`PETITIONER’S REQUEST FOR REHEARING UNDER
`37 C.F.R. §§ 42.71(c) and (d)
`
`Case No. IPR2015-00276
`__________________________________________________________________
`
`
`
`
`
`
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`
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED .......... 1
`I.
`LEGAL STANDARDS .................................................................................. 1
`II.
`III. BASIS FOR RELIEF REQUESTED ............................................................. 2
`A.
`The Board Misapprehended or Overlooked
`the Petitioner’s Arguments Regarding the
`“Fuel Overinjection Notification Circuit” ................................. 5
`The Board Misapprehended or Overlooked
`the Proper Scope of the Prior Art and the
`Claim Language ......................................................................... 6
`The Board Misapprehended or Overlooked
`the Reasons to Combine Smith, Jurgen,
`Habu, and Davidian.................................................................... 8
`IV. CONCLUSION ............................................................................................. 11
`
`B.
`
`C.
`
`i
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cisco Systems, Inc. v. Constellation Techs. LLC,
`IPR2014-01179, Paper 7 (PTAB Feb. 4, 2015) ..................................................... 9
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 8
`Renda Marine, Inc. v. U.S.,
`509 F.3d 1372 (Fed. Cir. 2007) .............................................................................. 1
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .............................................................................. 9
`Rules
`
`37 C.F.R. § 42.71(c) ................................................................................................... 1
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`ii
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`
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`Under 37 C.F.R. §§ 42.71(c) and (d), Petitioner Volkswagen Group of America,
`
`Inc. (“VWGoA”) requests a rehearing of the Patent Trial and Appeal Board’s
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`(“Board”) June 1, 2015 Decision not to institute an inter partes review of U.S.
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`Patent No. 5,954,781 (the “’781 patent”) based on its November 21, 2014 Petition.
`
`Petitioner submits that the Board misapprehended or overlooked VWGoA’s
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`arguments related to: (1) the scope of the term “fuel injection notification circuit;”
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`(2) the scope of the claimed “processor subsystem;” and (3) the obviousness
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`rationale for combining Smith with the remaining prior art in the Petition.
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`II. LEGAL STANDARDS
`In reviewing a request for rehearing, the panel will review the decision for an
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`abuse of discretion. 37 C.F.R. § 42.71(c). The burden of showing that a decision
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`should be modified lies with the party challenging the decision. 37 C.F.R. §
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`42.71(d). An abuse of discretion “occurs when a court misunderstands or
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`misapplies the relevant law.” Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379
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`(Fed. Cir. 2007). The request for reahearing must “specifically identify all matters
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`a party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, an opposition, or a reply.” 37
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`C.F.R. § 42.71(d).
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`1
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`
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`III. BASIS FOR RELIEF REQUESTED
`The Board, in declining to institute inter partes review of the ’781 patent, stated
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`that Petitioner proposed a construction for the claim term “fuel overinjection
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`notification circuit” as a circuit that “provides the driver with . . . an alert that his
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`or her driving is fuel inefficient.” Decision, Paper No. 8, at 6–7. Additionally,
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`according to the Board, the Patent Owner proposed that the term means “a circuit
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`that provides a driver with a notification that his or her driving is fuel efficient or
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`inefficient.” Id. at 7. The Board, after citing passages from the specification of the
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`’781 patent describing the fuel overinjection notification circuit, stated that it
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`“cannot discern how the construction proffered by the Petitioner or Patent Owner
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`add any clarity to the term, the meaning of which is discernable from the context of
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`the claims and the specification.”1 Id. The Board concluded that no construction
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`1 The Board’s Decision cited Ex. 1001, 2:15–19 (“a fuel overinjection
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`notification circuit for issuing notifications that excessive fuel is being supplied to
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`the engine of the vehicle”), 3:10–15 (“The apparatus further includes a fuel
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`overinjection notification circuit, an upshift notification circuit and a downshift
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`notification circuit, all of which are coupled to the processor subsystem. The fuel
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`overinjection notification circuit issues notifications that excessive fuel is being
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`supplied to the engine of the vehicle.”), 4:15–18 (“In other aspects thereof, the
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`
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`2
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`
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`was necessary for this term, nor any of the other terms proposed by the Patent
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`Owner. Id.
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`The Petition relied on the following prior art documents:
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`
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`Petitioner’s first ground of rejection contended that the combination of Jurgen,
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`Smith, and Habu renders obvious claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 28–30,
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`based upon the Examiner’s earlier determination in the reexamination proceeding
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`that the combination of Jurgen and Habu did not disclose a “fuel overinjection
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`notification circuit.” Petition, at 5–6 and 9–10. In declining to institute an inter
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`apparatus may be further provided with a fuel overinjection notification circuit for
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`issuing a notification that excessive fuel is being supplied to the engine of the
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`vehicle.”), and 7:18–19 (“overinjection notification circuit 38 for notifying the
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`driver that too much fuel is being supplied to the vehicle.”). Decision, Paper No. 8,
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`at 7.
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`3
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`
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`partes review on this ground, the Board stated that “Smith does not teach or
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`suggest a ‘processor subsystem’ (which the ’781 patent describes as ‘for example,
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`a microprocessor,’ Ex. 1001, 5:54–55), or any digital components.” Decision,
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`Paper No. 8, at 10. Further, the Board determined that the Petition did not
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`sufficiently explain the motivation to combine Jurgen, Smith, and Habu, stating
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`that the Petitioner only provided “conclusory contentions” instead of “articulated
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`reasoning with rational underpinnings as to why one of ordinary skill in the art
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`would have looked to Smith’s indicator light connected in parallel with a vacuum
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`operated switch pneumatically connected to the engine manifold, in considering
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`how to implement a fuel overinjection notification circuit coupled to a processor
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`subsystem.” Id. at 13.
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`Petitioner proposed another ground of rejection, arguing that claims 17–27 are
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`obvious in view of the combination of Jurgen, Smith, Habu, and Davidian. The
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`Board, in declining to institute inter partes review on this ground, determined
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`without explanation that Petitioner failed “to provide articulated reasoning with
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`rational underpinning for combining Jurgen, Smith, Habu, and Davidian.” Id. at
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`14.
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`4
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`
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`A. The Board Misapprehended or Overlooked the Petitioner’s
`Arguments Regarding the “Fuel Overinjection Notification
`Circuit”
`The Board misapprehended or overlooked Petitioner’s claim construction
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`argument. The Petitioner did not propose a construction of the term “Fuel
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`Overinjection Notification Circuit,” but rather stated, based on the Patent Owner’s
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`assertions in the earlier reexamination proceeding, that a “fuel overinjection
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`notification circuit” is a circuit that “provide[s] the driver with . . . an alert that his
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`or her driving is fuel inefficient.” Petition, at 8 (citing Ex. 1012, at 31). It is
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`against this background that the Petition established that Smith teaches the claimed
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`fuel overinjection notification circuit. Id. at 9–10.
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`In its Preliminary Response, the Patent Owner proposed another construction
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`for the term “fuel overinjection notification circuit,” which added language related
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`to fuel efficiency, rather than inefficiency, but stated that it “believes its proposed
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`construction is consistent with Petitioner’s proposal.” Preliminary Response,
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`Paper No. 6, at 11.
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`The Petition also discussed the Examiner’s interpretation of the term “fuel
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`overinjection notification circuit” in the reexamination proceeding, that this claim
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`term requires “alerting a driver that too much fuel is being supplied to the engine.”
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`Petition, at 8 (citing Reexamination Office Action, Ex. 1011, at 21). The Decision
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`5
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`
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`does not even mention the reexamination Examiner’s interpretation of this claim
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`term.
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`With the interpretation of the term “fuel overinjection notification circuit” at
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`issue, the Board overlooked and misapprehended the importance of issuing a
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`definite construction of this term. Therefore, the Board erred.
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`B.
`
`The Board Misapprehended or Overlooked the Proper
`Scope of the Prior Art and the Claim Language
`The Board misapprehended or overlooked the disclosure of Smith, and further
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`misapprehended or overlooked the proper interpretation of the claim language by
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`apparently interpreting the claims to require a microprocessor or digital
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`components to activate the fuel overinjection notification circuit. The Board stated
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`that “Smith does not teach or suggest a ‘processor subsystem’ (which the ’781
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`patent describes as ‘for example, a microprocessor,’ Ex. 1001, 5:54–55), or any
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`digital components.” Decision, Paper No. 8, at 10. The portion of the
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`specification of the ’781 patent that the Board relied upon merely states:
`
`The system 10 includes a processor subsystem 12, for
`example, a microprocessor, and a memory subsystem 14,
`for example, the memory subsystem 14 may include a
`nonvolatile random access memory (or ‘NVRAM’),
`coupled together by a bus 16 for bi-directional exchanges
`of address, data and control signals therebetween.
`
`6
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`
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`Ex. 1001, col. 5, lines 53 to 58. The foregoing sentence is the only instance in the
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`entire ’781 patent where the word “microprocessor” appears; nowhere in the ’781
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`patent does the word “digital” or the phrase “digital component” appear. The
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`Board plainly misread the claims, requiring the “processor subsystem” to be or
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`include a microprocessor or digital components.
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` Further,
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`the Board
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`misapprehended the scope of the claim language by requiring a microprocessor or
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`digital components to activate the fuel overinjection notification circuit, where the
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`claim merely requires “said processor subsystem” — as opposed to simply a
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`“processor,” and as opposed to a “microprocessor” or “digital components” —
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`“determining, based upon data received from said plurality of sensors, when to
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`activate said fuel overinjection circuit.” E.g., Ex. 1001, at col. 14, lines 9 to 12.
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`The Petition describes that Jurgen (Ex. 1002) teaches “processors and memory
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`devices” in that “Jurgen teaches that sensors input signals to the Engine Control
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`Unit (‘ECU’) for processing” and in that “Jurgen teaches at p. 14.3 that the ECU
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`can be a microcontroller, and that it can be used to calculate the vehicle’s speed.”
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`Petition, at 10, 13. In charting the cited prior art against the challenged claims, the
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`Petition cited to Jurgen as teaching the claimed “processor subsystem” at, for
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`example, page 12.1 (“The electronic engine control system consists of sensing
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`devices which continuously measure the operating conditions of the engine, an
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`electronic control unit (ECU) which evaluates the sensor inputs.”) and page 22.6
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`7
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`
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`(“During the entire operating time of the vehicle, the ECUs are constantly
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`supervising the sensors they are connected to.”). Petition, at 13. The Board
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`apparently overlooked or misapprehended that the cited prior art’s teachings of an
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`“electronic engine control system” and “an electronic control unit (ECU) — as
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`opposed to simply a “microprocessor,” “microcontroller,” or “digital components”
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`— constitute teachings of the claimed “processor subsystem.” When properly
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`understood, the portions of Smith cited in the Petition (e.g., Ex. 1003, 2:49–57 and
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`5:23–27) adequately render obvious the claim limitation “said processor subsystem
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`determining, based upon data received from said plurality of sensors, when to
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`activate said fuel overinjection notification circuit.”
`
`C. The Board Misapprehended or Overlooked the Reasons to
`Combine Smith, Jurgen, Habu, and Davidian
`A person of ordinary skill in the art at the time the ’781 patent was filed would
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`have had, the law presumes, ordinary creativity and the ability to draw inferences.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As the Petition
`
`establishes, all of the elements of the claimed invention were known or obvious in
`
`view of the cited prior art. The question is whether a person of ordinary skill in the
`
`art would have had “an apparent reason to combine the known elements in the
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`fashion claimed by the patent at issue.” Id. There is no requirement that such a
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`reason to combine be supported by the testimony of an expert. “KSR and our later
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`cases establish that the legal determination of obviousness may include recourse to
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`8
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`
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`logic, judgment, and common sense, in lieu of expert testimony.” Wyers v. Master
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`Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010) (citations omitted).
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`Jurgen teaches that a processor subsystem supervises the components to which
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`it is connected. Petition, at 13. According to the Petition, a person of ordinary
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`skill in the art, having ordinary curiosity and creativity, would have been motivated
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`to combine Jurgen, Smith, and Habu, in order to, for example, “minimize exhaust
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`emissions and fuel consumption” (Jurgen, Ex. 1002, p. 12.1) and to encourage
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`“fuel efficient driving techniques” (Smith, Ex. 1003, 1:22–24). Petition, at 11.
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`These are not, as the Board misapprehended, “conclusory contentions” that are
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`“generic and bear no relation to any specific combination of prior art elements.”
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`Decision, Paper No. 8, at 13. The Cisco Systems, Inc. v. Constellation Techs. LLC
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`case cited by the Patent Owner and the Board is inapposite. In that case, the Board
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`recognized that the Petition and expert testimony presented by the Petitioner did
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`not direct the Board to any disclosure in one of the prior art documents regarding
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`the claimed encapsulation techniques. Cisco, Case IPR2014-01179, Paper 7, at 15
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`(PTAB Feb. 4, 2015) (“Dr. Forys does not direct us to, nor can we find, a
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`disclosure in Grover 1998 that addresses encapsulation techniques, much less the
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`IP-in-IP encapsulation techniques disclosed in RFC 2003.”).
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`Here, unlike in Cisco, the Petition explicitly and precisely presented why it
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`would have been obvious to a person of ordinary skill in the art to combine the
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`9
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`
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`teachings of Smith, which, for example, discloses as fuel overinjection notification
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`circuit in the form of a circuit that “provide[s] the driver with . . . an alert that his
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`or her driving is fuel inefficient,”2 with the teachings of Jurgen, which, for
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`example, discloses a processor subsystem in the form of “an electronic control unit
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`(ECU) which evaluates the sensor inputs,” (Petition, at 13 (citing Jurgen, Ex. 1002,
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`at 12.1)) and in which “[d]uring the entire operating time of the vehicle, the ECUs
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`are constantly supervising the sensors they are connected to” (Id. at 13 (citing
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`Jurgen, Ex. 1002, at 22.6)). As stated in the Petition, and misapprehended by the
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`Board, the goal of improving fuel efficiency that is contemplated by both Smith
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`and Jurgen is the exact problem that the ’781 patent purports to solve. ’781 patent,
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`Ex. 1001, 1:66–2:5; see Petition, at 11–12. Improving the fuel efficiency does not
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`“bear no relation to any specific combination of prior art elements” (Decision,
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`Paper No. 8, at 13), but rather goes directly to the heart of the stated goal of the
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`’781 patent as well as the prior art. Controlling the fuel overinjection notification
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`circuit of Smith using the system of Jurgen would solve the same problem
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`contemplated by the ’781 patent — to “advise the driver to correct operation of the
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`2 Petition, at 16–17 (citing Smith, Ex. 1003, at Abstract (“A fuel consumption
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`signalling system for signalling both efficient and inefficient fuel consumption
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`conditions in the engine of a motor vehicle is herein disclosed.”)).
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`10
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`vehicle in a manner which will enhance the efficient operation thereof.” Petition,
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`at 11.
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`Petitioner’s second ground of rejection relies upon the same prior art as the
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`first, but with the addition of Davidian (Ex. 1005), which discloses a radar detector
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`and other elements related to an anti-collision system. For the same reasons that
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`the Board misapprehended the combination of Jurgen, Smith, and Habu in the first
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`ground, the Board also misapprehended the combination of Jurgen, Smith, Habu,
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`and Davidian in the second ground.
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`
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`IV. CONCLUSION
` For the foregoing reasons, VWGoA respectfully requests that the Board
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`institute review of the ’781 patent based upon Grounds A (the combination of
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`Jurgen, Smith, and Habu) and B (the combination of Jurgen, Smith, Habu, and
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`Davidian) set forth in the Petition.
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`Dated: July 1, 2015
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`Michael J. Lennon (Reg. No. 26,562)
`Kenyon & Kenyon LLP
`
`
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`
`One Broadway
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`New York, NY 10004
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`Tel: 212.425.7200
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`Fax: 212.425.5288
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`Email: mlennon@kenyon.com
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`
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`/Michael J. Lennon/
`
` Michael J. Lennon, Reg. No. 26,562
`Lead Counsel for VWGoA
`
`
` Clifford A. Ulrich (Reg. No. 42,194)
` Kenyon & Kenyon LLP
` One Broadway
` New York, NY 10004
` Tel: 212.425.7200
` Fax: 212.425.5288
` Email: culrich@kenyon.com
`
`11
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