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`(Also referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
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`1.
`
`2.
`
` 3.
`
`4.
`
`5.
`
`6.
`
` 7.
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`8.
`
`Address to:
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.:
`
`Date:
`
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number _________________
` issued ________________________. The request is made by:
` patent owner.
`third party requester.
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`_______________________________________________________________________________________
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`[Page 1 of 2]
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`VWGoA - Ex. 1008 - Part I
`Volkswagen Group of America, Inc., Petitioner
`Case No. IPR2015-00276
`1
`
`

`
`PTO/SB/57 (08-13)
`Approved for use through 07/31/2015. OMB 0651-0064
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`
`Request for Ex Parte Reexamination
`of U.S. Patent No. 5,954,781
`
`CONTINUATION SHEET OF PAGE 2 OF FORM PTO/SB/57
`
`17d. Copending litigation styled:
`
`VELOCITY PATENT LLC v. AUDI OF AMERICA, INC., Case No. 1:13-cv-08418-JBG (N.D.
`Ill.)
`
`VELOCITY PATENT LLC v. MERCEDES-BENZ USA, LLC, Case No. 1:13-cv-08413-JWD (N.D.
`Ill.)
`
`VELOCITY PATENT LLC v. BMW OF NORTH AMERICA, LLC, Case No. 1:13-cv-08416-JWD
`(N.D. Ill.)
`
`VELOCITY PATENT LLC v. CHRYSLER GROUP LLC, Case No. 1:13-cv-08419-JWD (N.D.
`Ill.)
`
`VELOCITY PATENT LLC v. JAGUAR LAND ROVER NORTH AMERICA, LLC, Case No. 1:13-
`cv-08421-JWD (N.D. Ill.)
`
`
`
`Page 1 of 1
`
`4
`
`

`
`In Re Patent of
`Patent No.
`
`Issued
`
`Title
`
`
`
`
`
`:
`:
`:
`:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Harvey Slepian, et al.
`5,954,781
`Sep. 21, 1999
`METHOD AND APPARATUS FOR OPTIMIZING
`VEHICLE OPERATION
`08/813,270
`Mar. 10, 1997
`Volkswagen Group of America, Inc.
`
`I hereby certify that this correspondence is being electronically
`transmitted to the United States Patent and Trademark Office via
`the Office electronic filing system on May 22, 2014.
`Signature: /Helen Tam/
` Helen Tam
`
`
`
`
`REQUEST FOR EX PARTE REEXAMINATION
`OF U.S. PATENT NO. 5,954,781 PURSUANT TO 37 C.F.R. § 1.510
`
`
`SIR:
`Volkswagen Group of America, Inc. (“Requester” or “VWGoA”), through its
`
`undersigned counsel, hereby respectfully requests ex parte reexamination of U.S. Patent No.
`5,954,781 pursuant to 35 U.S.C. § 302 and the provisions of 37 C.F.R. § 1.510.
`
`
`
`
`:
`:
`:
`
`Application Serial No.
`Filed
`
`
`
`Requester
`
`
`
`VIA EFS-WEB
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`5
`
`

`
`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`
`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.510(b)(2) .........................................1 
`
`COPY OF ’781 PATENT PURSUANT TO 37 C.F.R. §
`1.510(b)(4) ..........................................................................................................................1 
`
`PROCEEDINGS RELATED TO ’781 PATENT ..............................................................1 
`
`THE ’781 PATENT AND ITS PROSECUTION ..............................................................2 
`
`CITATIONS OF PRIOR ART PATENTS AND PRINTED
`PUBLICATIONS THAT RAISE SUBSTANTIAL NEW
`QUESTIONS OF PATENTABILITY .............................................................................15 
`
`STATEMENTS IDENTIFYING EACH SUBSTANTIAL
`NEW QUESTION OF PATENTABILITY PURSUANT TO
`37 C.F.R. § 1.510(b)(1) ....................................................................................................16 
`
`VII.  DETAILED EXPLANATIONS PURSUANT TO 37 C.F.R. §
`1.510(b)(2) ........................................................................................................................17 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`Claim 1 is Obvious Under 35 U.S.C. § 103(a) in
`View of the Combination of Jurgen and Saturn ’452 ......................................18 
`
`Claims 1, 7, and 13 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen and
`Toyota ’599 ......................................................................................................23 
`
`Claims 1, 7, and 13 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen and
`Volkswagen ’070 .............................................................................................29 
`
`Claims 17–23 and 26 are Obvious Under 35 U.S.C.
`§ 103(a) in View of the Combination of Jurgen,
`Toyota ’599, and Davidian ..............................................................................36 
`
`Claims 17–23 and 26 are Obvious Under 35 U.S.C.
`§ 103(a) in View of the Combination of Jurgen,
`Volkswagen ’070, and Davidian ......................................................................44 
`
`Claims 17–21 and 23 are Obvious Under 35 U.S.C.
`§ 103(a) in View of the Combination of Jurgen,
`Saturn ’452, and Davidian ...............................................................................54 
`
`Claims 28–30 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen and
`Nissan ’055 ......................................................................................................62 
`
`Claims 28–30 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen and
`Mack ’324 ........................................................................................................67 
`i
`
`6
`
`

`
`9. 
`
`10. 
`
`11. 
`
`12. 
`
`13. 
`
`14. 
`
`15. 
`
`16. 
`
`17. 
`
`18. 
`
`19. 
`
`20. 
`
`21. 
`
`Claims 28–30 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen and
`GM ’753 ...........................................................................................................73 
`
`Claim 31 is Anticipated Under 35 U.S.C. § 102(b)
`by Davidian ......................................................................................................78 
`
`Claims 31 and 32 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Tonkin and
`Doi et al. ...........................................................................................................80 
`
`Claims 2, 4, and 5 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen,
`Saturn ’452, and Chasteen ...............................................................................84 
`
`Claims 2, 4, 5, 8, 10, 12, and 15 are Obvious Under
`35 U.S.C. § 103(a) in View of the Combination of
`Jurgen, Toyota ’599, and Chasteen ..................................................................88 
`
`Claims 2, 4, 5, 8, 10, 12, and 15 are Obvious Under
`35 U.S.C. § 103(a) in View of the Combination of
`Jurgen, Volkswagen ’070, and Chasteen .........................................................93 
`
`Claim 18 is Obvious Under 35 U.S.C. § 103(a) in
`View of the Combination of Jurgen, Toyota ’599,
`Davidian, and Tonkin.......................................................................................98 
`
`Claim 18 is Obvious Under 35 U.S.C. § 103(a) in
`View of the Combination of Jurgen, Volkswagen
`’070, Davidian, and Tonkin ...........................................................................101 
`
`Claim 18 is Obvious Under 35 U.S.C. § 103(a) in
`View of the Combination of Jurgen, Saturn ’452,
`Davidian, and Tonkin.....................................................................................103 
`
`Claims 24 and 25 are Obvious Under 35 U.S.C. §
`103(a) in View of the Combination of Jurgen,
`Saturn ’452, Davidian and Chasteen ..............................................................105 
`
`Claims 24, 25, and 27 are Obvious Under 35 U.S.C.
`§ 103(a) in View of the Combination of Jurgen,
`Toyota ’599, Davidian and Chasteen .............................................................109 
`
`Claims 24, 25, and 27 are Obvious Under 35 U.S.C.
`§ 103(a) in View of the Combination of Jurgen,
`Volkswagen ’070, Davidian and Chasteen ....................................................114 
`
`Claim 32 is Obvious Under 35 U.S.C. § 103(a) in
`View of the Combination of Davidian and Tonkin .......................................119 
`
`VIII.  VWGoA’s PROPOSED GROUNDS OF REJECTION ................................................121 
`
`IX. 
`
`FEE PURSUANT TO 37 C.F.R. § 1.510(a) ..................................................................122 
`ii
`
`7
`
`

`
`X. 
`X.
`
`XI. 
`XI.
`
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.510(b)(5) ......................................123 
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.510(b)(5) .................................... ..123
`
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.510(b)(6) ......................................123 
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.510(b)(6) .................................... ..123
`
`XII.  CONCLUSION ..............................................................................................................124 
`XII.
`CONCLUSION ............................................................................................................ .. 124
`
`iii
`iii
`
`8
`
`

`
`EXHIBITS
`
`U.S. Patent No. 5,954,781, entitled “Method and Apparatus for
`Optimizing Vehicle Operation,” issued Sept. 21, 1999, to Harvey
`Slepian, et al.
`
`“First Amended Complaint for Patent Infringement” filed on January
`30, 2014 in VELOCITY PATENT LLC v. AUDI OF AMERICA, INC.,
`Case No. 1:13-cv-08418-JBG (N.D. Ill.)
`
`U.S. Patent No. 4,901,701, issued on February 20, 1990 to Chasteen
`
`U.S. Patent No. 4,631,515, issued on December 23, 1986 to Blee et al.
`
`U.S. Patent No. 5,708,584, filed on September 8, 1995, issued on
`January 13, 1998 to Doi et al.
`
`Velocity Patent LLC’s Initial Infringement Contentions Pursuant to
`Local Patent Rule 2.2 to Audi
`
`Velocity Patent LLC’s Initial Infringement Contentions Pursuant to
`Local Patent Rule 2.2 to Mercedes-Benz
`
`Velocity Patent LLC’s Initial Infringement Contentions Pursuant to
`Local Patent Rule 2.2 to Chrysler
`
`Velocity Patent LLC’s Initial Infringement Contentions Pursuant to
`Local Patent Rule 2.2 to Jaguar Land Rover
`
`Listing of Prior Art Patents and Printed Publications that Raise
`Substantial New Questions of Patentability Affecting the Claims of
`U.S. Patent No. 5,954,781
`
`“Automotive Electronics Handbook,” published in 1995, by Ronald
`Jurgen
`
`U.S. Patent No. 5,477,452, issued on December 19, 2995 to Milunas et
`al.
`
`U.S. Patent No. 4,559,599, issued on December 17, 1985 to Habu et al.
`
`German Patent Application Publication No. 29 26 070, and its
`corresponding English Translation, published on January 15, 1981
`
`U.S. Patent No. 5,357,438, issued on October 18, 1994 to Davidian
`
`U.S. Patent No. 4,061,055, issued on December 6, 1977 to Iizuka et al.
`
`U.S. Patent No. 5,121,324, issued on June 9, 1992 to Rini et al.
`
`U.S. Patent No. 3,925,753, issued on December 9, 1975 to Auman et
`al.
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`Exhibit 11
`
`Exhibit 12
`
`Exhibit 13
`
`Exhibit 14
`
`Exhibit 15
`
`Exhibit 16
`
`Exhibit 17
`
`Exhibit 18
`
`
`
`9
`
`

`
`Exhibit 19
`
`International Patent Application No. WO 96/02853, published on
`February 1, 1996 to Tonkin
`
`Exhibit 20
`
`Certificate of Service
`
`2
`
`10
`
`

`
`I.
`
`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.510(b)(2)
`Ex parte reexamination of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 17–32 of U.S.
`
`Patent No. 5,954,781 (“the ’781 patent”) is requested.
`
`
`II.
`
`COPY OF ’781 PATENT PURSUANT TO 37 C.F.R. § 1.510(b)(4)
`Pursuant to 37 C.F.R. § 1.510(b)(4), annexed hereto as Exhibit 1 is a copy of the
`
`entire ’781 patent including the front face, drawings, specification and claims (in double
`column format) for which ex parte reexamination is requested.
`
`To the best of Requester’s knowledge, as of the date of this request, no disclaimer,
`certificate of correction, or reexamination certificate has been issued in connection with the
`’781 patent.
`
`
`III.
`
`PROCEEDINGS RELATED TO ’781 PATENT
`Although Requester is not obligated to inform the Office of proceedings related to the
`
`’781 patent, the Office is hereby informed of the following proceedings, which are pending as
`of the date of this Request, that relate to the ’781 patent:
`VELOCITY PATENT LLC v. AUDI OF AMERICA, INC., Case
`No. 1:13-cv-08418-JBG (N.D. Ill.) – First Amended Complaint
`Filed on January 30, 2014 (“the VELOCITY-AUDI case,” copy
`annexed hereto as Exhibit 2) naming as defendants Audi of
`America, Inc. and Audi of America, LLC. Audi of America,
`Inc. is a d/b/a of Volkswagen Group of America, Inc., which is
`a wholly owned subsidiary of Volkswagen AG, a publicly-held
`German corporation.
`
`VELOCITY PATENT LLC v. MERCEDES-BENZ USA, LLC, et
`al., Case No. 1:13-cv-08413-JWD (N.D. Ill.) – Complaint Filed
`on November 21, 2013 (“the VELOCITY-MERCEDES-BENZ
`case”).
`
`VELOCITY PATENT LLC v. BMW OF NORTH AMERICA,
`LLC, et al., Case No. 1:13-cv-08416-JWD (N.D. Ill.) –
`Complaint Filed on November 21, 2013 (“the VELOCITY-
`BMW case”).
`
`VELOCITY PATENT LLC v. CHRYSLER GROUP LLC, Case
`No. 1:13-cv-08419-JWD (N.D. Ill.) – Complaint Filed on
`November 21, 2013 (“the VELOCITY-CHRYSLER case”).
`
`VELOCITY PATENT LLC v. JAGUAR LAND ROVER NORTH
`AMERICA, LLC, Case No. 1:13-cv-08421-JWD (N.D. Ill.) –
`Complaint Filed on November 21, 2013 (“the VELOCITY-
`JAGUAR case”.)
`
`
`
`11
`
`

`
`
`
`IV.
`
`THE ’781 PATENT AND ITS PROSECUTION
`A.
`The ’781 Patent
`
`The ’781 patent is titled “Method and Apparatus for Optimizing Vehicle Operation”
`
`and was issued on September 21, 1999 from U.S. Application Serial No. 08/873,270 (“the
`’270 application”), filed on March 10, 1997.
`
`The ’781 patent is generally related to an “[a]pparatus for optimizing operation of an
`engine-driven vehicle.” Abstract. In describing the background and prior art, the ’781 patent
`states that “[i]t has long been recognized that the improper operation of a vehicle may have
`many adverse effects.” Col. 1, lines 12–13. For example, according to the ’781 patent, “the
`fuel efficiency of a vehicle may vary dramatically based upon how the vehicle is operated.”
`Col. 1, lines 13–15. The ’781 patent refers specifically to, for example, operating a vehicle at
`excessive speeds, excessive RPMs, and excessive manifold pressures as leading to reduced
`fuel economy and increased operating costs. Col. 1, lines 15–18. The increased operating
`costs may be considerable, especially for the owner or operator of a fleet of vehicles. Against
`this background, the ’781 patent describes a processor subsystem to determine when to issue
`notifications as to recommended changes in vehicle operation that, when executed by the
`driver, will optimize vehicle operation.
`
`According to the specification, the system “both notifies the driver of recommended
`corrections in vehicle operation and, under certain conditions, automatically initiates selected
`corrective action.” Col. 1, lines 7–10. The ’781 patent states that “it would be desirable to
`provide a system which integrates the ability to issue audible warnings which advise the
`driver to correct operation of the vehicle in a manner which will enhance the efficient
`operation thereof with the ability to automatically take corrective action if the vehicle is being
`operated unsafely.” Col. 1, line 66–col. 2, line 6.
`
`The ’781 patent describes three types of circuits for issuing notifications that indicate
`operating inefficiencies: a shift notification circuit; a fuel overinjection notification circuit;
`and a vehicle proximity alarm circuit. The shift notification circuit issues a notification that
`the engine of the vehicle is being operated at an excessive speed, i.e., the shift notification
`circuit operates as an upshift notification circuit, and/or issues a notification that the engine of
`the vehicle is being operated at an insufficient speed, i.e., the shift notification circuit
`operates as a downshift notification circuit. The fuel overinjection notification circuit issues
`a notification that excessive fuel is being supplied to the engine of the vehicle, and the
`vehicle proximity alarm circuit issues an alarm when the vehicle is too close to an object.
`
`2
`
`12
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`

`
`According to the ’781 patent, a series of sensors, including a road speed sensor 18, an
`
`RPM sensor 20, a manifold pressure sensor 22, a throttle sensor 24, a windshield wiper
`sensor 30, and a brake sensor 32, are coupled to a processor subsystem 12 and are
`periodically polled by the processor subsystem to determine their respective states or levels.
`Col. 5, line 65–col. 6, line 4. The system 10 includes a memory subsystem 14, which is used
`to hold information to be utilized by the processor subsystem 12 to determine whether to take
`corrective actions and/or issue notifications. Col. 6, lines 43–46. Figure 1 of the ’781 patent
`is reproduced below:
`
`
`For example, the processor subsystem 12 determines that the vehicle is being operated
`
`unsafely if the speed of the vehicle is such that the stopping distance for the vehicle is greater
`than the distance separating the vehicle from an object, e.g., a second vehicle, in its path.
`Col. 9, lines 4–8. As another example, the processor subsystem 12 will notify the driver that,
`in order to optimize vehicle operation, the amount of fuel being supplied to the engine should
`be reduced if the processor subsystem 12 determines that too much fuel is being provided to
`the engine, which is determined based on the vehicle’s road speed, throttle position, and
`manifold pressure. Col. 12, lines 5–14. As a further example, the processor subsystem 12
`will issue an audible alert to notify the driver that, in order to optimize vehicle operation, an
`upshift should be performed, based on the vehicle’s engine speed reaching a particular RPM
`set point. Col. 11, line 45–col. 12, line 4.
`
`Thus, according to the ’781 patent, a system is provided for optimizing vehicle
`operation that combines operator notifications of recommended corrections in vehicle
`operation with automatic modification of vehicle operation under certain circumstances. Col.
`
`3
`
`13
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`

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`13, lines 36–40. In addition, the driver is advised of certain actions that will enable the
`vehicle to be operated with greater fuel efficiency. Col. 13, lines 40–44.
`
`
`
`Prosecution of the ’781 Patent
`B.
`As described in more detail below, during prosecution of the ’781 patent, the
`Examiner concluded that upshift notification circuits, downshift notification circuits, and
`processors that determine when to activation upshift and downshift notification circuits were
`not taught by the cited prior art.
`Claims 1 to 6 and 17 to 25 were allowed because they were amended to include, for
`example, an upshift notification circuit and a processor that determines when to activate the
`upshift notification circuit. Therefore, the questions whether substantial new questions of
`patentability are raised and whether claims 1 to 6 and 17 to 25 are obvious in view of the
`prior art are reduced to these limitations relating to the upshift notification circuit.1
`Claims 7 to 12, 26, and 27 were allowed because they were, in effect,2 amended to
`include, for example, a downshift notification circuit and a processor that determines when to
`activate the downshift notification circuit. Therefore, the questions whether substantial new
`questions of patentability are raised and whether claims 7 to 12, 26, and 27 are obvious in
`view of the prior art are reduced to these limitations relating to the downshift notification
`circuit.
`Claims 13 to 16 were allowed based on the fact that they include an upshift
`notification circuit, a downshift notification circuit, and a processor that determines when to
`activate the upshift and downshift notification circuits. Therefore, the questions whether
`substantial new questions of patentability are raised and whether claims 13 to 16 are obvious
`in view of the prior art are reduced to these limitations relating to the upshift and downshift
`notification circuits.
`Regarding claims 28 to 30, which were added during prosecution, the applicant
`argued that these claims were allowable over the cited prior art based on the fact that they
`
`1
`Graham v. John Deere Co. 383 U.S. 1 (1966) (“Here, the patentee obtained his patent only by
`accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations
`and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a
`whole reduces, then, to the distinguishing features clearly incorporated into the claims. We now turn to those
`features.”).
`2
`See, e.g., Honeywell Int’l v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1144 (Fed. Cir. 2004)
`(“[Dependent c]laims 4, 8, and 19 were rewritten into independent form, and the original independent claims
`were cancelled, effectively adding the inlet guide vane limitations [of dependent claims 4, 8 and 19] to the
`claimed invention.”).
`
`4
`
`14
`
`

`
`claim a fuel overinjection notification circuit and a processor subsystem that determines
`whether to activate the fuel overinjection notification circuit based on data received from a
`road speed sensor, a throttle position sensor, and a manifold pressure sensor. Therefore, the
`questions whether substantial new questions of patentability are raised and whether claims 28
`to 30 are obvious in view of the prior art are reduced to these limitations relating to the fuel
`overinjection notification circuit.
`Regarding claims 31 and 32, which were added during prosecution, the applicants
`argued that these claims were allowable over the prior art based on the fact that they claim a
`processor subsystem that determines whether to activate a vehicle proximity alarm circuit
`based on separation distance data received from a radar detector, vehicle speed data received
`from a road speed sensor, and a vehicle stopping distance table stored in a memory
`subsystem. Therefore, the questions whether substantial new questions of patentability are
`raised and whether claims 31 and 32 are obvious in view of the prior art are reduced to these
`limitations relating to the vehicle proximity alarm circuit.
`The ’270 application was filed on March 10, 1997 with 32 claims, of which
`application claims 1, 14, 18, and 27 were the only independent claims. Among these
`independent claims, application claim 1 included a fuel overinjection circuit, application
`claim 14 included a fuel overinjection circuit, an upshift notification circuit, and a downshift
`notification circuit, application claim 18 included a vehicle p