UNITED STATES PATENT AND TRADEMARK OFFICE
`
`-------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`-------------------------
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`
`Patent Owner.
`
`-------------------------
`
`IPR TRIAL NO. IPR2015-00968
`Patent No. 5,714,927
`
`-------------------------
`
`PETITIONER’S REQUEST FOR REHEARING UNDER
`37 C.F.R. §§ 42.71(c) and (d)
`
`
`
`
`-------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`-------------------------
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`
`Patent Owner.
`
`-------------------------
`
`IPR TRIAL NO. IPR2015-00968
`Patent No. 5,714,927
`
`-------------------------
`
`PETITIONER’S REQUEST FOR REHEARING UNDER
`37 C.F.R. §§ 42.71(c) and (d)
`
`
`
`
`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 rehearing of the August 25, 2015 Decision of
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`the Patent Trial and Appeal Board (“the Board”) denying institution of an inter
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`partes review of U.S. Patent No. 5,714,927 (“the ’927 patent”), based on
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`VWGoA’s Petition, filed on March 30, 2015 (“the Petition”).
`
`
`
`For the reasons more fully set forth below, VWGoA respectfully submits
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`that the Board misapprehended or overlooked certain matters set forth in
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`VWGoA’s Petition and in the supporting Declaration of Dr. David M. Bevly (“the
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`Bevly Declaration,” Ex. 1002), and respectfully requests that the Board institute an
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`inter partes review of claims 1, 2, and 6 of the ’927 patent.
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`II. LEGAL STANDARDS
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`In reviewing a request for rehearing, the panel “will review the decision for
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`an abuse of discretion.” 37 C.F.R. § 42.71(c). The rehearing request must
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`“specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`III. BASIS FOR RELIEF REQUESTED
`The Board, in its Decision, denied institution of an inter partes review of the
`
`
`’927 patent, based on its conclusions that: (1) it was “not persuaded that either
`
`Pakett [U.S. Patent No. 5,325,096, Ex. 1005] or Fujiki [U.S. Patent No. 4,053,026,
`
`
`
`Ex. 1006] teach or suggest this limitation [“at the end of the alert command,
`
`determining whether the alert signal was active for a threshold time”] as properly
`
`construed,” Decision at 10; (2) “alert signal” means “a signal that provides a visual
`
`or audio alert to a driver, Decision at 7; and (3) VWGoA “‘fails to explain why a
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`person of ordinary skill in the art would have combined elements from specific
`
`references in the way the claimed invention does,’” Decision at 16 (emphasis in
`
`original). Because, as explained below, the Board misapprehended or overlooked
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`certain matters set forth in the Petition and in the Bevly Declaration in reaching the
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`foregoing conclusions, it should institute an inter partes review of claims 1, 2, and
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`6 of the ’927 patent.
`
`
`
`As the Board correctly noted, the question of obviousness is resolved in
`
`accordance with the Supreme Court’s Graham decision, Graham v. John Deere
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`Co., 383 U.S. 1 (1966), and KSR decision, KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398 (2007). Consistent with the Graham analysis, the obviousness analysis reduces
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`to those limitations upon which patentability was based during the original
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`prosecution. Graham, 383 U.S. at 34.1
`
`
`1
`
`“Here, the patentee obtained his patent only by accepting the limitations
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`imposed by the Examiner. The claims were carefully drafted to reflect these
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`limitations, and Cook Chemical is not now free to assert a broader view of
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`
`
`2
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`
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`
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`As described in the Petition, at pages 5 to 6, the Examiner cited, for
`
`example, U.S. Patent No. 5,521,579 (“Bernhard,” Ex. 1003), among “prior art
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`made of record and not relied upon” as being “considered pertinent to applicant’s
`
`disclosure,” and provided, in the context of this prior art, the following statement
`
`of reasons for allowance:
`
`The prior art cited herein fails to disclose a method of
`improving
`the perceived zone of coverage response of
`automotive radar comprising the steps of selecting a variable
`sustain time as a function of relative vehicle speed, and
`sustaining an alert signal for the variable sustain time if the alert
`signal was active for a threshold time.
`
`
`
`Thus, as explained on page 6 of the Petition:
`
`[T]he Examiner considered much of the claimed method of the
`’927 patent (i.e., determining the relative speed of the host and
`target vehicles, detecting target vehicle presence and producing
`an alert command, activating an alert signal in response to the
`alert command, at the end of the alert command, and
`determining whether the alert signal was active for a threshold
`time) to be disclosed in the prior art, including Bernhard, and
`identified the following limitations of claim 1 as the basis for
`
`
`Scoggin’s invention. The subject matter as a whole reduces, then, to the
`
`distinguishing features clearly incorporated into the claims.”
`
`3
`
`
`
`allowance of the ’927 patent: “selecting a variable sustain time
`as a function of relative vehicle speed;” and “if the alert signal
`was active for the threshold time, sustaining the alert signal for
`the variable sustain time.”
`
`and as explained on pages 8 to 9 of the Petition:
`
`Bernhard was one of the prior art documents describing a radar-
`based object detection system for a vehicle that the Examiner
`cited during the original prosecution of the ’927 patent, in
`which the Examiner considered several of the claim limitations
`of the ’927 patent to be disclosed by the prior art (i.e.,
`determining the relative speed of the host and target vehicles,
`detecting target vehicle presence and producing an alert
`command, activating an alert signal in response to the alert
`command, at the end of the alert command, and determining
`whether the alert signal was active for a threshold time).
`
`
`
`Consistent with the Graham analysis, and as set forth in the Petition, the
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`focus of the obviousness analysis should properly have been on the two limitations
`
`leading to allowance: (1) “selecting a variable sustain time as a function of relative
`
`vehicle speed;” and (2) “if the alert signal was active for the threshold time,
`
`sustaining the alert signal for the variable sustain time.”
`
`
`
`The Petition, for example, at page 10, sets forth that “the prior art considered
`
`by the Examiner during prosecution (i.e., Bernhard) describes the basic method
`
`claimed in the ’927 patent, and the additional prior art identified in this petition
`
`4
`
`
`
`(Pakett and Fujiki) describes the claim limitations that the Examiner identified as
`
`the basis for allowance of the ’927 patent.”
`
`
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`The Petition further explains, in detail, where, for example, Pakett and Fujiki
`
`disclose the limitations that were identified as the basis for allowance. Regarding
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`“selecting a variable sustain time as a function of relative vehicle speed,” the
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`Petition, at pages 18 to 19, discusses Pakett’s disclosure at, for example, col. 7, line
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`64 to col. 8, line 15, and Fujiki’s disclosure at, for example, col. 5, lines 56 to 57
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`and Figure 8. The Petition, at page 19, also cites, for example, paragraph 17 of the
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`supporting Declaration of Dr. David M. Bevly (“the Bevly Declaration,” Ex. 1002)
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`(“Fujiki therefore describes selecting a variable sustain time as a function of
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`relative vehicle speed.”). The claim chart spanning pages 23 to 37 provides
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`excerpts of Packett and Fujiki to explain where they disclose “selecting a variable
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`sustain time as a function of relative vehicle speed.” See, Petition at pages 26 to 27.
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`
`
`The Patent Owner’s Preliminary Response does not dispute the fact that
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`Pakett and Fujiki disclose “selecting a variable sustain time as a function of
`
`relative vehicle speed” and does not dispute the testimony set forth in the Bevly
`
`Declaration relating to this limitation. Furthermore, the Board’s Decision does not
`
`conclude that Pakett and Fujiki do not disclose this claim limitation and does not
`
`address the testimony set forth in the Bevly Declaration relating to this limitation.
`
`5
`
`
`
`
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`Regarding the limitation “if the alert signal was active for the threshold time,
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`sustaining the alert signal for the variable sustain time,” the Petition, at pages 20 to
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`21 discusses Pakett’s disclosure at, for example, col. 5, lines 11 to 31, col. 6, lines
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`46 to 55, col. 7, line 64 to col. 8, line 5, and Figure 3A, and Fujiki’s disclosure at,
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`for example, col. 5, lines 47 to 52, lines 56 to 57, and lines 59 to 67, and Figures 4
`
`and 8. The Petition, at page 21, also cites, for example, paragraph 18 of the Bevly
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`Declaration (“The purpose of this system, according to Fujiki, is to sustain the
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`braking system in an activated state for a predetermined distance after a danger
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`signal disappears…. Thus, Fujiki is improving the perceived zone of coverage of
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`the detection system (after the signal has been persistent for a threshold time).”
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`The claim chart spanning pages 23 to 37 provides excerpts of Packett and Fujiki to
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`explain where they disclose “if the alert signal was active for the threshold time,
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`sustaining the alert signal for the variable sustain time.” See, Petition at pages 33 to
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`35.
`
`
`
`The Patent Owner’s Preliminary Response does not dispute the fact that
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`Pakett and Fujiki disclose “if the alert signal was active for the threshold time,
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`sustaining the alert signal for the variable sustain time” and does not dispute the
`
`testimony set forth in the Bevly Declaration relating to this limitation.
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`Furthermore, the Board’s Decision does not conclude that Pakett and Fujiki do not
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`6
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`
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`disclose this claim limitation and does not address the testimony set forth in the
`
`Bevly Declaration relating to this limitation.
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`
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`Instead of focusing on the foregoing limitations that lead to allowance of
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`claim 1 of the ’927 patent, the Board addressed a single limitation: “at the end of
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`the alert command, determining whether the alert signal was active for a threshold
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`time.” Yet, this limitation was not identified by the Examiner as a basis for
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`allowance and is a limitation that the Patent Owner itself did not dispute was
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`disclosed by
`
`the prior art cited in
`
`the Petition. The Board apparently
`
`misapprehended or overlooked the foregoing in denying institution of an inter
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`partes review of the ’927 patent.
`
`
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`Additionally, the Board misconstrued the term “alert signal.” According to
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`the Decision, the Board “construe[d] ‘alert signal’ as a signal that provides a visual
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`or audio alert to a driver,” based on the sentence appearing at col. 3, lines 61 to 62
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`of the ’927 patent: “Without a sustaining action the visual or audio alert signal
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`will mimic the alert commands 42” (emphasis added). Decision at page 7.
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`However, as stated on page 8 of the Petition, “[a]s the ’927 patent is unexpired, its
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`claims should be given their broadest reasonable construction,” and as stated on
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`page 20 of the Petition, “[t]he ’927 patent describes the alert signal as a signal
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`between a microprocessor and another device,” citing col. 3, lines 26 to 27 of the
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`’927 patent: “An output port of the microprocessor carries an alert signal to the
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`7
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`
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`alert signal devices.” Thus, as stated on page 20 of the Petition, “an ‘information
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`signal[]’ described by Fujiki, such as the signal fed to the brake actuator 5,
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`constitutes ‘an alert signal’ as claimed in the ’927 patent.” Although the Patent
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`Owner’s Preliminary Response questioned, at page 10, whether “a person of
`
`ordinary skill in the art having had the benefit of reading the specification” would
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`have understood the “information signal[]” described by Fujiki to constitute “an
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`alert signal,” the Patent Owner proffered no alternative construction for the term
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`“alert signal.”
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`
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`The Board’s Decision did not address the ’927 patent’s disclosure above
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`relating to the alert signal being carried on an output port of a microprocessor to
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`alert signal devices, or the discussion contained in the Petition that a signal
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`between a microprocessor and another device, such as Fujiki’s “information
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`signal[],” constitutes “an alert signal.” Instead, the Board’s Decision appears to
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`have adopted from the ’927 patent’s specification a “visual or audio” component to
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`the “alert signal.”
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`
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`Although the Board is charged with construing the terms of the challenged
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`claims, only those terms that are in controversy need to be construed and only to
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`the extent necessary to resolve the controversy. See, e.g., Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, VWGoA’s Petition
`
`asserted that the “claims [of the ’927 patent] should be given their broadest
`
`8
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`
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`reasonable interpretation,” Petition at page 20, and the Patent Owner did not place
`
`any claim term, including “alert signal,” into controversy. Furthermore, the Board
`
`adopted a “visual or audio” requirement from the specification into the term “alert
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`signal.” Therefore, the Board apparently misapprehended or overlooked the
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`foregoing in adopting its construction of the term “alert signal” and in denying
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`institution of an inter partes review of the ’927 patent based on this construction.
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`
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`Finally, as for the Board’s determination that the Petition “fails to explain
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`why a person of ordinary skill in the art would have combined elements from
`
`specific references in the way the claimed invention does,” the Board cited
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed.
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`Cir. 2012). The ActiveVideo decision is readily distinguishable from the present
`
`case, in that the alleged motivation to combine the prior art in the ActiveVideo case
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`was merely the assertion that:
`
`The motivation to combine would be because you wanted to
`build something better. You wanted a system that was more
`efficient, cheaper, or you wanted a system that had more
`features, makes it more attractive to your customers, because by
`combining these two things you could do something new that
`hadn’t been able to do before.
`
`9
`
`
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`ActiveVideo, 694 F.3d at 1328. The Court found the foregoing statement to be
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`“generic and bear[] no relation to any specific combination of prior art elements.”
`
`Id.
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`
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`In the present proceeding, the Board’s Decision excerpted certain statements
`
`from the Petition and characterized those excerpts as “conclusory motivation
`
`contentions.” However, under the KSR obviousness analysis, it is not necessary for
`
`there to be a motivation to combine the prior art; all that is required is a reason to
`
`combine the prior art. As stated by the Supreme Court:
`
`Often, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–421 (2007) (emphasis added).
`
`The Petition describes, in detail, at, for example, pages 37 to 39, adequate
`
`reasoning for combining Bernhard, Pakett, and Fujiki in the manner set forth in the
`
`Petition to achieve the systems claimed in claims 1, 2, and 6, which the Board’s
`
`Decision fails to address. For example, the Board’s Decision apparently
`
`overlooked the fact that Bernhard (Ex. 1003), for example, includes “forward, rear,
`
`and blind spot radar devices used to assist in changing lanes,” as described on page
`
`10
`
`
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`9 of the Petition. The excerpt from page 39 of the Petition as reproduced on page
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`13 of the Board’s Decision omits the fact that Bernhard discloses a radar-based
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`object detection system for detecting objects all around the vehicle. The Board’s
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`Decision also does not address the comparisons made between the ’927 patent and
`
`the prior art. For example, the Petition describes on pages 37 to 38 that, “[j]ust as
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`described in the ’927 patent, Pakett and Fujiki each describe sustaining the alert,
`
`even when a hazardous condition is no longer sensed, to ensure that the hazardous
`
`condition has passed before the signal is removed,” and that “[i]n both the ’927
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`patent and in Fujiki, the alert condition is sustained as a function of the relative
`
`vehicle speed to address concerns of prematurely indicating that no objects are in
`
`the vicinity of the vehicle.”
`
`
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`Furthermore, the Board’s Decision, at page 15, draws an apparent distinction
`
`between Bernhard and Pakett, which, according to the Board, “pertain to an alert
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`system when obstacles are detected in blind spots,” and Fujiki, which, according to
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`the Board, “pertains to a braking system and does not mention or otherwise relate
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`to blind spots.” However, the challenged claims are not limited to producing alerts
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`when a target vehicle is in a blind spot. Instead, the only reference in the
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`challenged claims to a “blind spot” is in the preamble: “In a radar system wherein a
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`host vehicle uses radar to detect a target vehicle in a blind spot of the host vehicle
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`driver, a method of improving the perceived zone of coverage response of
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`11
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`
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`automotive radar comprising the steps of….”2 Additionally, as set forth on page 9
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`of the Petition, Bernhard includes “forward, rear, and blind spot radar devices used
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`to assist in changing lanes.” Thus, Bernhard is not limited to blind spot detection,
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`as alleged by the Board. And, as set forth, for example, on page 9 of the Petition,
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`“Fujiki describes a radar system for detecting objects in front of the vehicle,” like
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`Bernhard’s “distance radar device AR” for “detecting objects in front of the
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`vehicle” and “forward-directed radar device (VR) for monitoring the space 22 in
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`front in the target lane 9,” as described on page 10 of the Petition. The Board’s
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`Decision does not address any of the foregoing, and it is apparent that the Board
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`misapprehended or overlooked the foregoing in deciding to not institute an inter
`
`partes review.
`
`
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`2
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`Just last week, the Patent Owner’s own statements in the related litigation
`
`reflect its understanding that the ’927 patent is not limited to blind spot
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`applications, but rather relates to “vehicle sensor systems” generally, so that
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`Bernhard, Pakett, and Fujiki are each within the relevant field of the challenged
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`claims. See, Plaintiff Signal IP, Inc.’s Second Amended Responses to Defendants’
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`First Set of Common Interrogatories (Nos. 1-8), Ex. 1007, at 11 (“The relevant
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`field of art for [the ’927] patent is vehicle sensor systems.”).
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`12
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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 an inter partes review of claims 1, 2, and 6 of the ’927 patent for the
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`reasons set forth in the Petition.
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`Dated: September 24, 2015
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`/Clifford A. Ulrich/
`Clifford A. Ulrich, Reg. No. 42,194
`Michael J. Lennon, Reg. No. 26,562
`Kenyon & Kenyon LLP
`One Broadway
`New York, New York 10004
`Tel.: 212.425.7200
`Fax. 212.425.5288
`
`13
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`CERTIFICATE OF SERVICE
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`The foregoing Petitioner’s Request for Rehearing Under 37 C.F.R. §§
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`
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`42.71(c) and (d) was served on September 24, 2015, via electronic mail upon the
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`following:
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`Tarek N. Fahmi
`Holly J. Atkinson
`Ascenda Law Group, PC
`333 W. San Carlos St.
`Suite 200
`San Jose, CA 95110
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`patents@ascendalaw.com
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`/Clifford A. Ulrich/
`Clifford A. Ulrich, Reg. No. 42,194
`Michael J. Lennon, Reg. No. 26,562
`Kenyon & Kenyon LLP
`One Broadway
`New York, New York 10004
`Tel.: 212.425.7200
`Fax. 212.425.5288
`
`14
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