Trials@uspto.gov
`571-272-7822
`
`Paper 7
`
`Entered: March 23, 2016
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01941
`Patent 8,065,156 B2
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`
`Entered: March 23, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01941
`Patent 8,065,156 B2
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01941
`Patent 8,065,156 B2
`
`
`I. INTRODUCTION
`
`Volkswagen Group of America, Inc. (hereafter “Volkswagen” or
`
`“Petitioner”) filed a Petition (“Pet.”) requesting an inter partes review of
`
`claims 10, 11, 15, 18, and 20–24 of U.S. Patent No. 8,065,156 B2 (“the ’156
`
`patent,” Ex. 1001). Paper 2. West View Research, LLC (hereafter “West
`
`View” or “Patent Owner”) timely filed a Preliminary Response (“Prelim.
`
`Resp.”), and provided notice of its statutory disclaimer of claims 10, 18, 20,
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`21, 23, and 24. Paper 5, 21; Ex. 2009. “No inter partes review will be
`
`instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Thus, only
`
`claims 11, 15, and 22 remain for our consideration.
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Section 314(a) of Title 35
`
`of the United States Code provides that an inter partes review may not be
`
`instituted unless the information presented in the Petition shows “there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” Taking into account West
`
`View’s Preliminary Response, and for the reasons that follow, we conclude
`
`that the information presented in the Petition establishes that there is a
`
`reasonable likelihood that Volkswagen will prevail in challenging claims 15
`
`and 22 as unpatentable under 35 U.S.C. § 103(a) over Hancock and Lind,
`
`and claim 11 as unpatentable under 35 U.S.C. § 103(a) over Hancock, Lind,
`
`and Boyer. Pursuant to 35 U.S.C. § 314(a), we hereby authorize an inter
`
`partes review to be instituted as to claims 11, 15, and 22 of the ’156 patent.
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`IPR2015-01941
`Patent 8,065,156 B2
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`II. BACKGROUND
`
`A.
`
`Related Matters
`
`According to the parties, the ’156 patent is involved in the following
`
`district court cases: West View Research, LLC v. Audi AG, No. 3:14-cv-
`
`02668-BAS-JLB (S.D. Cal.); West View Research, LLC v. Bayerische
`
`Motoren Werke, AG, et al., No. 14-cv-2670-CAB-WVG (S.D. Cal.); and
`
`West View Research, LLC v. Nissan Motor Co., 14-cv-2677-CAB-WVG
`
`(S.D. Cal.). Pet. 1; Paper 4, 2.
`
`In addition to this Petition, Volkswagen filed other petitions
`
`challenging the patentability of a certain subset of claims in the following
`
`patents owned by West View: (1) U.S. Patent No. 8,719,037 B2 (Case
`
`IPR2016-00123); (2) U.S. Patent No. 8,706,504 B2 (Case IPR2016-00124);
`
`(3) U.S. Patent No. 8,290,778 B2 (Case IPR2016-00125); (4) U.S. Patent
`
`No. 8,682,673 B2 (Case IPR2016-00137); (5) U.S. Patent No. 8,719,038 B1
`
`(Case IPR2016-00146); (6) U.S. Patent No. 8,296,146 B2 (Case IPR2016-
`
`00156); and (7) U.S. Patent No. 8,781,839 B1 (Case IPR2016-00177).
`
`Prelim. Resp. 1.
`
`
`
`
`
`B.
`
`The’156 Patent
`
`The ’156 patent, titled “Adaptive Information Presentation Apparatus
`
`and Methods,” issued November 22, 2011, from U.S. Patent Application No.
`
`12/711,857, filed on February 24, 2010. Ex. 1001, at [54], [45], [21], [22].
`
`The ’156 patent is directed to an information system for use in
`
`personnel transport devices that can include elevator cars, trams, shuttles, or
`
`moving sidewalks. Ex. 1001, 1:34–37, 1:39–44, 5:30–34. System 100
`
`includes input device 102, speech recognition (“SR”) module 104, and
`
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`IPR2015-01941
`Patent 8,065,156 B2
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`central processor 106 with associated components. Id. at 5:41–49, Fig. 1.
`
`Input device 102 can be a touch sensitive keypad with a display screen. Id.
`
`at 5:52–53. Input device 102 also can include a variety of different
`
`functional keys that allow the user to initiate queries of databases either
`
`manually by a keypad, display device, or audibly through a speech
`
`recognition module. Id. at 5:55–60. The keypads and displays are placed to
`
`facilitate easy access and viewing by users. Id. at 6:47–51.
`
`The system of the ’156 patent also includes remotely located central
`
`server 170 that connects to the transport devices via a local area network.
`
`Ex. 1001, 7:39–42, Fig. 3. In an alternative embodiment, data may be
`
`transferred from remote server 170 by wireless interface 310. Id. at 7:51–55.
`
`In another embodiment, system 100 can include data terminal 702, which
`
`allows a user to plug in personal electronic device (“PED”) 704 into the
`
`system to obtain a download of information. Id. at 11:9–16. This
`
`embodiment is depicted in Figure 7, reproduced below:
`
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`IPR2015-01941
`Patent 8,065,156 B2
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`
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`Figure 7 is a view of an embodiment of the personal electronic device
`data download terminal of the invention. Ex. 1001, 4:48–49, 11:9–16.
`
`Illustrative Claims
`
`C.
`
` Of the challenged claims, claims 11 and 15 depend directly from
`
`independent claim 10. Claim 22 depends indirectly from claim 10. Claims
`
`10, 11, 15, and 22 are reproduced below:
`
`10. Computer readable apparatus comprising a storage medium, said
`storage medium comprising at least one computer program with a
`plurality of instructions, the storage medium being part of a computerized
`information system disposed on or within a transport apparatus
`configured to transport at least one person from one location to another,
`said at least one program being configured to:
`
`receive an input from a user of the transport apparatus, the input
`relating to a desired function;
`
`cause access of a remote server via an associated wireless
`interface to access information relating to the desired function;
`
`
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`5
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`IPR2015-01941
`Patent 8,065,156 B2
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`receive accessed information via the wireless interface; and
`
`implement the desired function using at least a portion of the
`received information;
`
`wherein said at least one program is further configured to:
`
`establish an ad hoc communication link with a portable
`computerized device of a user of the transport apparatus;
`and
`
`download at least a portion of the received information to
`the portable computerized device via the communication
`link.
`
`11. The apparatus of claim 10, wherein said download of said at least a
`portion of the received information to the portable computerized device
`via the communication link is initiated by software resident on the
`portable device.
`
`15. The apparatus of claim 10, wherein:
`
`said remote server is in communication with a database of
`business entities, said database being searchable at least by a
`name of a business entity; and
`
`said input comprises a digitized representation of a speech input,
`the speech input being received via a microphone located within
`said transport apparatus, the speech comprising said name of said
`business entity.
`
`
`22. The apparatus of claim 21, wherein said data stored on a remote
`server relating specifically to that user is based at least in part on one or
`more previously supplied user-selected configuration parameters.
`
`Ex. 1001, 25:37–63, 26:9–16, 26:43–46.
`
`
`
`D.
`
`Prior Art Relied Upon
`
`Volkswagen relies upon the following prior art references:
`
`
`
`6
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`IPR2015-01941
`Patent 8,065,156 B2
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`
`Identifier
`
`Patent
`Reference
`Hancock U.S. Patent 6,202,023 B1
`
`Boyer
`
`U.S. Patent 6,401,112 B1
`
`Filing Date (Issue
`Date)
`February 25, 1999
`(March 13, 2001)
`January 29, 1997
`(June 4, 2002)
`
`Exhibit No.
`
`1003
`
`1005
`
`
`
`Non-
`Patent
`Reference
`Lind
`
`
`
`Identifier
`
`Publication Date Exhibit No.
`(Pages)
`
`The Network Vehicle—
`A Glimpse Into the
`Future of Mobile Multi-
`Media, IEEE Pub.
`0-7803-5086-3/98
`
`October 31, 1998
`
`1004 (I21-1–
`I21-8)
`
`E.
`
`Alleged Grounds of Unpatentability
`
`Volkswagen challenges claims 11, 15, and 22 of the ’156 patent based
`
`on the alleged grounds of unpatentability set forth in the table below. Pet. 7.
`
`Reference(s)
`Hancock and Lind
`
`Basis
`§ 103(a)
`
`Claims Challenged
`15 and 22
`
`Hancock, Lind, and Boyer § 103(a)
`
`11
`
`
`
`III. ANALYSIS
`
`A. Claim Interpretation
`
`1. Alleged Deficient Petition Under 37 C.F.R. § 42.104(b)(3)
`
`West View alleges that Volkswagen does not meet the regulatory
`
`requirements for its Petition because it fails to provide proposed
`
`constructions for many of the claim terms of the ’156 patent at issue and the
`
`Petition is therefore fatally deficient. Prelim. Resp. 22–31 (citing 37 C.F.R.
`
`§ 42.104(b)(3)). West View contends that Volkswagen’s failures are
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`IPR2015-01941
`Patent 8,065,156 B2
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`contrary to the requirement to “identify … [h]ow the challenged claim is to
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`be construed” under § 42.104(b)(3), arguing that Volkswagen has inferred
`
`certain meanings for some claim terms, but has not explained why those
`
`inferences are appropriate. Id. at 22–28. West View identifies one instance
`
`where there is no analysis provided for claim 10’s term directed to
`
`“functions.”1 Id. at 29–30. For this term, West View alleges that it is “at
`
`least facially plausible” that the term is a means-plus-function term falling
`
`under 35 U.S.C. 112, ¶ 6,2 and Volkswagen was required to address the
`
`proposed construction of the term in greater detail in the Petition. Id. at 30–
`
`31.
`
`Rule 42.104(b)(3) requires a petition to set forth “[h]ow the
`
`challenged claim is to be construed,” which may include a “simple statement
`
`that the claim terms are to be given their broadest reasonable interpretation”
`
`as instructed by the Office Patent Trial Practice Guide. 37 C.F.R.
`
`§ 42.104(b)(3); 77 Fed. Reg. 157 48,756, 48,764 (Aug. 14, 2012). In the
`
`Petition, Volkswagen advocates a more specific construction for claim 10’s
`
`term “ad hoc communication link” for the purposes of this proceeding, and
`
`
`1 Although claim 10, as well as claims 20 and 21, are no longer under
`consideration, with the dependency of the challenged claims to the
`unchallenged ones, to the extent necessary, we will address issues raised
`specific to the unchallenged claims if they implicate an assessment of the
`challenged claims. This would occur, for instance, if an understanding of
`the claim terms of the unchallenged claims is relevant to an understanding of
`the challenged claims.
`2 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C.
`§ 112(f). Because the ’156 patent has a filing date before September 16,
`2012 (the effective date of AIA § 4(c)), we will henceforth refer to the pre-
`AIA version of 35 U.S.C. § 112.
`
`8
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`Patent 8,065,156 B2
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`states that all other terms are to be given their broadest reasonable
`
`construction in view of the specification.
`
`Although claim 10 has been disclaimed by West View, to the extent it
`
`could be relevant to any issues relating to the remaining claims, we address
`
`here the issue of any potential means-plus-function term used claim 10.
`
`Under Rule 42.104(b)(3), if a term is a means-plus-function limitation, the
`
`Petition must also identify the specific portions of the specification that
`
`describe the structure, material, or acts corresponding to the claimed
`
`function. Here, West View asserts that portions of claim 10 below could be
`
`interpreted as means-plus-function limitations:
`
`Computer readable apparatus comprising
`. . . at least one computer program . . . , said at
`least one program being configured to:
`receive an input from a user of the transport
`apparatus, the input relating to a desired
`function; . . .
`and
`implement the desired function using at least
`a portion of the received information;
`
`Prelim. Resp. 29–30 (citing Ex. 1001, 25:37–45, 51–52).
`
`West View contends that the words “means for” do not have to be
`
`used for a claim term to invoke 35 U.S.C. § 112 ¶ 6, and it is “at least [a]
`
`facially plausible interpretation” that this is the case here “since what is
`
`recited is a computer program configured to perform at least two functions
`
`(i.e., receive input relating to a desired function, and implement the desired
`
`function using the information) with at least arguably no recitation of a
`
`particular structure to accomplish any portion of either step.” Prelim. Resp.
`
`28–30.
`
`
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`9
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`IPR2015-01941
`Patent 8,065,156 B2
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`Claim 10 does not employ the word “means,” so there is a
`
`presumption that § 112 ¶ 6 does not apply. Personalized Media Commc’n,
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`LLC v. Int’l Trade Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998) (“[W]hen an
`
`element of a claim does not use the term “means,” treatment as a means-
`
`plus-function claim element is generally not appropriate.”). If the claim
`
`discloses sufficient structure to perform the claimed function, then a person
`
`of ordinary skill in the art would recognize that 35 U.S.C. § 112 ¶ 6 is not
`
`triggered. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir.
`
`2003).
`
`Here, the only basis that West View proffers for overcoming the
`
`presumption that the claim does not include a mean-plus-function claim
`
`element is a conclusory statement that the claim recites “function” without
`
`reciting sufficient structure for performing that function. West View’s
`
`interpretation is misguided. Although the term “function” is recited in claim
`
`10, as employed it is not a “means for” or a “step for” performing a certain
`
`function, rather it is directed to the identification of the desired “function”
`
`that the structure of the computer readable apparatus within the claim will
`
`receive and implement. Thus, based upon this record, the rebuttal evidence
`
`that West View identifies is insufficient to overcome the presumption that
`
`the term “function” recited in claim 10 does not invoke § 112 ¶ 6.
`
`Therefore, we decline to dismiss the Petition on this basis.
`
`2. Remaining Claim Terms or Phrases
`
`West View alleges that it is evident that Volkswagen has inferred
`
`certain meaning regarding some claim terms at issue, without explaining the
`
`basis for those inferences, and/or has assumed “broadest reasonable
`
`constructions” for some claims that are unreasonable. Prelim. Resp. 22–28,
`
`
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`10
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`IPR2015-01941
`Patent 8,065,156 B2
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`32–40. Many of the issues relating to claim terms that West View raises are
`
`not relevant to the challenged claims still under consideration, and it is not
`
`necessary to address them here. See, e.g., Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or
`
`phrases that are in controversy need to be construed, and only to the extent
`
`necessary to resolve the controversy). In other instances, West View
`
`characterizes some issues as being related to claim construction, but they are
`
`predominantly directed to the merits of the obviousness challenges, and we
`
`will address them in the respective obviousness analyses below.
`
`
`
`As to all the remaining claims or phrases recited in claims 11, 15, and
`
`22, at this stage of the proceeding, they are given their ordinary and
`
`customary meaning, as would be understood by one with ordinary skill in
`
`the art, and need not be construed explicitly at this time.
`
`
`
`B. Alleged Obviousness of Claims 15 and 22 Over Hancock and Lind
`
` Volkswagen contends that claims 15 and 22 would have been obvious
`
`over Hancock and Lind. Pet. 21–23, 27–32, 44–47, 49–50. To support its
`
`contentions, Volkswagen provides explanations as to how the prior art
`
`discloses each claim limitation. Id. Volkswagen also relies upon the
`
`Declaration of Scott Andrews (Ex. 1002) to support its positions. West
`
`View counters that the prior art does not render the claims obvious because
`
`Volkswagen has employed unreasonable claim constructions and
`
`impermissible hindsight. Prelim. Resp. 27–28, 32–44.
`
`
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`At this stage of the proceedings, we are persuaded by Volkswagen’s
`
`explanation and evidence in support of the obviousness grounds asserted
`
`
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`11
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`IPR2015-01941
`Patent 8,065,156 B2
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`against claims 15 and 22. We begin our discussion with a brief summary of
`
`Hancock and Lind, and then address the arguments presented by the parties.
`
`1. Hancock (Ex. 1003)
`
`Hancock generally discloses a “system and method for automatically
`
`providing services over a computer network, such as the Internet, for users
`
`in a mobile environment.” Ex. 1003, Abstract. Hancock discloses the use of
`
`portable computing device 1302 that can receive input from users and can
`
`include a speech interface. Id. at 25:29–41, 25:42–46, 25:47–55. The
`
`system includes a database. Id. at Abstract. Data storage may include
`
`storage of user preferences. Id. at 9:55–58. Querying of the database can be
`
`directed to category selections, one of which includes businesses. Id. at
`
`28:58–65. Figure 13 of Hancock depicts that information from database
`
`1316 is accessible by the users of vehicle 1304 via cellular base station
`
`1306. Figure 13 of Hancock is reproduced below.
`
`Figure 13 of Hancock presents an operational environment of an
`embodiment of the invention. Ex. 1003, 5:16–18, 23:42–44.
`12
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`2. Lind (Ex. 1004)
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`
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`Lind discloses a vehicle containing hardware and software that allows
`
`a prospective passenger to use an “off-board network” to wirelessly connect
`
`to the Internet and also allows the passenger to retrieve wireless information
`
`from other sources such as DirecTV. Ex. 1004, p. I21-2. Lind describes the
`
`use of an onboard system, which includes a touch screen liquid crystal display
`
`(LCD) that serves as a user interface, and also provides for a speech
`
`recognition and text-to-speech system to allow access to features through
`
`voice commands. Id. at p. I21-2–I21-3. The system also allows access to
`
`internet service providers and can be used for requests to listen to e-mail
`
`messages and locate restaurants and hotels, for instance. Id. at p. I21-2, I2-7.
`
`The system of Lind is reproduced below in Figure 3:
`
`Figure 3 of Lind depicts the off-board system architecture. Ex. 1004, I2-1.
`
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`3. Analysis
`
`Volkswagen asserts that the collective teachings of Hancock and Lind
`
`describe all the elements of claims 15 and 22. See Pet.21–23, 27–28, 44–47,
`
`49–50.
`
`Volkswagen contends that a person of ordinary skill in the art would
`
`have found it obvious to combine Hancock and Lind because of the benefits
`
`for doing so, such as to provide “‘more productivity tools, convenience,
`
`safety, and entertainment to millions of commuters who spend hours each
`
`day cruising the roads or stuck in traffic,’ (Ex. 1004, p. I21-1), and to create
`
`‘a flexible system and method that can be used to automatically provide
`
`mobile users with relevant information customized for their current
`
`location.’ (Ex. 1003, 2:54-56).” Pet. 30
`
`West View raises an assertion, in the context of claim construction,
`
`that Volkswagen infers a construction of “digitized representation of a
`
`speech input” without regard as to whether that term includes a digital
`
`representation of speech that has not been recognized and/or includes a
`
`digital representation that has also been run through a speech recognition
`
`algorithm. Prelim Resp. 27. West View argues that “‘digitization’ is not
`
`synonymous with ‘recognition,’” and that Volkswagen appears to infer that
`
`these terms are synonyms by its reliance on the voice recognition technology
`
`of Hancock and Lind. Id. at 27–28 (citing Pet. 14–15). By these allegations,
`
`West View is perhaps suggesting that Volkswagen is relying upon the prior
`
`art teachings related to “recognition,” and the evidence presented on
`
`digitization is insufficient and/or that Volkswagen is advocating that, if there
`
`is “digitization,” there must be “recognition.”
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`West View’s arguments on this issue are not persuasive. Claim 15
`
`refers to “digitized representation of a speech input.” Ex. 1001, 26:13–14.
`
`Volkswagen specifically addresses the issue of digitization in the Petition.
`
`That is, Volkswagen cites to certain portions of the Andrews Declaration to
`
`support its view that one of ordinary skill in the art would have understood
`
`that “when using software to process speech, the speech is digitized in order
`
`to be processed.” Pet. 23 (citing Ex. 1002 ¶ 26; Ex. 1004, p. I21–3; Ex.
`
`1008, 5:17–30). Volkswagen’s references to “recognition” are of little, if
`
`any, apparent moment to the issue of whether Volkswagen provides
`
`adequate evidence regarding “digitization.” The Petition does not suggest
`
`that “recognition” is conflated with “digitization.” Additionally,
`
`Volkswagen’s acknowledgement of the prior art teachings of “recognition”
`
`in its Petition are not relevant to the issue of “digitization” because there is
`
`no prohibition of consideration of prior art that also discloses other features.
`
`See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
`
`West View also alleges that the Petition relies on impermissible
`
`hindsight in that Volkswagen disassembles the invention into its constituents
`
`and then reconstructs it from isolated teaching by using “reverse
`
`engineering.” Prelim Resp. 40–41. West View argues that, for instance,
`
`Volkswagen infers that “accessed information” can include “the type of
`
`information that just happens to be handy” in the Lind reference such as e-
`
`mail and that the “wireless interface” can include Lind’s satellites. Id. at 41.
`
`West View also alleges that the Petition fails to consider the claims as a
`
`whole, and merely catalogs parts of the claims, with indexing, but that the
`
`’156 patent teachings only can be used to teach how the elements should be
`
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`combined to arrive at the requisite functionality, and Volkswagen has failed
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`to combine in this manner. Id. at 43.
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`Any judgment on obviousness is in a sense necessarily a
`
`reconstruction based on hindsight reasoning, but so long as it takes into
`
`account only knowledge which was within the level of ordinary skill in the
`
`art at the time the claimed invention was made, and does not include
`
`knowledge gleaned only from applicant’s disclosure, such a reconstruction is
`
`proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
`
`Based on the present record, we are not persuaded by West View’s
`
`arguments regarding alleged hindsight. Volkswagen has provided adequate
`
`support for the combination of the references. In KSR, the Supreme Court
`
`stated “[t]he combination of familiar elements according to known methods
`
`is likely to be obvious when it does no more than yield predictable results.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). There is no specific
`
`evidence provided that the proposed modifications would render the prior art
`
`unsatisfactory for the intended use. The features disclosed in the respective
`
`prior art are directed to achieving similar goals, and Volkswagen has
`
`provided sufficient evidence suggesting that a person of ordinary skill would
`
`have been motivated to use the teachings of each reference in combination,
`
`and has demonstrated articulated reasoning with rational underpinning in
`
`support of its obviousness challenges. See Pet. 28–33, 54–55.
`
`Based on the record before us, we are persuaded that Volkswagen has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`claims 15 and 22 are rendered obvious by Hancock and Lind.
`
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`16
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`IPR2015-01941
`Patent 8,065,156 B2
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`C. Alleged Obviousness of Claim 11 Over Hancock, Lind, and Boyer
`
`Volkswagen contends that claim 11 would have been obvious over
`
`Hancock, Lind, and Boyer. Pet. 51–56. To support its contentions,
`
`Volkswagen provides explanations as to how the proffered combination
`
`teaches the subject matter in each challenged claim. Id. Volkswagen also
`
`relies upon the Andrews Declaration (Ex. 1002) to support its positions.
`
`West View asserts that, in light of Volkswagen’s implied claim construction,
`
`Boyer fails to teach all the elements of claim 11. Prelim. Resp. 33–34.
`
`At this stage of the proceedings, we are persuaded by Volkswagen’s
`
`explanation and evidence in support of the obviousness grounds asserted
`
`against claim 11. We begin our discussion with a brief summary of Boyer
`
`and then address the arguments presented by the parties.
`
`1. Boyer (Ex. 1005)
`
`Boyer discloses the use of portable computer system 140 that
`
`communicates and synchronizes information with personal computer system
`
`110. Ex. 1005, Abstract, Fig. 1A. Figure 1A of Boyer is reproduced below:
`
`
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`17
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`IPR2015-01941
`Patent 8,065,156 B2
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`Figure 1A depicts a portable computer system and a
`personal computer system equipped with a cradle for
`synchronizing with the portable computer system. Ex. 1005,
`2:17–19, 2:50–52.
`
`
`
`
`
`Boyer discloses the use of portable palmtop computer 130 that
`
`communicates and synchronizes information with portable computer system
`
`110. Ex. 1005, Abstract, 2:50–52. Figure 1B of Boyer is reproduced below.
`
`
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`18
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`IPR2015-01941
`Patent 8,065,156 B2
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`
`
`
`Figure 1B is a block diagram depicting the software
`architecture for synchronizing information on a portable
`computer system with information on a desktop personal
`computer system. Ex. 1005, 2:20–23, 3:18–21.
`
`
`
`As depicted in Figure 1B, portable palmtop computer 160 can by
`
`synchronized with personal computer 150 by the activation of
`
`synchronization program (Hot Sync) 161 that is activated by button 185 on
`
`cradle 180. Ex. 1005, 2:62–64, 3:1–4. When Hot Sync program 161 of the
`
`palmtop computer 160 is activated, it communicates with the peer
`
`synchronization program, Hot Sync manager 170, in the personal computer.
`
`Id. at 3:5–7. These two programs synchronize the information on the two
`
`computer systems. Id. at 2:59–61.
`
`2. Analysis
`
`Volkswagen contends that the Hot Sync program 161, resident on
`
`portable computer 160 which is equated to a personal digital assistant
`
`(PDA), “initiates” the download of information. Pet. 53. In further support,
`
`
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`19
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`IPR2015-01941
`Patent 8,065,156 B2
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`Mr. Andrews states that, “[o]nce the button is pressed, indicating that the
`
`synchronization should begin, the HotSync software resident on the PDA
`
`initiates the synchronization process, which includes a download of
`
`information to the PDA.” Ex. 1002 ¶ 48 (citing Boyer, 3:2–5, Fig. 1B).
`
`West View argues that Volkswagen has inferred that “‘initiated by
`
`software . . .’ can be equated to ‘in response to a mechanical push on a
`
`cradle.’” Prelim. Resp. 33. West View asserts that the ’156 patent
`
`discloses: “(i) automatic initiation, (ii) manual initiation via an input device
`
`on the system, or (iii) manual initiation via the PED software.” Id. at 34
`
`(citing Ex. 1001, 11:23–28). West View argues that under the language of
`
`claim 11, and even under broadest reasonable interpretation, manual
`
`initiation by some other device is excluded, and Volkswagen has
`
`impermissibly inferred that there is manual initiation by some other device
`
`in Boyer, i.e. the button on the cradle. Id. Therefore, West View asserts that
`
`“Boyer neither discloses nor suggests ‘initiated by software resident on the
`
`portable device’ as recited in Claim 10.” Id.
`
`Based on the present record, and recognizing that West View has not
`
`yet had the opportunity to provide new testimonial evidence (37 C.F.R.
`
`§ 42.107(c)), we are not persuaded by West View’s arguments. It is clear
`
`from the Petition that Volkswagen is relying on Hot Sync program 161 itself
`
`for the teaching of initiation of the download of the information, not, per se,
`
`the button on the cradle. Additionally, claim 11 merely states that the
`
`“download” “is initiated by software resident on the portable device.”
`
`Ex. 1001, 25:63. West View’s contention that the “initiation” has to occur
`
`only in certain ways implicates impermissible importation of limitations into
`
`
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`20
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`IPR2015-01941
`Patent 8,065,156 B2
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`the claim. See E-Pass Techs., Inc. v. 3Corn Corp., 343 F.3d 1364, 1369
`
`(Fed. Cir. 2003); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Based on the record before us, we are persuaded that Volkswagen has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that claim
`
`11 is rendered obvious by Hancock, Lind, and Boyer.
`
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes a reasonable likelihood that Volkswagen
`
`would prevail in showing that claims 11, 15, and 22 of the ’156 patent are
`
`unpatentable. At this stage of the proceeding, we have not made a final
`
`determination with respect to the patentability of the challenged claims.
`
`
`
`
`
`
`
`In consideration of the foregoing, it is
`
`V. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 15 and 22 of the ’156 patent as
`
`unpatentable under 35 U.S.C. § 103(a) over the combination of Hancock and
`
`Lind, and claim 11 is unpatentable under 35 U.S.C. § 103(a) over the
`
`combination of Hancock, Lind, and Boyer;
`
`FURTHER ORDERED that no other grounds are authorized for this
`
`inter partes review other than those specifically identified above; and
`
`
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`
`will commence on the entry date of this decision.
`
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`21
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`22
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`IPR2015-01941
`Patent 8,065,156 B2
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`For PETITIONER:
`
`Michael J. Lennon
`Clifford A. Ulrich
`Michelle Carniaux
`KENYON & KENYON LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`ptab@kenyon.com
`
`
`
`For PATENT OWNER:
`
`Peter J. Gutierrez, III
`GAZDZINSKI & ASSOCIATES, PC
`docket@gazpat.com
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