Trials@uspto.gov
`571-272-7822
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` Paper 8
` Date: May 13, 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 IPR2016-00123
`Patent 8,719,037 B2
`____________
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, 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 8
` Date: May 13, 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 IPR2016-00123
`Patent 8,719,037 B2
`____________
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2016-00123
`Patent 8,719,037 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Volkswagen Group of America, Inc., filed a Petition
`requesting an inter partes review of claims 1, 22, 37, 42, 48, 71–73, 75, and
`77 of U.S. Patent No. 8,719,037 B2 (Ex. 1001, “the ’037 patent”). Paper 2
`(“Pet.”). Patent Owner, West View Research, LLC, filed a Preliminary
`Response pursuant to 35 U.S.C. § 313. Paper 6 (“Prelim. Resp.”). The
`Preliminary Response provided notice of statutory disclaimer of claims 1,
`37, 48, and 71–73. Prelim. Resp. 21; Ex. 2007. “No inter partes review will
`be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Claims
`22, 42, 75, and 77 (“the challenged claims”), therefore, are the only claims
`that require our consideration. Prelim. Resp. 21.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`Petition and the Preliminary Response, and for the reasons explained below,
`we determine that the information presented shows a reasonable likelihood
`that Petitioner would prevail as to challenged claims 22, 42, 75, and 77. See
`35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of
`these challenged claims.
`
`Related Matters
`
`A.
`The ’037 patent is involved in, or may be affected by, the following
`district court cases: (1) West View Research, LLC v. Audi AG, No. 3:14-cv-
`02668-BAS-JLB (S.D. Cal.); (2) West View Research, LLC v. Bayerische
`Motoren Werk AG, No. 3:14-cv-02670 (S.D. Cal.); (3) West View Research,
`LLC v. Hyundai Motor Co., No. 3:14-cv-02675 (S.D. Cal.); (4) West View
`Research, LLC v. Nissan Motor Co., No. 3:14-cv-02677 (S.D. Cal.); and
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`(5) West View Research, LLC v. Tesla Motor, Inc., No. 3:14-cv-02679 (S.D.
`Cal.). Pet. 1; Paper 4, 2.
`In addition, Volkswagen filed other petitions challenging the
`patentability of certain subsets of claims in the following patents owned by
`Patent Owner: (1) U.S. Patent No. 8,065,156 B2 (Case IPR2015-01941); (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). Pet. 2.
`
`B.
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`
`The Asserted Grounds
`
`References
`
`Basis
`
`Challenged Claims
`
`Ito (Ex. 1003)1 and Lind (Ex. 1004)2
`
`§ 103(a)3
`
`22, 42, and 77
`
`Ito, Lind, and Hsieh (Ex. 1006)4
`
`§ 103(a)
`
`75
`
`
`1 U.S. Patent No. 6,249,740, issued June 19, 2001, filed Jan. 21, 1999.
`2 R. Lind et al., The Network Vehicle—A Glimpse Into the Future of Mobile
`Multi-Media, 17th DASC, The AIAA/IEEE/SAE Digital Avionics Systems
`Conference, Proc., Vol. II, IEEE Pub. 0-7803-5086-3/98, Oct. 31–Nov. 7,
`1998.
`3 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`from which the ’037 patent issued was filed before that date, our citations to
`Title 35 are to its pre-AIA version.
`4 U.S. Patent No. 5,574,443, issued Nov. 12, 1996, filed June 22, 1994.
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`
`The ’037 Patent
`
`C.
`The ’037 patent, titled “Transport Apparatus with Computerized
`Information and Display Apparatus,” issued May 6, 2014, from U.S. Patent
`Application No. 13/737,853, filed on January 9, 2013. Ex. 1001 at [21],
`[22], [45], [54]. The ’037 patent has an extensive chain of continuations and
`at least one divisional that ultimately claims the benefit of U.S. Patent
`Application No. 09/330,101, filed on June 10, 1999—now U.S. Patent No.
`6,615,175 B1. Id. at [60], 1:5–2:24.
`The ’037 patent generally relates to a personnel transport apparatus
`and, in particular, to elevators or other types of personnel transport devices
`that incorporate various information technologies. Ex. 1001, 2:29–36, 6:44–
`65. According to the ’037 patent, one problem associated with using these
`devices relates to determining the location of a person, firm, or store within a
`building when unfamiliar. Id. at 2:56–57. For instance, conventional
`building directories require a user to locate manually or visually the name of
`the desired person, firm, or store, and often do not provide precise location
`information other than a floor or suite number. Id. at 2:58–64. The ’037
`patent discloses that recent advancements in data networking, thin or flat
`panel displays, personal electronics, and speech recognition/compression
`algorithms and corresponding processing have enhanced the ability of a user
`to address the aforementioned problem. Id. at 3:63–67.
`Figure 1 of the ’037 patent, reproduced below, illustrates a block
`diagram of one embodiment of an information and control system that is
`used, e.g., within an elevator car. Id. at 5:34–36, 6:44–65.
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`As shown in Figure 1, system 100 includes, among other things, input
`device 102, speech recognition (“SR”) module 104, central processor 106,
`non-volatile storage device 108 containing a database, audio amplifier and
`speaker module 111, speech synthesis module 112, micro-controller 123,
`and display device 113. Ex. 1001, 6:44–65. SR module 104 further includes
`microphone 118, analog-to-digital converter (“ADC”) 141, and an algorithm
`run on digital signal processor (“DSP”) 125 having an associated SR module
`random access memory (“RAM”) 127. Id. at 6:66–7:12.
`The ’037 patent discloses that microphone 118 generates signals that
`are digitized by ADC 141, which, in turn, are processed using the SR
`algorithm and DSP 125 to produce digital representations of the user’s
`speech. Ex. 1001, 7:30–34. DSP 125 uses a speech library or dictionary
`stored within SR module RAM 127 to match phenome strings resulting from
`linear predictive coding analysis with known words. Id. at 7:34–37. Once a
`match is identified, central processor 106 and micro-controller 123
`implement the desired functionality, such as retrieving one or more data files
`from non-volatile storage device 108 for display on display device 113. Id.
`at 7:37–40.
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`
`The Challenged Claims
`
`D.
`Only claims 22, 42, 75, and 77 remain for our consideration. Pet. 2.
`Claims 22, 42, and 77 are independent. Claim 75 depends indirectly from
`claim 48, which, as we explained above, was disclaimed by Patent Owner.
`Claim 22 is illustrative of the challenged claims and reproduced below:
`22. A transport apparatus configured to transport one
`or more persons from one location to another, comprising:
`a passenger compartment; and
`computerized information and display apparatus disposed
`at least partly within the passenger compartment, the
`information and display apparatus comprising:
`a wireless network interface;
`processing apparatus in data communication with the
`network interface;
`a microphone;
`a display device; and
`a storage apparatus comprising at least one computer
`program, said at least one program being configured to, when
`executed:
`obtain digitized speech generated based on speech
`received from a passenger via the microphone, the digitized
`speech comprising an affirmative request for desired
`information which the passenger wishes to find via a network
`search, the desired information relating to at least one of a
`plurality of predetermined topics of interest; and
`cause, based at least in part on the digitized speech,
`search of a remote network entity to cause retrieval of the
`desired information;
`wherein the apparatus is further configured to display
`content on the display device, the content received via the
`network interface and selected based at least in part on the
`digitized speech.
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`Ex. 1001, 27:25–52.
`
`II. ANALYSIS
`
`Claim Construction
`
`A.
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015),
`cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
`(mem.) (2016). Under the broadest reasonable interpretation standard, and
`absent any special definitions, claim terms or phrases are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art, in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner contends that the limitations “processing means,” “display
`device means,” and “computerized logic means,” as recited in claim 77, each
`invoke 35 U.S.C. § 112, sixth paragraph, whereas “wireless network
`interface means,” also recited in claim 77, does not invoke 35 U.S.C. § 112,
`sixth paragraph. Pet. 6–9. Patent Owner does not dispute Petitioner’s
`construction of these claim phrases or offer alternative constructions. For
`purposes of this Decision, we agree with Petitioner’s contention that
`“wireless network interface means” does not invoke 35 U.S.C. § 112, sixth
`paragraph because there is no functional language that corresponds to
`“means.” Pet. 6–7. We also agree with Petitioner’s construction that
`“processing means” means a “processor” and equivalents thereof (id. at 7),
`and we agree with Petitioner’s construction that “computerized logic means”
`means a “speech recognition module” and equivalents thereof. Id. at 8–9.
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`On this record, however, we disagree with Petitioner’s construction of
`“display device means,” because the phrase “display device” provides
`sufficient structure that would not invoke 35 U.S.C. § 112, sixth paragraph.
`1. Alleged Deficient Petition Under 37 C.F.R. § 42.104(b)(3)
`Patent Owner contends that Petitioner fails to provide proposed
`constructions for several key claim terms of the ’037 patent and, therefore,
`the Petition includes a fatal defect. Prelim. Resp. 22–23. In particular,
`Patent Owner argues that Petitioner’s failure to propose constructions for
`several key claim terms is contrary to 37 C.F.R. § 42.104(b)(3), which
`requires a petitioner to identify “[h]ow the challenged claim is to be
`construed.” Id. at 23. Patent Owner further argues that Petitioner has
`inferred certain meanings for certain claim terms, but has not explained
`adequately why those inferences are appropriate. Id. at 25. Patent Owner
`then directs us to several examples where Petitioner purportedly inferred a
`construction for a claim term without providing any analysis. Id. at 26–33.
`At the outset, we note that the Office Patent Trial Practice Guide
`indicates that, where appropriate, the requirement imposed by § 42.104(b)(3)
`may be satisfied by including a “simple statement that the claim terms are to
`be given their broadest reasonable interpretation.” 77 Fed. Reg. 48,756,
`48,764 (Aug. 14, 2012). Based on the particular circumstances of this case,
`Petitioner’s contentions reproduced above are sufficient to satisfy the
`requirement imposed by § 42.104(b)(3). For purposes of completeness, we
`now address each of the examples identified by Patent Owner in turn.
`a. “digitized speech” (all challenged claims)
`Patent Owner contends that Petitioner infers a construction of the
`claim phrase “digitized speech” that is contrary to its proper construction,
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`which, according to Patent Owner, includes (a) digitized speech that has not
`yet been recognized; (b) digitized speech that also has been run through a
`speech recognition algorithm; or (c) both (a) and (b). Prelim. Resp. 25–26.
`Patent Owner then argues that Petitioner and its Declarant, Mr. Scott
`Andrews, improperly infer that “digitization” is synonymous with
`“recognition,” which, in turn, led Petitioner to infer improperly that the
`computerized information systems of the challenged claims must necessarily
`perform recognition. Id. at 26 (citing Ex. 1001, 7:30–34; Pet. 18, 21).
`As an initial matter, we do not share Patent Owner’s view that, when
`presenting arguments in the Petition to address the limitations in the
`challenged claims that include the claim phrase “digitized speech,”
`Petitioner has somehow inferred or implied a construction for this claim
`phrase. Petitioner simply states that Ito’s Figure 1 discloses that the input
`section 105 may use voice recognition. Pet. 18 (citing Ex. 1003, 10:39–47).
`We do not view this statement, by itself, as an explanation as to how
`Petitioner intends to construe the claim phrase “digitized speech.” Instead,
`we view this statement as an argument advanced by Petitioner that the voice
`recognition used by Ito’s input 105 properly accounts for the “digitized
`speech,” as recited in the challenged claims.
`In any event, as we explained above, we understand Petitioner to
`argue that, because there are no special definitions for the claim phrase
`“digitized speech” in the specification of the ’037 patent, this claim phrase
`should be given its ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art, in light of the entire disclosure
`of the ’037 patent. Pet. 6. To the extent that we must determine whether the
`position taken by Petitioner is consistent with the ordinary and customary
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`meaning of the claim phrase “digitized speech,” as would be understood by
`one of ordinary skill in the art, in light of the entire disclosure of the ’037
`patent, we note that the evidence of record supports a finding that Ito’s input
`105 that uses voice recognition necessarily requires converting the
`commands spoken by a user from analog-to-digital form. Ex. 1009, 729
`(admitting in Exhibit H of West View’s Revised Disclosure of Asserted
`Claims and Infringement Contentions in a related district court case that “all
`speech recognition systems inherently digitize the speaker’s analog voice”).
`b. “predetermined topics of interest” (claim 22)
`Patent Owner contends that that Petitioner does not provide a
`construction for the claim phrase “predetermined topics of interest,” but
`instead performs a cursory “hand wave” as to the meaning of this claim
`phrase. Prelim. Resp. 26. Patent Owner further argues that Petitioner and its
`Declarant, Mr. Andrews, do not explain adequately how the combined
`disclosure of Ito and Lind account for the elements included in this claim
`phrase. Id. Instead, Patent Owner argues that Ito’s “facility name” fails to
`teach or suggest “predetermined topics of interest,” as recited in claim 22.
`Id. at 26–27. In addition, Patent Owner contends that Lind’s locating a
`restaurant or hotel and requesting travel directions and traffic updates fails to
`teach or suggest “predetermined topics of interest.” Id. at 27.
`We do not share Patent Owner’s view that Petitioner has resorted to a
`cursory “hand wave” as to the meaning of claim phrase “predetermined
`topics of interest.” As we explained above, we understand Petitioner to
`argue that, because there are no special definitions for this claim phrase in
`the specification of the ’037 patent, it should be given its ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
`art, in light of the entire disclosure of the ’037 patent. Pet. 6.
`We agree with Petitioner in that we cannot discern how construing the
`claim phrase “predetermined topics of interest” would add any clarity to the
`claim phrase itself, which, in our view and based on the current record, is
`self-explanatory. We understand Patent Owner’s argument pertaining to
`construing “predetermined topics of interest” as “news, headlines, weather,
`sports scores, financial data, local directions, and points of interest that are
`presented to a user.” Prelim. Resp. 27 (citing Ex. 1001, 11:13–23, Fig. 6a).
`The Specification of the ’037 patent, however, states “[f]or example . . .
`dedicated function keys 602 correlating to Internet hypertext . . . for news,
`headlines, weather, sports scores, financial data, directions to local airports
`or public transportation, etc. as shown in Fig. 6a.” Ex. 1001, 11:13–23
`(emphasis added), Fig. 6a. In this case, the Specification of the ’037 patent
`provides merely examples, not a special definition.
`Even if we were to agree with Patent Owner, which we do not, Ito and
`Lind, either alone or in combination, teaches or suggests “predetermined
`topics of interest” according to Patent Owner’s reliance on Figure 6a of the
`’037 patent. In particular, Ito’s route search request to a facility name
`teaches “local directions” and also “points of interest that are presented to a
`user.” Ex. 1003, 10:39–47, 15:47–58. In addition, Lind’s locating a
`restaurant or hotel and requesting travel directions and traffic updates
`teaches “local directions” and also “points of interest that are presented to a
`user.” Ex. 1004, 10–11.
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`c. purported “means-plus-function” limitations
`Lastly, Patent Owner contends that Petitioner provides no analysis as
`to whether certain limitations recited in independent claims 22, 42, and 48
`(claim 75 depends from claim 48) could be construed under 35 U.S.C. § 112,
`sixth paragraph. Prelim. Resp. 28. Patent Owner argues that, pursuant to
`§ 42.104(b)(3), an explicit construction of each means-plus-function
`limitation is required that should include the identification of corresponding
`structure disclosed in the specification that is necessary to perform each
`claimed function. Id.
`Patent Owner directs us to the “storage apparatus” recited in
`independent claim 22 that includes “at least one computer program”
`configured to “obtain a digitized speech generated” and “cause . . . search of
`network entity to cause retrieval of the desired information” and argues that
`it is at least facially plausible that these portions of the challenged claims
`could be interpreted as means-plus-function limitations. Id. at 29–30.
`Regarding claim 42, Patent Owner directs us to the “storage apparatus” that
`includes “at least one computer program” configured to “obtain a digitized
`speech generated,” “cause . . . access of a remote network entity via the
`network interface to cause retrieval of the desired information,” and “receive
`the desired information via the network interface” and argues that it is at
`least facially plausible that these portions of the challenged claims could be
`interpreted as means-plus-function limitations. Id. at 30–31. As for claim
`48, Patent Owner directs us to the “storage apparatus” that includes
`“computerized logic configured to” “obtain a digitized speech generated,”
`“cause . . . access of a remote network entity via the network interface to
`cause retrieval of the desired information,” and “receive the desired
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`information via the network interface” and argues that it is at least facially
`plausible that these portions of the challenged claims could be interpreted as
`means-plus-function limitations. Id. at 31–32. Patent Owner then asserts
`that the Petition is deficient because it does not offer possible constructions
`for these functions under § 112, sixth paragraph, much less direct us to the
`relevant portions of the specification of the ’037 patent that may apply in
`such constructions. Id. at 32–33.
`In this case, because independent claims 22, 42, and 48 do not use the
`phrase “means for,” “step for,” or a generic placeholder coupled with “for,”
`there is a presumption that § 112, sixth paragraph, does not apply. See
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
`banc in relevant part) (noting the failure to use the word “means” creates a
`rebuttable presumption that § 112 ¶ 6 does not apply); Lighting World, Inc.
`v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (stating
`the same). Here, the only basis that Patent Owner proffers for overcoming
`the presumption that § 112, sixth paragraph, does not apply to these claims is
`an assertion that the computer program or computerized logic configured to
`perform its respective functions arguably recites no particular structure to
`perform these functions. Prelim. Resp. 32–33. These functions configured
`to be performed by the computer program, however, do not recite “means
`for,” nor does Patent Owner direct us to a nonce word, or verbal construct,
`devoid of a structure that is used as a substitute for “means for.” See
`Lighting World, 382 F.3d at 1360. Consequently, based on this record,
`Patent Owner has not presented sufficient rebuttal evidence to overcome the
`presumption that § 112, sixth paragraph, does not apply to the argued
`limitations of independent claims 22, 42, and 48.
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`d. Summary
`In summary, we decline Patent Owner’s invitation to dismiss the
`Petition on the basis that Petitioner’s contentions regarding claim
`construction are insufficient to satisfy the requirement imposed by
`§ 42.104(b)(3), or because Petitioner purportedly inferred a construction for
`a claim term without providing any analysis.
`2. Remaining Claim Construction Arguments
`Patent Owner also contends that, even under the broadest reasonable
`interpretation standard, Petitioner assumes constructions for several key
`claim terms that are unreasonable and, as a consequence, the Petition
`includes a fatal defect. Prelim. Resp. 34–44. For instance, Patent Owner
`argues that Petitioner unreasonably construes the claim phrases “wireless
`network interface [means],” “a communication apparatus configured to
`enable at least voice communication by a passenger with a remote
`monitoring station,” and “computerized logic means configured to . . . obtain
`digitized speech,” and then improperly relies upon the teachings of Ito, Lind,
`or the combined teachings of both references to account for each claim
`phrase. Id. at 35–43. Although Patent Owner couches these arguments as
`predicated on Petitioner’s purportedly unreasonable claim constructions, we
`nonetheless view them as being directed to the merits of the asserted
`grounds based on obviousness. We, therefore, address these arguments
`under the asserted grounds based on obviousness discussed below.
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`B.
`
`Ito (Ex. 1003)
`
` Obviousness of Claims 22, 42, and 77 in View of Ito and Lind
`1.
`Ito generally relates to a communications navigation system that
`supplies navigation data necessary for route guidance from a navigation base
`to a moving body, such as a vehicle. Ex. 1003, 1:9–12. Figure 1 of Ito,
`reproduced below, illustrates one embodiment of the communications
`navigation system. Id. at 5:65–67, 8:11–13.
`
`
`As shown in Figure 1, the communications navigation system includes
`vehicle navigation apparatus 100 mounted in a vehicle and navigation base
`apparatus 150 arranged as a base. Ex. 1003, 8:13–16. Transmitting and
`receiving section 108 functions as a communication device for wirelessly
`transmitting data to and wirelessly receiving data from navigation base
`apparatus 150. Id. at 10:51–57. Vehicle navigation apparatus 100 includes,
`among other things, input 105 and display 106. Id. at 9:53–58. Input 105
`includes a data input device using voice recognition that allows a user to
`control the communications navigation system by using his/her voice to
`input corresponding data and commands. Id. at 10:39–47. Display 106
`includes a liquid crystal display (“LCD”) or cathode-ray tube (“CRT”)
`display unit that is equipped with a touch panel. Id. at 10:48–50. Display
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`106 is capable of displaying detailed maps of the departure point, course-
`change points along a recommended route, and the destination, as well as
`providing corresponding voice guidance. Id. at 18:62–67.
`Figures 9A and 9B, reproduced below, illustrate an example of a route
`outline map and an example of a map of a surrounding area of a departure
`point. Ex. 1003, 6:19–21.
`
`
`Figure 9A illustrates a recommended route on display 106 in the form
`of an outline map. Id. at 16:21–27. Figure 9B illustrates a map of the area
`surrounding the departure point. Id. at 17:10–19.
`
`Lind (Ex. 1004)
`
`2.
`Lind generally relates to a Network Vehicle that integrates hardware
`and software technologies to communicate information to a driver.
`Ex. 1004, 9–10.5 Figure 2 of Lind is reproduced below.
`
`
`5 All references to the page numbers in Lind refer to the page numbers
`inserted by Petitioner in the bottom, right-hand corner of each page in
`Exhibit 1004.
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`Figure 2 illustrates Network Vehicle’s onboard network architecture,
`including a network computer that connects to center console display and
`Ethernet. The Network Vehicle includes, among other things, voice
`recognition to allow the driver to access the vehicle’s features and multiple
`displays for displaying an image output. Id. at 11–12, 15, Fig. 9.
`Figure 9 of Lind is reproduced below.
`
`
`Figure 9 illustrates center console display of the Network Vehicle is
`configured to navigation maps. Id. at 11. Voice commands may be used to
`“locate a restaurant or hotel” and “ask for navigation help.” Id. at 10. Voice
`commands also may be used to “request travel directions and traffic updates
`from the Web or other sources.” Id. at 11. In addition, center console
`display is configured to display e-mail, Web browser, cellular phone
`faceplate and more (not illustrated). Id. at 11–12.
`Figure 3 of Lind is reproduced below.
`
`17
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`IPR2016-00123
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`Figure 3 illustrates the Network Vehicle connecting to the Internet
`using a wireless modem. Internet connection enables the user to access e-
`mail, a Web browser, and more, using the center console display. Id. at 11–
`12.
`
`The Parties’ Contentions for Claims 22, 42, and 77
`
`3.
`Petitioner asserts that the subject matter of claims 22, 42, and 77
`would have been obvious in view of Ito and Lind under 35 U.S.C. § 103(a).
`Pet. 9–24, 26–38, 40–41, 43–44. Petitioner explains where each limitation
`of claims 22, 42, and 77 allegedly is taught in Ito and Lind. Id. Petitioner
`also relies upon the testimony of Mr. Andrews, who has been retained as an
`expert witness by Petitioner for the instant proceeding. Ex. 1002.
`The present record supports the contention that Ito teaches vehicle
`navigation apparatus 100 that includes input 105 and display 106 and is
`mounted in a vehicle, as required by claims 22, 42, and 77. Pet. 9–10, 12–
`13, 28–30, 40–41, 43 (citing Ex. 1003) (pinpoint citations omitted). The
`present record supports the contention that Ito teaches processing section
`101 that communicates with transmitting and receiving section 108, which
`functions as a communication device for wirelessly transmitting navigation
`data from base apparatus 150 to the vehicle, as required by claims 22, 42,
`and 77. Id. at 9–11, 13–15, 20, 22–23, 30–31, 41, 43 (citing Ex. 1003)
`
`18
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`(pinpoint citations omitted). To support its argument that a voice
`recognition system teaches digitizing a speaker’s analog voice, Petitioner
`argues that Patent Owner acknowledges that “all speech recognition systems
`inherently digitize the speaker’s analog voice.” Id. at 19 (citing Ex. 1009,
`729). In addition, the present record supports the contention that Ito teaches
`input 105 includes a data input device using voice recognition that allows a
`user to control the communications navigation system by using his/her voice
`to input corresponding data and commands, as required by claims 22, 42,
`and 77. Id. at 11, 15–19, 31–36, 41, 44 (citing Ex. 1003) (pinpoint citations
`omitted). Lastly, the present record supports the contention that Ito teaches
`display 106 is capable of displaying detailed maps of the departure point,
`course-change points along a recommended route, and the destination, as
`well as providing corresponding voice guidance, as required by claims 22,
`42, and 77. Id. at 11, 15–24, 32–38, 41, 44 (citing Ex. 1003) (pinpoint
`citations omitted).
`The present record supports Petitioner’s contention that Lind’s
`Network Vehicle includes microprocessors, as well as Petitioner’s
`contention that the Network Vehicle connects to the Internet using a wireless
`modem, and includes a network computer that connects to a center console
`display and Ethernet, as required by claims 22, 42, and 77. Pet. 9–15, 20,
`22–23, 28–31, 40–41, 43 (citing Ex. 1004) (pinpoint citations omitted). In
`addition, the present record supports Petitioner’s contention that Lind’s
`Network Vehicle includes voice recognition to allow the driver to access the
`vehicle’s features and multiple displays for displaying navigation maps on a
`center console display, as required by claims 22, 42, and 77. Pet. 11, 15–19,
`31–36, 41, 44 (citing Ex. 1004) (pinpoint citations omitted). The present
`
`19
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`record supports Petitioner’s contention that voice commands may be used to
`locate a restaurant or hotel, ask for navigation assistance, and request travel
`directions and traffic updates from the Web or other sources, as required by
`claims 22, 42, and 77. Id. at 11, 15–24, 32–38, 41, 44 (citing Ex. 1004)
`(pinpoint citations omitted).
`Petitioner argues that one of ordinary skill in the art would have
`combined the similar technologies of Ito and Lind to provide increased
`productivity tools, convenience, safety, and entertainment to millions of
`people who spend hours each day commuting. Pet. 26 (citing Exs. 1002,
`1003, 1004) (pinpoint citations omitted). In addition, Petitioner contends
`one of ordinary skill in the art would have combined the similar systems of
`Ito and Lind to have a navigation system that is able to provide adequate
`route guidance even if the amount of data to be transmitted to the vehicle is
`reduced and to simplify the structure of a vehicle navigation apparatus. Id.
`at 26–27 (citing Exs. 1002, 1003, 1004) (pinpoint citations omitted).
`Moreover, on this record, Petitioner contends it would have been obvious to
`employ maps in a vehicle. Id. at 27 (citing Ex. 1002 ¶ 34).
`Patent Owner argues that Petitioner and its Declarant, Mr. Andrews,
`simply have cataloged the parts of the challenged claims and attempted to
`provide an index as to where those disparate parts may be taught in the
`asserted prior art. Prelim. Resp. 47. Patent Owner argues that Petitioner
`directs us to nothing that would suggest a person of ordinary skill in the art
`would be able to combine various elements, such as voice-entry protocol,
`touch screen display, automatic personalization, etc., in the manner required
`by the challenged claims. Id. (citing Ex. 1001, Abstract, 1:51–60, 3:13,
`4:10–13, 10:33–36, 12:1–3, 19:43–20:8). Patent Owner further argues that
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`Petitioner’s recitation of disparate elements scattered across multiple prior
`art references stitched together with conclusory assertions is the hallmark of
`impermissible hindsight reconstruction. Id. at 47–48.
`On the current record at this stage of the proceeding, we are persuaded
`that Petitioner’s rationales for combining the teachings of Ito and Lind
`constitute sufficient articulated reasoning with rational underpinnings that
`would support the legal conclusion of obviousness. When describing
`examples of what may constitute a sufficient rationale to combine
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