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
`
`Patent No. 8,719,037
`Issue Date: May 6, 2014
`Title: TRANSPORT APPARATUS WITH COMPUTERIZED
`INFORMATION AND DISPLAY APPARATUS
`
`__________________________________________________________________
`
`PETITIONER’S REPLY
`
`Case No. IPR2016-00123
`__________________________________________________________________
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`v.
`
`WEST VIEW RESEARCH, LLC
`
`Patent Owner
`
`Patent No. 8,719,037
`Issue Date: May 6, 2014
`Title: TRANSPORT APPARATUS WITH COMPUTERIZED
`INFORMATION AND DISPLAY APPARATUS
`
`__________________________________________________________________
`
`PETITIONER’S REPLY
`
`Case No. IPR2016-00123
`__________________________________________________________________
`
`
`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`
`Exhibit 1011
`
`
`Exhibit 1012
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 8,719,037 to Gazdzinski
`
`Declaration of Scott Andrews
`
`U.S. Patent No. 6,249,740 to Ito et al.
`
`The Network Vehicle - A Glimpse into the Future of
`Mobile Multi-Media, by R. Lind et al. , The 17th DASC –
`The AIAA/IEEE/SAE Digital Avionics Systems
`Conference – Bellevue, WA – Oct. 31-Nov. 7, 1998 –
`Proceedings
`
`European Patent Application Publication No. 0 829 704
`to Fujiwara et al.
`
`U.S. Patent No. 5,574,443 to Hsieh
`
`Redline Comparison of Challenged Independent Claims
`
`U.S. Patent No. 5,274,560 to LaRue
`
`“Plaintiff and Counter-Defendant West View Research,
`LLC’s Revised Disclosure of Asserted Claims and
`Infringement Contentions, Pursuant to Patent L.R. 3.1
`and the June 10, 2015 Court Order,” dated June 26, 2015
`
`U.S. Copyright Registration No. TX 4-900-822, “1998
`IEEE/AIAA 17th Digital Avionics Systems Conference -
`Oct 31, 1998 - Bellevue, WA - (98CH36267),” dated
`December 8, 1998
`
`Library of Congress Public Catalog Information, 17th
`DASC: The AIAA/IEEE/SAE Digital Avionics Systems
`Conference: Proceedings: [Electronics in motion]:
`Bellevue, WA, Oct. 31-Nov. 7, 1998
`
`MARC Tags corresponding to Library of Congress
`Public Catalog Information, 17th DASC: The
`i
`
`
`
`AIAA/IEEE/SAE Digital Avionics Systems Conference:
`Proceedings: [Electronics in motion]: Bellevue, WA, Oct.
`31-Nov. 7, 1998
`
`The Network Vehicle - A Glimpse into the Future of
`Mobile Multi-Media, by R. Lind et al., SAE Technical
`Paper Series 982901
`
`U.S. Copyright Registration No. TX 5-149-812,
`“November 1998 Quarterly Technical Papers on
`Microfiche (MICQ-N98),” dated June 2, 2000
`
`U.S. Copyright Office Public Catalog Information,
`“Quarterly technical papers on microfiche,” ISSN 0148-
`7191
`
`Society of Automotive Engineers (SAE), Abstract, “The
`Network Vehicle - A Glimpse into the Future of Mobile
`Multimedia,” Paper No. 982901, http://papers.sae.org/
`982901/
`
`“Order Granting Motions for Judgment on the Pleadings”
`in West View Research, LLC v. Tesla Motors, Inc., Case
`No. 3:14-cv-02679, dated December 11, 2015
`
`“Order Granting Motions for Judgment on the Pleadings”
`in West View Research, LLC v. Audi AG, et al., Case No.
`3:14-cv-02668 (S.D. Cal.), The March 31, 2016
`
`“Judgment” in West View Research, LLC v. Audi AG, et
`al., Case No. 3:14-cv-02668 (S.D. Cal.), dated March 31,
`2016
`
`“Notice of Appeal” in West View Research, LLC v. Audi
`AG, et al., Case No. 3:14-cv-02668 (S.D. Cal.), dated
`The April 29, 2016
`
`ii
`
`
`Exhibit 1013
`
`
`Exhibit 1014
`
`
`Exhibit 1015
`
`
`Exhibit 1016
`
`
`Exhibit 1017
`
`
`Exhibit 1018
`
`
`Exhibit 1019
`
`
`Exhibit 1020
`
`
`
`
`
`“Notice of Docketing” in West View Research, LLC v.
`Audi AG et al., Case No. 16-1947 (Fed. Cir.), dated May
`2, 2016
`
`“Order Consolidating Appeals” in West View Research,
`LLC v. Audi AG, et al., Case No. 16-1947 (Fed. Cir.),
`date May 9, 2016
`
`
`
`Exhibit 1021
`
`
`Exhibit 1022
`
`
`
`iii
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`
`I.
`
`II. ARGUMENT .................................................................................................. 2
`
`A.
`
`B.
`
`The Challenged Claims Do Not Require Construction Pursuant to
`§ 112, ¶ 6 ............................................................................................... 2
`
`The Cited Prior Art Renders Unpatentable Each of the
`Challenged Claims, Under the Broadest Reasonable Construction
`of Those Claims ................................................................................... 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`Construction of the term “digitized speech” was properly
`presented in the Petition ........................................................... 5
`
`Construction of the term “computerized logic means
`configured to . . . obtain digitized speech” was properly
`presented in the Petition ........................................................... 8
`
`Construction of the term “wireless network interface
`[means]” was properly presented in the Petition ................... 9
`
`Construction of the term “a communication apparatus
`configured to enable at least voice communication by a
`passenger with a remote monitoring station” was properly
`presented in the Petition ......................................................... 12
`
`C.
`
`The Petition Provides Express Reasons to Combine the Cited
`Prior Art ............................................................................................. 13
`
`III. CONCLUSION ............................................................................................ 18
`
`
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`This Petitioner’s Reply is responsive to the Patent Owner’s Response (the
`
`“Response”) filed by West View Research, LLC (“WVR”).
`
`As set forth in the Petition, the challenged claims of U.S. Patent No.
`
`8,719,037 (the “’037 patent”) are invalid in view of the prior art cited therein,
`
`including U.S. Patent No. 6,249,740 (Exhibit 1003, “Ito”), The Network Vehicle –
`
`A Glimpse into the Future of Mobile Multi-Media, R. Lind, et al. (Exhibit 1004,
`
`“Lind”), and U.S. Patent No. 5,574,443 (Exhibit 1006, “Hsieh”).
`
`WVR argues that the Petition fails to construe the term, “digitized speech,”
`
`fails to perform a statutory analysis under 35 U.S.C. § 112, ¶ 6, and assumes
`
`unreasonable constructions for several terms. The Petition, however, stated that the
`
`challenged claims should be given their broadest reasonable construction in view
`
`of the specification, and specifically identified (and proposed constructions for)
`
`those terms requiring additional construction. WVR does not dispute that the
`
`challenged claims should be given their broadest reasonable construction, nor does
`
`WVR dispute that the specification and prosecution history of the ’037 patent lack
`
`special definitions for these claim terms. WVR also does not propose any claim
`
`construction positions of its own.
`
`WVR further argues that the Petition ignores an express teaching away, and
`
`that it relies on impermissible hindsight. However, WVR does not present any
`
`1
`
`
`
`evidence of express teaching away, nor does WVR address the evidence of
`
`obviousness presented in the Petition. Further, a finding of obviousness does not
`
`require that the prior art describe the most desirable combination of teachings.
`
`II. ARGUMENT
`
`A. The Challenged Claims Do Not Require Construction Pursuant to
`§ 112, ¶ 6
`
`WVR argues (at 31-37) that portions of claims 22, 42, and 48 are wholly
`
`functional, and include “textbook recitations of purely functional language with no
`
`recited structure.” Response, at 31-37. WVR does not include any authority for this
`
`conclusion, nor does WVR present an analysis of the claims under § 112, ¶ 6 (e.g.,
`
`identifying corresponding structure from the specification, and applying it to the
`
`cited prior art). WVR only argues that the absence of such analysis prevents a
`
`prima facie showing of obviousness.
`
`As noted in the Petition, the claims should be given their broadest reasonable
`
`construction in view of the specification. Petition, at 6. Claims 22 and 42 include a
`
`storage apparatus and at least one computer program, and claim 48 includes a
`
`computerized information and display apparatus and computerized logic. None of
`
`claims 22, 42, or 48 includes the term “means,” so the Petition is reasonable in not
`
`applying § 112, ¶ 6. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`
`1348-49 (Fed. Cir. 2015) (maintaining the presumption that a limitation lacking the
`
`2
`
`
`
`word “means” is not subject to § 112, ¶ 6, though abandoning the characterization
`
`of the presumption as “strong.”).
`
`Further, Federal Circuit and District Court cases show that the Petition is
`
`reasonable in not applying § 112, ¶ 6 to challenged claims 22, 42, and 48. The
`
`Federal Circuit has noted that “structure” in the context of computer software
`
`claims may not be physical structure. Apple Inc. v. Motorola, Inc., 757 F.3d 1286,
`
`1298-99 (Fed. Cir. 2014) (overruled by Williamson, 792 F.3d at 1349, for applying
`
`a heightened bar for overcoming the presumption for applying § 112, ¶ 6). District
`
`Courts have repeatedly found that § 112, ¶ 6 does not apply to computer-based
`
`claim terms such as “processor,” “instructions,” “computer code,” “program code,”
`
`or “executable software,” for performing certain functions, or “software configured
`
`to” perform certain functions. Syncpoint Imaging, LLC v. Nintendo of Am. Inc.,
`
`2:15-cv-00247-JRG-RSP, 2016 WL 55118, at *23-24 (E.D. Tex. Jan. 5, 2016)
`
`(citing Affymetrix, Inc. v. Hyseq, Inc., 132 F.Supp.2d 1212, 1231-33 (N.D. Cal.
`
`2001); Trading Techs. Int’l v. eSpeed, Inc., No. 04-c-5312, 2006 WL 3147697, at
`
`*10-14 (N.D. Ill. Oct. 31, 2006); Versata Software, Inc. v. Sun Microsystems, Inc.,
`
`No. 2:06-cv-358, 2008 WL 3914098, at *13-14 (E.D. Tex. Aug. 19, 2008); Aloft
`
`Media, LLC v. Adobe Sys., 570 F.Supp.2d 887, 897-98 (E.D. Tex. 2008); Eolas
`
`Techs., Inc. v. Adobe Sys., Inc., 810 F.Supp.2d 795, 810 (E.D. Tex. 2011); RLIS,
`
`Inc. v. Allscripts Healthcare Solutions, Inc., No. 3:12-cv-208, 2013 WL 3772472,
`
`3
`
`
`
`at *13-17 (S.D. Tex. July 16, 2013); Affinity Labs of Texas, LLC v. Samsung Elecs.
`
`Co., No. 1:12-cv-557, 2014 U.S. Dist. LEXIS 184075, at *11-18 (E.D. Tex. June 4,
`
`2014); SuperSpeed, LLC v. Google, Inc., No. H-12-1688, 2014 WL 129225, at
`
`*21-24 (S.D. Tex. Jan. 14, 2014)).
`
`Accordingly, it is sufficient for the Petition to state that the claims should be
`
`given their broadest reasonable construction in view of the specification. 77 Fed.
`
`Reg. 157, 48,756, 48,764 (Aug. 14, 2012). Further, WVR does not assert that the
`
`allegedly required structural analysis would have any bearing on the patentability
`
`of the challenged claims. WVR’s argument should be given no weight. The
`
`challenged claims were properly considered, and, as set forth in the Petition, the
`
`prior art renders obvious the challenged claims.
`
`B.
`
`The Cited Prior Art Renders Unpatentable Each of the
`Challenged Claims, Under the Broadest Reasonable Construction
`of Those Claims
`
`The Petition explains in detail, e.g., at pp. 9-44, 55-60, how Ito and Lind
`
`render obvious claims 22, 42, and 77, and how Ito, Lind and Hsieh render obvious
`
`claim 75. The Response does not distinguish the challenged claims and the cited
`
`prior art, but instead refers to concepts not recited in the claims.
`
`4
`
`
`
`1.
`
`Construction of the term “digitized speech” was properly
`presented in the Petition
`
`As described in the Petition (e.g., at 18-19), the cited prior art describes at
`
`least one computer program configured to “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,” as recited, for example, in claim
`
`22. Ito discloses an input section that may use voice recognition (Ex. 1003, 10:39-
`
`47; Ex. 1002, ¶ 13), and that a user may input into a system information about a
`
`destination, such as a facility name, telephone number, address, and a route search
`
`request (Ex. 1003, 15:47-58). Lind discloses that a user may use voice commands
`
`to locate a restaurant or hotel, and to ask for navigation help. Ex. 1004, I21-2.
`
`Further, for software to process speech input, the speech input must be digitized.
`
`See, e.g., Ex. 1008, 5:17-30. Moreover, WVR has admitted that “all speech
`
`recognition systems inherently digitize the speaker’s analog voice.” Ex. 1009, at
`
`729.
`
`
`
`As explained above, the specification of the ’037 patent does not present any
`
`special definition of the term “digitized speech,” nor does the prosecution history
`
`include any claim construction arguments, so the term “digitized speech” should be
`
`given its broadest reasonable interpretation in view of the specification. The
`
`5
`
`
`
`broadest reasonable interpretation of “digitized speech,” for the purposes of this
`
`proceeding, should at least include the voice recognition systems described by Ito
`
`and Lind.
`
`WVR does not dispute that voice recognition software requires digitization.
`
`Response, at 25-30. Instead, WVR argues that “‘digitization’ is not synonymous
`
`with ‘recognition,’” that the Andrews Declaration (Ex. 1002) does not state
`
`“where/by what components” the speech is digitized or recognized, and that
`
`“modern architectures” transmit digitized speech to a remote entity for recognition.
`
`Response, at 26 (emphasis in original). Neither the Petitioner, nor the Board,
`
`proposes to equate digitization with recognition; instead, as WVR has stated, for
`
`speech to be recognized, it must be digitized. Ex. 1009, at 729. Further, claims 22,
`
`42, 75, and 77 do not specify where, or by what components, the speech input is
`
`digitized. Ex. 1001, Claim 22 (“obtain digitized speech generated based on speech
`
`received from a passenger via the microphone.”), Claim 42 (“obtain digitized
`
`speech generated based on speech received from the occupant.”), Claim 75
`
`(“obtain digitized speech generated based on speech received from the occupant.”),
`
`Claim 77 (“obtain digitized speech generated based on speech received from the
`
`occupant.”).
`
`WVR then argues that the location of recognizing the speech input is
`
`relevant because the resulting device would be rendered “completely non-
`
`6
`
`
`
`functional” if a user’s unrecognized speech were transmitted over a wireless
`
`interface of limited bandwidth. See Response, at 27-29. First, WVR does not argue
`
`that Ito or Lind describes a wireless interface of such limited bandwidth, so that
`
`WVR has not shown that this argument has any bearing on patentability in view of
`
`the prior art. WVR only refers to “circa mid-1999 technology” (id. at 28) having
`
`“rates [that] were considered by the inventor of the ’037 [p]atent to be insufficient
`
`for the bandwidth requirements of the invention” (id. at 42 (citing Ex. 2009 at 1)).
`
`Second, WVR is referring to limitations that are not included in claims 22, 42, 75,
`
`and 77. These claims do not include any minimum bandwidth requirements, nor do
`
`they state where the recognition of digitized speech takes place.
`
`Claims 22, 42, 75, and 77 only require the digitized speech. The Petition
`
`and supporting evidence, including the Andrews Declaration and WVR’s
`
`admission that “all speech recognition systems inherently digitize the speaker’s
`
`analog voice,” demonstrate that the cited prior art describe speech recognition
`
`software systems, and that speech recognition software systems require digitized
`
`speech. Therefore, because speech recognition software systems were well-known,
`
`digitized speech was also well-known.
`
`WVR does not present an alternative claim construction position, does not
`
`dispute that the specification and prosecution history of the ’037 patent lack special
`
`definitions for this claim term, and does not explain why the ’037 patent
`
`7
`
`
`
`specification excludes the systems of Ito and Lind from the broadest reasonable
`
`interpretation of this term. Id. at 25-30. WVR’s attempt to raise an issue where
`
`none exists should be given no weight.
`
`2.
`
`Construction of the term “computerized logic means
`configured to … obtain digitized speech” was properly
`presented in the Petition
`
`As described in the Petition (e.g., at 8-9), the term “computerized logic
`
`means” is subject to 35 U.S.C. § 112, ¶ 6 since it is expressed as a means for
`
`performing functions including obtaining digitized speech generated based on
`
`speech received from the occupant, the received speech comprising a request for
`
`desired information which the occupant wishes to obtain. The ’037 patent
`
`describes a “speech recognition module 104” that “takes the analog signal from the
`
`microphone 118 and converts it to a digital format by way of the DSP 125 and
`
`compression algorithm.” Ex. 1001, 9:52-56. Therefore, the computerized logic
`
`means of claim 77, with respect to the “obtaining digitized speech” function,
`
`should be construed to mean “a speech recognition module,” and equivalents
`
`thereof for obtaining digitized speech.
`
`WVR argues that the term “computerized logic means configured to ...
`
`obtain digitized speech” cannot be interpreted as “a speech recognition module”
`
`for the same reasons it rejected the Petitioner’s broadest reasonable interpretation
`
`of “digitized speech”: because “digitized speech used to access the remote network
`
`8
`
`
`
`entity ... could very reasonably” use words that have been either recognized or not
`
`yet recognized, and using words not yet recognized would be “much more
`
`bandwidth intensive.” See Response, at 38-40. However, as described above, the
`
`claims only require obtaining digitized speech, and do not specify the location of
`
`speech recognition, or the bandwidth of the wireless link. WVR does not present
`
`an alternative claim construction position, does not dispute that the specification
`
`and prosecution history of the ’037 patent lack special definitions for the term
`
`“digitized speech,” and does not explain why the ’037 patent specification
`
`excludes the systems of Ito and Lind from the broadest reasonable interpretation of
`
`this term. See id. WVR’s attempt to raise an issue where none exists should be
`
`given no weight.
`
`3.
`
`Construction of the term “wireless network interface
`[means]” was properly presented in the Petition
`As described in the Petition (e.g., at 13-14), the cited prior art describes “a
`
`wireless network interface” as recited in claims 22, 42, 75, and 77. Ito discloses a
`
`transmitting and receiving section that interfaces with a wireless network, and that
`
`includes devices such as a wireless modem. Ex. 1002, ¶ 7; Ex. 1003, 10:51-57.
`
`Additionally, Ito discloses that the connection may utilize systems such as car
`
`phones and portable phones. Id. Lind describes high-bandwidth communications
`
`via an antenna, and accessing the Internet via a wireless modem. Ex. 1004, I21-2-
`
`9
`
`
`
`3; Ex. 1002, ¶ 18. The specification of the ’037 patent does not present any special
`
`definition of the term “wireless network interface,” nor does the prosecution
`
`history include any claim construction arguments, so that the term “wireless
`
`network interface” should be given its broadest reasonable interpretation in view of
`
`the specification. The broadest reasonable interpretation of “wireless network
`
`interface,” for the purposes of this proceeding, should at least include the wireless
`
`modem and antenna described by Ito and Lind.
`
`WVR asserts that Ito’s transmitting and receiving section 108 does not
`
`describe the “terrestrial high-data bandwidth interface specifically chosen to
`
`support, inter alia, the bandwidth requirements of the information system of the
`
`invention.” Response, at 40-45 (citing the ’037 patent, 8:58-65). Claims 22, 42, 75,
`
`and 77 do not recite a terrestrial high-data bandwidth interface specifically chosen
`
`to support certain bandwidth requirements, and WVR does not assert that the cited
`
`portion of the specification constitutes a special definition or disclaimer. WVR’s
`
`citation to the specification does not identify any non-obvious distinction between
`
`the claims of the ’037 patent under review and the wireless interface of Ito, as the
`
`cited portion of the specification only indicates that “any wireless interface capable
`
`of accommodating the bandwidth requirements of the system 100 may be used.”
`
`’037 patent, 8:58-65.
`
`10
`
`
`
`Similarly, WVR asserts that Lind’s high bandwidth antenna and cellular link
`
`do not describe the “terrestrial high-data bandwidth interface specifically chosen to
`
`support, inter alia, the explicit temporal requirements of the information system of
`
`the invention (i.e., having to converge on an entity location or other desired
`
`information within ‘only seconds’).” Response, at 40-45 (citing the ’037 patent,
`
`11:42-43). Claims 22, 42, 75, and 77 do not recite a terrestrial high-data bandwidth
`
`interface specifically chosen to support temporal requirements, and WVR does not
`
`assert that the cited portion of the specification constitutes a special definition or
`
`disclaimer of the term “wireless network interface.” Again, WVR’s citation to the
`
`specification does not identify any non-obvious distinction between the claims of
`
`the ’037 patent under review and the high bandwidth antenna of Lind, as the cited
`
`portion of the specification only indicates that “most users will have only seconds
`
`to locate, interpret, and remember the desired information.” ’037 patent, 11:42-43.
`
`WVR does not present an alternative claim construction position, and does
`
`not dispute that the specification and prosecution history of the ’037 patent lack
`
`special definitions for the term “wireless network interface.” Nor does WVR
`
`explain why the ’037 patent specification should limit the claims to exclude the
`
`systems of Ito and Lind from the broadest reasonable interpretation of the term
`
`“wireless network interface.” Id. at 40-45. WVR’s attempt to raise an issue where
`
`none exists should be given no weight.
`
`11
`
`
`
`Further, as described in the Petition (e.g., at 6), the “wireless network
`
`interface means” recited in claim 77 is not subject to 35 U.S.C. § 112, ¶ 6 because
`
`the claim does not provide a function that corresponds to the “means.” Cole v.
`
`Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (the perfunctory
`
`addition of the word “means” does not render a claim subject to 35 U.S.C. § 112, ¶
`
`6, as the claim recited the necessary structure.). WVR does not dispute this in the
`
`Response.
`
`4.
`
`Construction of the term “a communication apparatus
`configured to enable at least voice communication by a
`passenger with a remote monitoring station” was properly
`presented in the Petition
`
`As described in the Petition (e.g., at 56), the cited prior art describes “a
`
`communication apparatus configured to enable at least voice communication by a
`
`passenger with a remote monitoring station,” as recited in claim 75. Lind describes
`
`that the Network Vehicle includes a cell phone and in-vehicle audio system that is
`
`used as a speakerphone, allowing hands-free communication. Petition, at 56 (citing
`
`Ex. 1004, p. I21-7). Additionally, as described in the Petition (e.g., at 56), Lind
`
`discloses that a customer service representative can be contacted using the
`
`Network Vehicle’s customer service application. Ex. 1004, p. I21-5; Ex. 1002, ¶
`
`41. As a result, Lind discloses that, during use of the cell phone or customer
`
`12
`
`
`
`service application, and while operating the Network Vehicle, it is possible for a
`
`passenger to contact a remote monitoring station by voice communication.
`
`WVR argues that Petition requires this term to include “[a]n application
`
`[that] monitors the diagnostic information and [notifies] the customer service Web
`
`site.” Response, at 45. However, the Petition asserts that claim 77 is obvious in
`
`view of the disclosures of Ito, Lind, and Hsieh, including Lind’s description of a
`
`communication apparatus enabling voice communication by a passenger (i.e.,
`
`“cellular phone”), and communication with a remote monitoring station (i.e., a
`
`diagnostic monitoring application that interfaces with a customer service provider
`
`to remotely monitor the vehicle status). WVR’s attempt to raise an issue where
`
`none exists should be given no weight.
`
`C. The Petition Provides Express Reasons to Combine the Cited
`Prior Art
`
`As set forth in the Petition (e.g., at 26-28 and 56-59), following the
`
`framework laid out by the Supreme Court in KSR and Graham, a person of
`
`ordinary skill in the art, at the time the alleged inventions of the claims under
`
`review were made, could have combined, and would have found it obvious to
`
`combine, Ito and Lind, as well as Ito, Lind and Hsieh.
`
`For example, it would have been obvious to a person of ordinary skill in the
`
`art, at the time the alleged inventions of claims 22, 42, 75, and 77 were made, to
`
`13
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`
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`use the vehicle computer and display system described by Ito, which, for example,
`
`displays maps and directions, in the Network Vehicle described by Lind, in view of
`
`the known benefits of doing so, in order 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, I21-1), as well as “a
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`communications navigation system which is able to carry out a satisfactory route
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`guidance even if the amount of data to be transmitted to the moving body is
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`reduced,” (Ex. 1003, 2:65-67) and to “simplify the structure of a vehicle navigation
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`apparatus” (Id., 3:2-3). Ex. 1002, ¶¶ 33-34.
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`Lind and Ito also contain interrelated disclosures, as each addresses
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`problems related
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`to displaying
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`information, and
`
`in particular navigation
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`information, in a useful manner. Indeed, the ’037 patent purports to solve problems
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`related to “obtaining and displaying information,” (Ex. 1001, Abstract) and to
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`“allow the occupants of the elevator . . . to use their time more efficiently and
`
`obtain needed information” (Id., 4:1-7). Ex. 1002, ¶ 34. Lind states that the purpose
`
`of the Network Vehicle is “aimed at offering 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, I21-1. Ito and Lind disclose the
`
`necessary hardware to receive voice inputs, wirelessly connect to a remote
`
`database, and retrieve information from remote sources, such as the Internet,
`
`14
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`
`
`including navigation information and maps. Ex. 1003, 9:51-67, 10:51-57; Ex.
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`1004, I21-1-I21-3; Ex. 1002, ¶ 34. It would have been obvious to display maps
`
`similar to those disclosed in Figs. 9(A) and 9(B) of Ito in the vehicle disclosed in
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`Lind. Ex. 1002, ¶ 34. In addition, selecting a destination that is accessible by the
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`transport apparatus or accessible by the occupant is no more than a particular
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`implementation of the geographic database disclosed in Ito. Id.
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`Further, given the known demands of the time, and the background
`
`knowledge of a person of ordinary skill in the art, the obviousness of the
`
`challenged claims of the ’037 patent are apparent. As described in the Petition
`
`(e.g., at 27-28), years before the earliest filing date referred to on the face of the
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`’037 patent, as well as contemporaneously with the filing of the ’037 patent, other
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`companies were working on vehicles having internet connectivity, speech-
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`recognition, and navigation, including the Volkswagen Infotainment Car, the
`
`Connected CarPC, the Daimler-Benz Internet Multimedia on Wheels Concept Car,
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`Microsoft’s Auto PC, and Visteon’s ICES system. Ex. 1002, ¶¶ 22-32.
`
`
`
`As further described in the Petition (e.g., at 58-59), a person of ordinary skill
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`in the art at the time the alleged invention of claim 75 of the ’037 patent was made
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`would have found it obvious to use the rear-facing video camera described by
`
`Hsieh in the vehicle systems disclosed in Ito and Lind to, for example, “provide a
`
`vehicle monitoring apparatus including a rear video camera mounted on a rear
`
`15
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`
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`portion of a vehicle … to transmit a ‘picture’ of the subject positioned at the rear
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`side of the vehicle to display a picture on a television placed in the vehicle.” Ex.
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`1006, 1:39-53; Ex. 1002, ¶ 40. Indeed, it is obvious that the rear-facing video
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`camera in Hsieh can be incorporated into the systems in Ito and Lind in order to
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`provide, e.g., a backup camera, which would utilize the existing computing
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`technology and display already available in those systems. Ex. 1002, ¶ 40. Hsieh
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`describes that video images from the video cameras are viewable on a display
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`“mounted ... in the center console of the car 1.” Ex. 1006, 2:20-24. The Network
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`Vehicle, which also includes a center console display, includes the necessary
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`hardware for displaying video images from Hsieh’s video cameras. Hsieh
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`recognizes the benefits of providing a backup camera, in order to “transmit a
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`‘picture’ of the subject positioned at the rear side of the vehicle ... for preventing
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`an accidental collision.” Id. at 1:51-57. In addition, the alleged invention of claim
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`75 is obvious in view of the systems described in Lind and Ito to, for example,
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`allow a driver to contact a remote monitoring center when customer service is
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`desired.
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`WVR does not dispute the above evidence showing the obviousness of
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`combining the cited prior art. Instead, WVR argues that combining Ito with Lind
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`would render Ito unsatisfactory for its intended purposes of reducing data
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`transmission from a navigation base to a moving body, and simplifying the
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`16
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`
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`structure of a vehicle navigation apparatus. See Response, at 47-49. However, a
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`finding of obviousness does not require that the prior art describe the most
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`desirable combination of teachings. See, e.g., In re Fulton, 391 F.3d 1195, 1200
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`(Fed. Cir. 2004) (“Appellants’ argument is unpersuasive from a legal standpoint
`
`because it again relies on the mistaken premise that the prior art must teach that a
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`particular combination is preferred, or ‘optimal,’ for the combination to be
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`obvious.”). Nor does an assessment of obviousness “ignore the modifications that
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`one skilled in the art would make to a device borrowed from the prior art.” In re
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`ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
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`WVR also contests the “proposed combination of Ito, Lind, and Fujiwara.”
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`See Response, at 49. However, Fujiwara is not proposed as a basis for
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`unpatentability of claims 22, 42, 75, and 77, so that WVR’s dispute as to its
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`inclusion is moot.
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`
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`WVR then argues that the Petition fails to analyze the ’037 patent claims as
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`a whole (at 49-50):
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`For example, Petitioner cites nothing that would suggest
`to the person of ordinary skill in the art should [sic]
`combine the use of an elegant and simplified voice-entry
`protocol and touch screen display, along with automatic
`server access using the digitized speech, to produce a
`“rapid” access to needed information, and present the
`information in an immediately cognizable graphical
`17
`
`
`
`format obtained from the server, including a depiction of
`other entities relative to the named entity. Ex. 1001 at
`Abstract, 1:51-60, 3:13, 4:10-13, 10:33-36, 12:1-3,
`19:43-20:8.
`
`However, the challenged claims do not require “the use of an elegant and
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`simplified voice-entry protocol,” “touch screen display,” “automatic server access
`
`using the digitized speech,” “a ‘rapid’ access to needed information,” or presenting
`
`“the information in an immediately cognizable graphical format obtained from the
`
`server, including a depiction of other entities relative to the named entity,” so that
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`the question of whether such elements should be combined does not inform the
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`obviousness analysis. If such features are described in the specification, WVR does
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`not explain, or even assert, that the broadest reasonable interpretation of the claims
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`requires these elements.
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`III. CONCLUSION
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`As set forth in the Petition, claims 1, 22, 37, 42, 48, 71, 72, 73, 75, and 77 of
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`the ’037 patent are invalid in view of the prior art cited therein. WVR has since
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`disclaimed claims 1, 37, 48, 71, 72, and 73. For the reasons set forth in the
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`Petition, and herein, Petitioner, Volkswagen Group of America, Inc., respectfully
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`requests the cancellation of claims 22, 42, 75, and 77 of the ’037 patent.
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`18
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`Dated: November 14, 2016
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`
`Michael J. Lennon (Reg. No. 26,562) Lead Coun
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