Trials@uspto.gov
`571-272-7822
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`
`Paper 7
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`Entered: 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 IPR2016-00125
`Patent 8,290,778 B2
`____________
`
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`EASTHOM, 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: 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 IPR2016-00125
`Patent 8,290,778 B2
`____________
`
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`EASTHOM, 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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`IPR2016-00125
`Patent 8,290,778 B2
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`I. INTRODUCTION
`
`Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes
`review of claims 1, 3, 5, 8, 9, 22, 27, 28, and 30 of U.S. Patent No.
`8,290,778 B2 (Ex. 1001, “the ’778 patent”). Pet. 2. Patent Owner did not
`file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted “unless . . .
`the information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition, we determine that the information
`presented shows there is a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of at least one of claims 1, 3, 5, 8,
`9, 22, 27, 28, and 30 of the ’778 patent (“the challenged claims”).
`A. Related Matters
`According to the parties, the ’778 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, No. 3:14-cv-02670-CAB-WVG (S.D. Cal.); West
`View Research, LLC v. Hyundai Motor Co., Ltd., 3:14-CV-02675-CAB-
`WVG (S.D. Cal.); West View Research, LLC v. Nissan Motor Co., 3:14-cv-
`02677-CAB-WVG (S.D. Cal.); and West View Research, LLC v. Tesla
`Motors, Inc., 3:14-CV-02679-CAB-WVG (S.D. Cal.). See Pet. 1, Paper 4,
`2.
`
`Petitioner filed other petitions challenging the patentability of certain
`subsets of claims in the following patents owned by Patent Owner: (1) U.S.
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`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. 8,682,673 B2
`(Case IPR2016-00137); (4) U.S. Patent No. 8,719,038 B1 (Case IPR2016-
`00146); (5) U.S. Patent No. 8,296,146 B2 (Case IPR2016-00156); (6) U.S.
`Patent No. 8,781,839 B1 (Case IPR2016-00177); and (7) U.S. Patent No.
`8,065,156 B2 (Case IPR2015-01941). See Pet. 1–2.
`B. The ’778 Patent
`The ’778 patent generally relates to personnel transport apparatuses,
`such as trams, shuttles, or moving walkways, and, in particular, to elevators
`that incorporate various information technologies. Ex. 1001, 2:2–23, 6:12–
`21. The ’778 patent also applies to stationary devices, such as kiosks. Id. at
`6:17–18. According to the ’778 patent, one problem related to these
`apparatuses involves determining the location of a person, firm, or store
`within a building or structure. Id. at 2:24–37. For instance, conventional
`building directories often do not provide precise location information other
`than a floor or suite number. Id. The ’778 patent describes recent advances
`in data networking, displays, personal electronics, and speech recognition
`and compression algorithms and corresponding processing, as enhancing the
`ability to address the aforementioned problem. Id. at 3:31–35.
`The ’778 patent describes using these recent advances to create a
`useful apparatus for locating an organization or entity disposed within a
`building or structure. Id. at 4:1–12. Figure 1 of the ’778 patent, reproduced
`below, illustrates a block diagram of one embodiment of an information and
`control system that is used within an elevator car. Id. at 5:12–14, 6:23–24.
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`As shown in Figure 1, system 100 includes 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, display device 113, and
`remote central server 170 interfacing a device such as a local area network
`(“LAN”) network interface card. Id. at 6:23–47; 8:35–47. 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 random access memory (“RAM”) module 127. Id. at 6:45–
`50; Fig. 1.
`Input device 102 can be a touch sensitive keypad with a display
`screen. Id. at 6:36–44. 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.
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`Microphone 118 generates signals that ADC 141 digitizes, which, in
`turn, DSP 125 processes using the SR algorithm to produce digital
`representations of the user’s speech. Id. at 7:9–13. DSP 125 uses a speech
`library or dictionary stored within SR RAM module 127 to match phenome
`strings resulting from linear predictive coding analysis with known words.
`Id. at 7:13–16. After a match, 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 7:16–19.
`
`C. Illustrative Claim
` Of the challenged claims, claims 1, 27, 28, and 30 are independent.
`Illustrative claim 1 follows:
`1. Computerized apparatus comprising:
` a wireless interface;
` data processing apparatus;
` a touch-screen input and display device;
` a speech recognition apparatus in data communication with the
`data processing apparatus; and
` a storage apparatus in data communication with the data
`processing apparatus, said storage apparatus comprising at least one
`computer program, said at least one program being configured to:
`
`receive a digitized speech input via the speech
`recognition apparatus, the input relating to an organization
`or entity which a user wishes to locate;
`
`based at least in part on the input, cause identification
`of a location associated with the organization or entity;
`and
`
`provide a graphical or visual representation of the
`location on the touch screen input and display device in
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`order to aid a user in finding the organization or entity, the
`graphical or visual representation of the location also
`comprising a graphical or visual representation of the
`surroundings of the organization or entity.
`Ex. 1001, 25:25–46.
`D. Alleged Grounds of Unpatentability
`Petitioner challenges claims of the ’778 patent on the references and
`alleged grounds of unpatentability under 35 U.S.C. § 103(a) as set forth in
`the following table:
`Reference(s)
`Ito1 and Lind2
`Ito, Lind, and Fujiwara3
`Ito, Lind, and Walters4
`
`Claims Challenged
`1, 22, 28, and 30
`3, 5, and 27
`8 and 9
`
`Pet. i–ii, 6.
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, the Board construes 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.
`
`
`1 Ito et al., U.S. Patent No. 6,249,740 B1 (June 19, 2001) (Ex. 1003).
`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 (Ex. 1004).
`3 Fujiwara et al., EPO Pat. App. Pub. No. 0 829 704 A2 (Mar. 18, 1998)
`(Ex. 1005).
`4 Walters, U.S. Patent No. 6,188,956 B1 (Feb. 13, 2001) (Ex. 1006).
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`Ct. 890 (mem.) (2016). Under this standard, 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 submits that claim terms in this proceeding carry their
`ordinary and customary meaning, as would be understood by one with
`ordinary skill in the art in light of the ’778 patent Specification. See Pet. 6
`(citing 37 C.F.R. § 42.100(b)). On this record at this initial stage, Petitioner
`persuasively shows that no reason exists to construe explicitly most of the
`claim terms. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (explaining that only those claim terms or phrases
`that are in controversy need to be construed, and only to the extent necessary
`to resolve the controversy).
`Petitioner also submits that claim 30 recites “means for data
`processing,” raising a presumption that § 112 ¶ 6 applies. Pet. 6 (citing
`Personalized Media Commc’n, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
`704 (Fed. Cir. 1998)). Petitioner contends as follows:
`The term “means for data processing” is subject to 35 U.S.C.
`§ 112(6) since it is expressed as a “means” for performing a
`function—“data processing” —without reciting structure in
`support thereof. The ’778 patent describes that “the processor
`106, video RAM 107, storage device 108, 110, and other
`components (including necessary power supplies, not shown)
`are disposed within equipment storage housings (not shown)”
`as an “arrangement . . . used primarily to allow rapid access to
`and processing of data by the system 100.” Ex. 1001, 8:11–18.
`Therefore, the “means for data processing” recited in claim 30
`
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`should be construed to mean “a processor” and equivalents
`thereof.
`Pet. 6–7.
`
`For purposes of this Decision, we adopt Petitioner’s claim
`construction for the term “means for data processing” as a processor and
`equivalents thereof. “A microprocessor or general purpose computer lends
`sufficient structure only to basic functions of a microprocessor. All other
`computer-implemented functions require disclosure of an algorithm.” EON
`Corp. IP Holdings, LLC v. AT & T Mobility LLC, 785 F.3d 616, 623, 621–
`22 (Fed. Cir. 2015) (“As we stated in Katz, a microprocessor can serve as a
`structure for a computer-implemented function only where the claimed
`function is ‘coextensive’ with a microprocessor itself. . . . Examples of such
`coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’
`data.” (citing in In re Katz Interactive Call Processing Patent Litigation, 639
`F.3d 1303, 1316 (Fed. Cir. 2011))).
`B. Alleged Obviousness of Claims 1, 22, 28, and 30 Over Ito and Lind
`Petitioner contends that claims 1, 22, 28, and 30 would have been
`obvious over Ito and Lind. Pet. 9–37. To support its contentions, Petitioner
`provides explanations as to how the prior art discloses each claim limitation.
`Id. Petitioner also relies upon the Declaration of Mr. Scott Andrews to
`support its positions. Ex. 1002 (“Andrews Declaration”).
`1. Ito (Ex. 1003)
`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,
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`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. Id. at 8:13–16. Vehicle navigation
`apparatus 100 includes input 105, display 106, processing section 101, data
`storage 103, program storage 102, voice output section 107, and transmitting
`and receiving station 108. Id. at 9:53–58. Input 105 includes a data input
`device having voice recognition that allows a user to control the
`communications navigation system by using voice commands. Id. at 10:39–
`47. Input 105 further includes (liquid crystal) display 106 with a touch panel
`or icon inputs. Id. at 10:39–50. Display 106 may display detailed maps of
`the departure point, course-change points along a recommended route, and
`the destination, and also provides corresponding voice guidance. Id. at
`18:62–67.
`
`2. Lind (Ex. 1004)
`Lind discloses a vehicle containing hardware and software that allow
`
`a prospective passenger to use an “onboard network” to connect wirelessly
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`to the Internet and to retrieve wireless information from other sources, such
`as DirecTV. Ex. 1004, 10.5 Lind’s onboard system includes a touch screen
`liquid crystal display (LCD) that serves as a user interface, and a speech
`recognition sub-system to allow access to features through voice commands.
`Id. at 10–11. The system also provides access to Internet service providers,
`navigation, location services for restaurants and hotels, and text-to-speech
`synthesis outputs for listening to e-mail messages. Id. at 10, 11, 15, Fig. 9.
`Figure 3, representing a diagram of Lind’s off-board system
`architecture, follows:
`
`
`Figure 3 of Lind shows links to the Internet and other wireless services. See
`id. at 10.
`
`3. Analysis
`As noted above, Petitioner asserts that the collective teachings of Ito
`and Lind describe or render obvious the elements of claims 1, 22, 28, and
`30. See Pet. 9–37. For example, Petitioner relies on Ito’s processing section
`101 that includes a central processing unit (CPU), supplemented by Lind’s
`
`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 1005.
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`network computer, as teaching the “data processing apparatus” of claims 1
`and 28, and “means for data processing” of claim 30. Id. at 11–12 (citing
`Ex. 1003, 9:51–67; Ex. 1002 ¶ 5; Ex. 1004, 10, Fig. 2). Petitioner also
`points out that Lind generally discloses microprocessors. Id. at 13 (citing
`Ex. 1004, 9).
`Petitioner relies on Ito’s receiving and transmitting station 108, which
`includes a modem, and portable phones, as teaching the recited “wireless
`interface” of claim 1, 28, and 30. Id. at 11–12 (citing Ex. 1003, 8:51–57;
`Ex. 1002 ¶ 6). Petitioner relies further on Lind’s wireless network, wireless
`modem, satellite link, and roof-mounted antenna, to supplement the
`teachings of Ito. Id. at 12 (citing Ex. 1004, 10; Ex. 1002 ¶ 6).
`Petitioner relies on Ito’s display 106, which includes an LCD display
`and touch panel as part of input device 105 for obtaining travel route or
`direction information, as teaching the recited “touch-screen input and
`display device” of claims 1, 28, and 30. Id. (citing Ex. 1003, 10:48–50,
`15:22–26; Ex. 1002 ¶ 9). Petitioner further relies on Lind’s various displays,
`including a center console touch-screen LCD, to supplement the teachings of
`Ito. Id. at 13 (citing Ex. 1004, 11–12; Ex. 1002 ¶ 9).
`Petitioner relies on Ito’s voice recognition system included as part of
`input device 105 as teaching the recited “speech recognition apparatus” of
`claims 1, 28, and 30. Id. at 13–14 (citing Ex. 1003, 10:39–47; Ex. 1002
`¶ 10). Petitioner relies further on Lind’s voice recognition system, which
`processes voice commands to provide navigation help, traffic updates, travel
`directions, and location of entities, such as hotels or restaurants, to
`supplement the teachings of Ito. Id. at 14 (citing Ex. 1004, 9–11; Ex. 1002
`¶ 11).
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`Addressing the claim 1 limitation of a “visual representation of the
`surroundings of the organization or entity,” Petitioner points to Ito’s Figures
`9, 40(C), and 44. See Pet. at 18–19. Petitioner contends that Ito’s Figure 9
`discloses selectable displayed area guidance data for some designated areas,
`including landmarks, and Ito’s Figures 40(C) and 44 display similar
`landmarks, such as a bank, fire station, and department store. See Pet. 18–19
`(citing Ex. 1003, 8:41–50; 18:37–43); see also Ex. 1003, 27:5–16 (guidance
`data is selectable).
`Petitioner relies on the combined teachings of Ito and Lind to address
`the remaining limitations of claims 1, 28, and 30 in a similar manner. See
`Pet. 14–19. Further regarding the limitation of “receiving digitized speech
`via the speech recognition apparatus,” as recited in claims 1, 28, and 30,
`Petitioner contends, if not inherent in Ito and Lind, that it would have been
`obvious to digitize and analyze an analog voice signal, using for example, a
`digital signal processor. See id. at 15–16 (citing Ex. 1008, 5:17–30;
`Ex. 1002 ¶ 13). In support of its contentions, Petitioner notes that Lind
`discloses processing voice commands for web commands and an advanced
`speech recognition system, similar to Ito’s voice recognition system. Id. at
`15–16 (citing Ex. 1003, 10:39–47; Ex. 1004, 11). Petitioner also contends
`that Patent Owner “has admitted that all speech recognition systems
`inherently digitize the speaker’s analog voice.” Id. at 16 (citing Ex. 1010,
`729). Similar to that admission, the ’778 patent admits that “[m]yriad
`speech recognition systems and algorithms are available, all considered
`within the scope of the invention disclosed herein.” Ex. 1001, 6:56–58.
`Claim 22 depends from claim 1, and further requires “wherein the at
`least one computer program is further configured to generate on the touch-
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`screen input and display device a plurality of soft function keys or icons”
`that can select “a function associated therewith relating to obtaining
`directions” and “points of interest.” Id. at 27:11–18. Petitioner relies on
`Ito’s disclosure of various icons described in relation to Figures 23–25 for
`selecting various guidance options via input 105/display 106. See Pet. 20
`(citing Ex. 1003, 30:63–32:60). As noted above in connection with claim 1,
`Ito discloses that area guidance data associated with intersections and
`starting points are selectable. See Ex. 1003, 17:52, 27:3–16, Figs. 9A, 9B
`(travel direction), 10 (landscape image “MF”), 44 (Bank, Department Store,
`Fire Station). At this preliminary stage of the proceeding, we initially
`determine that claim 22 does not preclude a “point[] of interest” from being
`part of depicted landmark associated with a selection, for example, area
`guidance data at a starting or intermediate intersection point.
`Petitioner also relies on Lind’s disclosure of soft keys and icons for
`the “Office” mode, and Lind’s disclosure that “the touch-screen LCD serves
`as a user interface for controlling nearly all of the Network Vehicle’s
`multimedia functions.” Pet. 21 (quoting Ex. 1004, 11; citing Ex. 1002
`¶¶ 19–20). Petitioner adds that Lind discloses displaying navigation maps
`and other items of interest. See id. Lind also discloses that a “driver can . . .
`request travel directions and traffic updates from the Web or other sources”
`through the “speech recognition system.” Ex. 1004, 11. In addition to
`teaching at least some soft key functions as Petitioner indicates, Lind states
`that “[v]oice activated commands can be used with all of the center console
`functions” (see id. (emphasis added)), further suggesting, on this preliminary
`record, the use of icons or soft keys to select directions and points of
`interest.
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`Petitioner also generally contends that a person of ordinary skill in the
`art would have found it obvious to combine Ito’s and Lind’s similar vehicle
`location systems, 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,’ . . . and to ‘simplify the structure of a
`vehicle navigation apparatus’.” Pet. 23–24 (quoting Ex. 1004, 9; Ex. 1003,
`3:2–3; Ex. 1002 ¶¶ 32, 33).
`Based on the present record, and for purposes of this Decision,
`Petitioner provides adequate support for the combination of the references.
`For example, Petitioner shows that it would have been obvious to combine
`teachings related to the similar voice recognition navigation and location
`systems in order to provide relevant information quickly and safely to users.
`See id. at 23–24. Providing guidance on the question of obviousness, the
`Court instructs that “[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). The features disclosed in the respective prior art are directed to
`achieving similar goals. On this preliminary record, Petitioner provides
`sufficient evidence suggesting that a person of ordinary skill would have had
`a sufficient reason to use the interrelated teachings of each reference in
`combination, and has demonstrated articulated reasoning with rational
`underpinning in support of its obviousness challenge. See Pet. 23–24.
`Based on the preliminary record, we determine that Petitioner
`demonstrates a reasonable likelihood of prevailing on its assertion that the
`combination of Ito and Lind would have rendered obvious claims 1, 22, 28,
`and 30.
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`C. Alleged Obviousness of Claims 3, 5, and 27
`Over Ito, Lind, and Fujiwara
`Relying on the Andrews Declaration, Petitioner contends that claims
`3, 5, and 27 would have been obvious over Ito, Lind, and Fujiwara. Pet. 37–
`55. To support its contentions, Petitioner provides explanations as to how
`the proffered combination teaches the subject matter in each challenged
`claim. Id.
`
`1. Fujiwara (Ex. 1005)
`Fujiwara discloses an intelligent navigation system for a vehicle, such
`as a car. Ex. 1005, Abstract. Fujiwara’s system includes advertisements
`appearing on a map display. See id. at 5:53–6:2; Fig. 22.
`Figure 22 of Fujiwara is reproduced below:
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`The top illustration of Figure 22 depicts a map display that includes an
`advertisement for a hotel; the advertisement indicates a vacancy for the
`hotel, a price for the hotel per night, and a free sauna for the hotel. See id. at
`5:53–6:2; 16:40–17:25.
`
`2. Analysis
`Addressing the feature in claim 3 of “advertising that is contextually
`related to the organization or entity,” and the feature in claim 5 of
`“advertising is displayed substantially contemporaneous with a display of
`the graphical or visual representation of that location,” Petitioner contends
`that Fujiwara discloses advertising sales information on an example map
`display, as depicted in Figure 22. Pet. 38 (reproducing Fig. 22). The display
`contextually relates the advertisement information to an organization by
`displaying the two contemporaneously (e.g., hotel with advertising about
`room rates, vacancy, and sauna). Id. at 38–39 (citing Ex. 1005, 5:53–6:2,
`Fig. 22; Ex. 1002 ¶¶ 34–35); see also Ex. 1005, Fig. 23 (hotel information),
`16:40–17:25 (describing display of data including with respect to Fig. 22).
`Addressing claim 27, Petitioner relies on its showing with respect to
`the same or similar limitations recited in claims 1 and 22, and further relies
`on Fujiwara to suggest the following limitation:
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`provide a graphical or visual representation of the location on
`the touch screen input and display device in order to aid a user
`in finding the organization or entity, the graphical or visual
`representation of the location comprising a map graphic
`showing the location of the organization or entity relative to
`other organizations or entities proximate thereto.
`Ex. 1001, 27:49–55; see Pet. 41.
`Regarding this claim 22 limitation, Petitioner contends that the map
`disclosed in the display as represented by Figure 22 of Fujiwara (reproduced
`above), indicates hotels located proximate to one another, and the maps
`disclosed in Figs. 40(C) and 44 of Ito indicate a bank, fire station, and
`department store displayed relative to each other. Pet. 41 (citing Ex. 1002
`¶ 37).
`Petitioner relies on the combined teachings of Ito, Lind, and Fujiwara
`to address the remaining limitations of claim 27, including the functions of
`“said at least one program.” See id. 40–46; Ex. 1002. Regarding the claim
`27 limitation of “comprises an interface compliant with an IEEE 802.11
`standard” (Ex. 1001, 28:20–21), Petitioner cites a reference to Greenwood
`(Ex. 1009), thereby providing evidence to show that skilled artisans would
`have known that the IEEE 802.11 wireless standard applies to a variety of
`known wireless systems, including those disclosed by Ito and Lind. See Pet.
`46 (citing Ex. 1009, 3:11–17).
`
`Petitioner contends that combining Fujiwara, with the system of Ito as
`modified by Lind, including providing Fujiwara’s advertising or relevant
`location information as set forth in challenged claims 3, 5, and 27, would
`have been obvious in order to provide “beneficial information to the user.”
`Id. at 48 (quoting Ex. 1005, 10:16; citing id. at 9:58–10:40; Ex. 1002 ¶ 45).
`
`
`
`17
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`IPR2016-00125
`Patent 8,290,778 B2
`
`Petitioner also contends that “[p]roviding advertising information, as
`disclosed by Fujiwara, in the systems of Ito and Lind benefits the user by
`providing useful information, such as room rates, vacancy information, etc.,
`such that users can be alerted of services of which they might not otherwise
`be aware.” Id. at 49. Petitioner further contends that combining the three
`systems to provide a suitable navigation system would have been obvious
`for the purpose of providing a suitable amount of intelligible and desired
`information. See id. at 48 (citing Ex. 1005, 1:55–2:2; Ex. 1002 ¶ 45).
`Based on the preliminary record, we determine that Petitioner
`demonstrates a reasonable likelihood of prevailing on its assertion that the
`combination of Ito, Lind, and Fujiwara would have rendered claims 3, 5, and
`27 obvious.
`
`D. Alleged Obviousness of Claims 8 and 9
`Over Ito, Lind, and Walters
`Relying on the Andrews Declaration, Petitioner contends that claims 8
`and 9 of the ’778 patent would have been obvious over the combination of
`Ito, Lind, and Walters. Pet. 55–60. To support its contentions, Petitioner
`provides explanations as to how the proffered combination teaches the
`subject matter in each challenged claim. Id.
`Claim 8 depends from claim 1, and requires the computerized
`apparatus to be “transportable.” Ex. 1001, 26:5–7. Claim 9 depends from
`claim 8, and requires the computerized apparatus to be mounted on a
`transport apparatus so that an operator thereof “can view and access a touch
`screen of the touch screen input and display device, and utilize the speech
`recognition apparatus, while operating the transport apparatus.” Id. at
`26:12–15.
`
`
`
`18
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`IPR2016-00125
`Patent 8,290,778 B2
`
`
`Relying on additional teachings in Walters, Petitioner explains how
`the proffered combination suggests the subject matter of these challenged
`claims, and present a rationale to combine their respective teachings. Pet.
`57–58 (citing Ex. 1006, 4:38–49, 63–66; Ex. 1004, 10, 13; Ex. 1002 ¶ 46).
`For example, Petitioner relies on Walters’s teaching that “the navigation unit
`may be ‘mounted on the dash of a vehicle.’” Id. at 57 (quoting Ex. 1006,
`4:63–66; citing Ex. 1002 ¶ 47). Petitioner contends that Lind and Ito
`similarly “disclose touch input and display devices” for similar systems. See
`id. 57–58 (citing Ex. 1003, 10:48–50, 15:22–26; Ex. 1004, 11; Ex. 1002
`¶ 47). Based on the combined teachings, Petitioner reasons that it would
`have been “obvious to implement the computerized information and display
`systems of Ito and Lind as transportable devices to, for example, allow the
`device to be positioned in a comfortable manner for the driver, passenger, or
`other user.” Id. at 58 (citing Ex. 1002 ¶ 46).
`Based on the preliminary record, we determine that Petitioner
`demonstrates a reasonable likelihood that it would prevail in showing that
`the combination of Ito, Lind, and Walters would have rendered obvious
`dependent claims 8 and 9.
`
`III. CONCLUSION
`We determine that the information presented in the Petition
`demonstrates that there is a reasonable likelihood that Petitioner would
`prevail in challenging claims 1, 3, 5, 8, 9, 22, 27, 28, and 30 of the ’778
`patent as unpatentable under § 103(a). At this stage of the proceeding, we
`have not made a final determination with respect to the patentability of these
`challenged claims.
`
`
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`IPR2016-00125
`Patent 8,290,778 B2
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an inter partes review is hereby instituted based on the following grounds
`under § 103(a):
`A. claims 1, 22, 28, and 30 as unpatentable over the combination of
`Ito and Lind;
`B. claims 3, 5, and 27 as unpatentable over the combination of Ito,
`Lind, and Fujiwara; and
`C. claims 8 and 9 as unpatentable over the combination of Ito, Lind,
`and Walters; and
`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.
`
`
`
`20
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`IPR2016-00125
`Patent 8,290,778 B2
`
`For PETITIONER:
`Michael J. Lennon
`Clifford A. Ulrich
`Michelle Carniaux
`KENYON & KENYON LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`mcarniaux@kenyon.com
`
`
`
`For PATENT OWNER:
`Peter J. Gutierrez, III
`Mark Wang
`Kim H. Leung
`GAZDZINSKI & ASSOCIATES, PC
`peter.gutierrez@gazpat.com
`DOCKET@GAZPAT.COM
`kim.leung@gazpat.com
`
`
`
`
`21
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