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 IPR2016-00156
`Patent 8,296,146 B2
`____________
`
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, 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 IPR2016-00156
`Patent 8,296,146 B2
`____________
`
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2016-00156
`Patent 8,296,146 B2
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`
`I. INTRODUCTION
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1, 10, 11, 17–
`19, 27, and 30 of U.S. Patent No. 8,296,146 B2 (“the ’146 patent,”
`Ex. 1001). Pet. 2. West View Research, LLC (“Patent Owner”) did not file
`a Preliminary Response. Under 35 U.S.C. § 314(a), 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.”
`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, 10, 11,
`17–19, 27, and 30 of the ’146 patent (“the challenged claims”).
`A. Related Matters
`According to the parties, the ’146 patent is involved in the following
`cases pending in the U.S. District Court for the Southern District of
`California: West View Research, LLC v. Audi AG, No. 3:14-cv-02668-BAS-
`JLB; West View Research, LLC v. Bayerische Motoren Werke, AG, No.
`3:14-cv-02670-CAB-WVG; West View Research, LLC v. Hyundai Motor
`Co., Ltd., 3:14-CV-02675-CAB-WVG; West View Research, LLC v. Nissan
`Motor Co., 3:14-cv-02677-CAB-WVG; and West View Research, LLC v.
`Tesla Motors, Inc., 3:14-CV-02679-CAB-WVG. 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.
`Patent No. 8,719,037 B2 (Case IPR2016-00123); (2) U.S. Patent No.
`2
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`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. 8,781,839 B1 (Case IPR2016-00177); and (7) U.S. Patent No.
`8,065,156 B2 (Case IPR2015-01941). See Pet. 1–2.
`B. The ’146 Patent
`The ’146 patent is titled “Computerized Information Presentation
`Apparatus,” and issued October 23, 2012. Ex. 1001, at [54], [45]. The ’146
`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, 1:60–63, 6:36–45.
`According to the ’146 patent, one problem associated with using these
`devices relates to determining the location of a person, firm, or store within a
`building or structure. Id. at 2:20–33. 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. The ’146 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 3:23–30
`The ’146 patent describes using these recent advances to create an
`apparatus for providing a user with desired information on a plurality of
`topical areas. Id. at 4:23–46. Figure 1 of the ’146 patent, reproduced below,
`illustrates a block diagram of one embodiment of an information and control
`system within, for example, an elevator car. Id. at 5:36–38, 6:51–52.
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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, and display device 113.
`Id. at 6:49–59. SR module 104 includes microphone 118, analog-to-digital
`converter (“ADC”) 141, and an algorithm run on digital signal processor
`(“DSP”) 125 having an associated random access memory (“RAM”)
`module 127. Id. at 7:4–17.
`Input device 102 can be a touch sensitive keypad with a display
`screen. Id. at 6:59–7:3. 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.
`Microphone 118 generates signals that ADC 141 digitizes, which, in
`turn, DSP 125 processes using the SR algorithm to produce digital
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`representations of the user’s speech. Id. at 7:18–34. 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 7:35–42. 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 7:42–45.
`
`C. Illustrative Claim
` Of the challenged claims, claims 1, 17–19, and 27 are independent.
`Claims 10 and 11 depend from claim 1; and claim 30 depends from claim
`27. Illustrative claim 1 follows:
`
`1. Computer readable apparatus comprising a storage
`medium, said storage medium comprising at least one computer
`program with a plurality of instructions, the computer readable
`apparatus being part of a computerized information system
`disposed on or within a transport apparatus configured to
`transport at least one person from one location to another, the
`computerized information system being configured to adaptively
`provide a user with desired information relating to a plurality of
`topical areas, said at least one program being configured to:
`
`receive a digitized representation of a speech input of the
`user of the transport apparatus via a speech recognition apparatus
`in communication with the computerized information system,
`the speech input relating to a desired function to be performed by
`the computerized information system, the desired function
`relating to at least one of the topical areas;
`
`cause wireless access of a remote server to access
`information necessary to perform the desired function;
`
`receive accessed information obtained from the remote
`server via the wireless interface; and
`
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`implement the desired function on the computerized
`
`information system using at least a portion of the received
`information and at least one of: (i) a touch-screen display and
`input device of the computerized information system; and/or (ii)
`a speech synthesis apparatus of the computerized information
`system.
`
`Ex. 1001, 25:47–26:6.
`
`
`D. Alleged Grounds of Unpatentability
`Petitioner challenges claims of the ’146 patent based on the following
`references and alleged grounds of unpatentability under 35 U.S.C. § 103(a)
`as set forth in the table below.
`References
`Drury1 and Lind2
`Drury, Lind, and Ito3
`Drury, Lind, Class4, and Ito
`
`Claim(s) Challenged
`1, 10, 11, 18, 27, and 30
`19
`17
`
`Pet. 8.
`
`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.
`
`
`1 Drury, U.S. Patent No. 6,707,421 B1, iss. Mar. 16, 2004 (Ex. 1004).
`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. 1005).
`3 Ito, U.S. Patent No. 6,249,740 B1, iss. June 19, 2001 (Ex. 1007).
`4 Class, U.S. Patent No. 6,230,132 B1, iss. May 8, 2001, filed Mar. 10, 1998
`(Ex. 1006).
`
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`§ 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 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 ’146 patent Specification. See Pet. 8
`(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) (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 does request that we construe the phrase “ad hoc
`communication link” found in claims 18 and 27 as “a data interface that is
`transient in nature, such as a wireless device (e.g., Bluetooth, IrDA, WiFi,
`802.11), a local area wireless link (e.g., WiFi or Bluetooth), a serial bus
`interface (e.g., USB, IEEE 1394, FireWire, RS-232), or UART.” Pet. 8. At
`this stage of the proceeding, we find this construction is consistent with the
`Specification (see Ex. 1001, 12:18–13:12), and we adopt it for purposes of
`this decision.
`Petitioner also submits that claim 18 recites four elements that contain
`the word “means.” Petitioner contends that we should construe the terms
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`“computerized means,” “means for networking,” and “means for speech
`synthesis” as subject to 35 U.S.C. § 112 ¶ 6. Pet. 9–12. Petitioner submits
`that the fourth “means” element, “speech recognition means,” is not subject
`to § 112 ¶ 6. Pet. 11. At this stage of the proceeding, we agree with
`Petitioner’s reasoning regarding these claim elements that is set forth in the
`Petition. Thus, we determine that “speech recognition means” is not subject
`to § 112 ¶ 6. We further construe the remaining “means” terms as follows:
`
`
`Limitation
`computerized
`means
`
`means for
`networking
`
`means for
`speech
`synthesis
`
`Function
`(a) receiving an input from the
`user; (b) causing utilization of a
`wireless interface and a means for
`networking
`in order to access information
`disposed on a remote server or
`database; (c) receiving the accessed
`information received via the
`wireless interface; and (d)
`providing the user with at least a
`portion of the accessed information
`relating to the directions to the
`business or entity
`Networking
`
`speech synthesis
`
`Corresponding Structure
`A central processor, for
`example, an Intel Pentium
`II®-based design or an
`AMD K600-series
`processor, and equivalents
`thereof
`
`An external network, a
`LAN, an internet, or the
`Internet, and equivalents
`thereof
`“a speech recognition
`module that converts a data
`file to an analog
`audio representation of
`voice[,] and equivalents
`thereof”
`
`
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`B.
`
`Alleged Obviousness of Claims 1, 10, 11, 18, 27, and 30
`Over Drury and Lind
`
`Petitioner contends that claims 1, 10, 11, 18, 27, and 30 would have
`been obvious over Drury and Lind. Pet. 12–40. 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 Scott Andrews
`(Ex. 1002) to support its positions. At this stage of the proceeding, we are
`persuaded by the Petitioner’s explanations and supporting evidence.
`1. Drury (Ex. 1004)
`Drury is titled “Driver Information System,” and generally relates to
`an information system for providing services, including traffic, navigation,
`and other information services, to a driver. Ex. 1004, at [54], Abstract. The
`information system is programmed to perform a number tasks. Id. at 1:65–
`2:36. The driver information system includes a handset module and a
`communication module, which can include a handset module and a
`communication module that make up a modular wireless telephone. Id. at
`1:65–2:2. The system can accept driver information commands entered by
`the user through a handset module (e.g., a modular wireless telephone) by
`speaking a command that is interpreted by a speech recognition system. Id.
`at 2:18–22. The system also is programed to retrieve information through a
`wireless communication interface, such as a cellular network, from a server
`in response to the driver information commands. Id. at 2:22–24. The
`system also can present the retrieved information on the handset module by
`presenting the information on the display of the handset, or by playing the
`information on the audio device of the handset. Id. at 2:24–36. Among the
`commands provided to the information system is a specification, by an
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`operator of a vehicle, of a desired destination. Id. at 5:1–6 (“The navigation
`service. . . enable[s] an operator of a vehicle to specify a desired destination,
`and then to be guided by the system to that destination while driving the
`vehicle.”).
`The information system disclosed by Drury is shown in Fig. 2,
`reproduced below:
`
`
`Figure 2 shows a block diagram of in vehicle components of the system. Id.
`at 3:54–55. As shown in Figure 2, each in-vehicle system includes onboard
`computer 210, which is used to coordinate the operation of other
`components, including input/output (“I/O”) 240, which provides an interface
`between the operator of the vehicle and the navigation system, and
`
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`communications system 250, which provides communications links from
`Global Position System satellites 140 and to and from server system 125.
`Id. at 9:65–10:6. Processor 212 is coupled to static storage 222, which is a
`non-volatile storage used to store code and data for the operation of the
`system. Id. at 10:23–25. Communication system 250 can include cellular
`transceiver 254, which can provide voice and data communication
`capabilities to the vehicle. Id. at 10:50–60.
`2. Lind (Ex. 1005)
`Lind discloses a vehicle containing hardware and software that allows
`
`a prospective passenger to use an “onboard network” to connect wirelessly
`to the Internet and to retrieve wireless information from other sources such
`as DirecTV. Ex. 1005, 10. Lind’s onboard system includes a touch screen
`liquid crystal display (“LCD”) that serves as a user interface, and a speech
`recognition and text-to-speech system to allow access to features through
`voice commands. Id. at 10–11. The system also provides access to Internet
`service providers and can be used for requests to listen to e-mail messages
`and locate restaurants and hotels. Id. at 10, 15.
`Figure 3, representing a diagram of Lind’s off-board system
`architecture, follows:
`
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`Figure 3 of Lind shows links to the Internet and other wireless services. See
`Ex. 1005, 10.
`
`3. Analysis
`As noted above, Petitioner asserts that the collective teachings of
`Drury and Lind describe or render obvious the elements of claims 1, 10, 11,
`18, 27, and 30. See Pet. 12–40. With respect to claim 1, for example,
`Petitioner relies on Drury’s processor and static storage, supplemented by
`the hardware and software of Lind’s network vehicle, as teaching the
`computer readable processing apparatus of claim 1. Pet. 15 (citing Ex. 1004,
`2:10–13, 10:23–25; Ex. 1002 ¶ 7; Ex. 1005, 9–10).
`As for the “storage medium, said storage medium comprising at least
`one computer program with a plurality of instructions” of claim 1, Petitioner
`relies on Drury’s processor and static storage that is “used to store code and
`data for operation of the system,” and Lind’s teaching that its vehicle
`includes “existing hardware and software technologies including voice
`recognition, wireless communication, global positioning via satellite, head-
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`up displays, JavaTM technology, microprocessors, Web access, and other
`Internet/intranet features.” Pet. 16 (citing Ex. 1004, 10:23–25; Ex. 1002 ¶ 8;
`Ex. 1005, 9–10). Petitioner further submits that it would be obvious that
`computer code includes a plurality of instructions. Id. (citing Ex. 1009, 22,
`25, 28–30; Ex. 1002 ¶ 8).
`Claim 1 also recites
`the computer readable apparatus being part of a computerized
`information system disposed on or within a transport apparatus
`configured to transport at least one person from one location to
`another, the computerized information system being configured
`to adaptively provide a user with desired information relating to
`a plurality of topical areas.
`Ex. 1001, 25:49–55. Petitioner relies on Drury’s teaching of an information
`system for motor vehicles that includes an onboard computer in the vehicle
`and a remote server system. Id. at 16–17 (citing Ex. 1004, 1:13–14, 5:1–7,
`6:1–7, 9:65–66, Figs. 1, 2; Ex. 1002 ¶¶ 9, 10). Petitioner further relies on
`Lind’s teachings of a “Network Vehicle” that includes a computer with
`voice recognition technology that allows users to access services by
`speaking requests, to supplement the teachings of Drury. Id. at 17 (citing
`Ex. 1005, 9–10; Ex. 1002 ¶¶ 9, 10).
`Claim 1 further recites that
`said at least one program being configured to . . . receive a
`digitized representation of a speech input of the user of the
`transport apparatus via a speech recognition apparatus in
`communication with the computerized information system, the
`speech input relating to a desired function to be performed by the
`computerized information system, the desired function relating
`to at least one of the topical areas.
`
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`Ex. 1001, 25:57–63. Petitioner identifies Drury’s disclosure that its
`computer includes speech recognition technology that allows the computer
`to accept spoken commands from the driver as teaching this element.
`Pet. 17–18 (citing Ex. 1004, 2:10–13, 2:19–22, 43:28–34; Ex. 1002 ¶ 11).
`Petitioner further relies on Lind’s teachings of its Network Vehicle that
`includes voice recognition technology that allows users to verbally request
`emails, information, directions, and voicemail to supplement the teachings
`of Drury. Id. at 18 (citing Ex. 1005, 9–11; Ex. 1002 ¶ 11). Petitioner further
`relies on Patent Owner’s admission in the related district court litigation that
`“all speech recognition systems inherently digitize the speaker’s analog
`voice.” Id. (citing Ex. 1012, 729).
`Petitioner relies on Drury’s disclosure of retrieving information from
`a remote server through a wireless connection as teaching the claimed
`program configured to “cause wireless access of a remote server to access
`information necessary to perform the desired function” of claim 1. Id. at 19
`(citing Ex. 1004, 2:10–13, 2:22–24, 5:25–26, 18:52–57; Ex. 1002
`¶ 12). 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. 1005, 9–11; Ex. 1002
`¶ 12).
`
`Petitioner identifies Drury’s disclosure of “retrieving information
`through the wireless communication interface from the server in response to
`the driver information commands,” as teaching the limitations of claim 1
`“said at least one program configured to . . . receive accessed information
`obtained from the remote server via the wireless interface.” Pet. 20 (citing
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`Ex. 1004, 2:10–13, 2:22–24, 19:55–58; Ex. 1002 ¶ 13). Petitioner also relies
`on Lind’s disclosure that the Network Vehicle includes a wireless modem
`that “provides the uplink out of the vehicle directly to Internet service
`providers,” and Lind’s disclosure that “[t]he downlink return path from the
`Internet to the Network Vehicle can come through either the satellite . . ., or
`through the wireless modem.” Id. (citing Ex. 1005, 9–10; Ex. 1002 ¶ 13).
`Lind also discloses that the Network Vehicle can retrieve e-mail, voicemail,
`and other information from the web. Id. (citing Ex. 1005, 11; Ex. 1002
`¶ 13).
`Finally, claim 1 recites that the program be configured to “implement
`
`the desired function of the computerized information system using at least a
`portion of the received information and at least one of: (i) a touchscreen
`display and input device of the computerized information system; and/or (ii)
`a speech synthesis apparatus of the computerized information system.”
`Ex. 1001, 26:1–6. Petitioner relies on Drury’s disclosure that its system can
`present retrieved information on the handset module, including through the
`display and through the audio device on the handset. Id. at 21 (citing
`Ex. 1004, 2:24–25, 2:27–28, 11:18–21; Ex. 1002 ¶ 14). Petitioner further
`relies on Lind’s disclosures that “[t]he center console’s touch-screen LCD
`serves as a user interface for controlling nearly all of the Network Vehicle’s
`multimedia functions,” that maps can be displayed on the command
`console” and that the vehicle can “talk back using synthesized speech” and
`that route directions can be provided “on the head-up display . . . or as
`spoken instructions.” Id. (citing Ex. 1005, 11, 15, Fig. 9; Ex. 1002 ¶ 14).
`Petitioner also generally contends that a person of ordinary skill in the
`art would have found it obvious to combine Drury’s and Lind’s similar
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`vehicle location systems that address similar problems. Pet. 39 (citing
`Ex. 1004, 1:13–17; Ex. 1005, 9; Ex. 1002 ¶ 46). Petitioner submits that
`Drury and Lind disclose the necessary hardware to receive voice inputs,
`wirelessly connect to a remote database, retrieve navigation information,
`including maps, and transfer information from the vehicle to portable
`electronic devices. Id. In particular, Petitioner notes that Lind discloses
`communication links between a Personal Electronic Device (“PED”) and the
`Network Vehicle’s Network Computer, and highlights the importance of
`linking and synchronizing data between the Network Vehicle and the PED.
`Id. at 39–40 (citing Ex. 1005, 13; Ex. 1002 ¶ 46). Moreover, Petitioner
`argues that the type of communication link disclosed by Lind can be used to
`connect the onboard computer and the handset module of Drury in order to
`address the problem of providing the user with requested information. Id. at
`40 (citing Ex. 1002 ¶ 46). Petitioner then asserts that implementing such
`communication link between the onboard computer and handset module of
`Drury, using the communication link described by Lind, is “no more than a
`particular implementation of the information system described by Drury, as
`well as the information systems in the automotive industry vehicles and
`systems that preceded the application for the ’146 patent.” Id. (citing
`Ex. 1002 ¶ 46).
`Based on the present record, and for purposes of this Institution
`Decision, Petitioner has provided adequate support for the combination of
`the references. For example, Petitioner shows that it would have been
`obvious to combine teachings related to the communication link between the
`handset module and onboard computer using the techniques of Lind. See id.
`at 39–40. The Court stated that “[t]he combination of familiar elements
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`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, and Petitioner has provided 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 under Drury and Lind. See Pet. 39–40.
`Based on the record before us, Petitioner has demonstrated a
`reasonable likelihood that it would prevail on its assertion that independent
`claim 1 is unpatentable as obvious over Drury and Lind.
`As for claims 10, 11, 18, 27, and 30, we have reviewed Petitioner’s
`explanations and supporting evidence regarding these challenged claims and
`find them persuasive. Based on the record before us, Petitioner has
`demonstrated a reasonable likelihood that it would prevail on its assertion
`that dependent claims 10, 11, 18, 27, and 30 are unpatentable as obvious
`over Drury and Lind.
`Accordingly, based on the preliminary record, Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that the
`combination of Drury and Lind would have rendered obvious claims 1, 10,
`11, 18, 27, and 30.
`C. Alleged Obviousness of Claim 19 Over Drury, Lind, and Ito
`Relying on the Andrews Declaration (Ex. 1002), Petitioner contends
`that claim 19 would have been obvious over Drury, Lind, and Ito. Pet. 41–
`48. To support its contentions, Petitioner provides explanations as to how
`the proffered combination teaches the subject matter of this challenged
`17
`
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`IPR2016-00156
`Patent 8,296,146 B2
`
`claim. Id. At this stage of the proceeding, we are persuaded by the
`Petitioner’s explanations and supporting evidence.
`1. Ito (Ex. 1007)
`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. 1007, 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. 1007, 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 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. Input 105 includes
`(liquid crystal) display 106 touch panel or icon inputs. Id. at 10:39–50.
`
`
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`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. Analysis
`Petitioner explains how the proffered combination suggests the
`subject matter of claim 19, and presents a rationale to combine the
`references’ respective teachings. Pet. 41–48. We have reviewed the
`Petition, Petitioner’s mapping of the claims to the cited references, the cited
`portions of the references, and the pertinent testimony in the expert
`declaration. We find Petitioner’s mapping and evidence sufficient at this
`stage of the proceeding. Based on the record before us, Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing that
`the combination of Drury, Lind, and Ito would have rendered obvious
`independent claim 19.
`D. Alleged Obviousness of Claim 17 Over Drury, Lind, Class, and Ito
`Petitioner contends that claim 17 of the ’146 patent would have been
`obvious over the combination of Drury, Lind, Class, and Ito. Pet. 48–58.
`To support its contentions, Petitioner provides explanations as to how the
`proffered combination teaches the subject matter of this challenged claim.
`Id. Petitioner also relies on the Declaration of Scott Andrews (Ex. 1002) for
`support. At this stage of the proceeding, we are persuaded by the
`Petitioner’s explanations and supporting evidence.
`1. Class (Ex. 1006)
`Class describes “a method for real time speech input of a destination
`address into a navigation system.” Ex. 1006, Abstract. The system resolves
`
`
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`19
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`IPR2016-00156
`Patent 8,296,146 B2
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`ambiguities that may arise when a user attempts to find a certain address.
`See id. at 9:12–31.
`Figure 10 of Class follows:
`
`
`As Figure 10 depicts, Class’s system provides speech recognition
`
`module 7 connected to navigation system 2. Id. at 16:36–64.
`2. Analysis
`Petitioner explains how the proffered combination suggests the
`subject matter of claim 17, and presents a rationale to combine the
`references’ respective teachings. Pet. 49–58. We have reviewed the
`Petition, Petitioner’s mapping of the claims to the cited references, the cited
`portions of the references, and the pertinent testimony in the expert
`declaration. We find Petitioner’s mapping and evidence sufficient at this
`stage of the proceeding. Based on the record before us, Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing that
`the combination of Drury, Lind, Class, and Ito would have rendered obvious
`independent claim 17.
`
`
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`IPR2016-00156
`Patent 8,296,146 B2
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`
`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, 10, 11, 17–19, 27, and 30 of the ’146 patent
`as unpatentable as obvious 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.
`
`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 35 U.S.C. § 103(a):
`A. claims 1, 10, 11, 18, 27, and 30 as unpatentable as obvious over the
`combination of Drury and Lind;
`B. claim 19 as unpatentable as obvious over the combination of
`Drury, Lind, and Ito;
`C. claim 17 as unpatentable as obvious over the combination of
`Drury, Lind, Class, and Ito; 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.
`
`
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`IPR2016-00156
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`For PETITIONER:
`Michael J. Lennon
`Clifford A. Ulrich
`Kenyon & Kenyon LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
`
`For PATENT OWNER:
`
`Kim H. Leung
`Peter J. Gutierrez, III
`Mark I. Wang
`Gazdzinski & Associates, PC
`kim.leung@gazpat.com
`peter.gutierrez@gazpat.com
`docket@gazpat.com
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