`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BENTLEY MOTORS LIMITED
`and
`BENTLEY MOTORS, INC.
`Petitioner
`v.
`JAGUAR LAND ROVER LIMITED
`Patent Owner
`
`
`
`IPR2019-01502
`U.S. Patent No. RE46,828
`
`
`PETITIONER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`SUMMARY OF THE ARGUMENT .............................................................. 1
`II. ARGUMENT ................................................................................................... 3
`A.
`The Claims Define “Subsystem” in Functional Terms ......................... 3
`B.
`The ’828 Patent Specification Treats Each Row in Figs. 5
`and 6 as a Separate “Subsystem” ........................................................... 6
`The Centre and Rear Differentials are Separate
`“Subsystems” ....................................................................................... 10
`III. CONCLUSION .............................................................................................. 12
`
`C.
`
`
`
`
`
`
`
`
`– i –
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Dayco Prods., Inc. v. Total Containment, Inc.,
`258 F.3d 1317 (Fed. Cir. 2001) ....................................................................... 5
`
`In re Imes,
`778 F.3d 1250 (Fed. Cir. 2015) ....................................................................... 5
`
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997) ....................................................................... 4
`
`In re Swinehart,
`439 F.2d 210 (CCPA 1971) ............................................................................. 4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 3
`
`Teva Pharms. USA v. Sandoz, Inc.,
`135 S. Ct. 831 (U.S. 2015) .............................................................................. 2
`
`Yamaha Golf Car Co. v. Club Car, LLC,
`IPR2017-02141, Paper 21 (PTAB June 26, 2018) .......................................... 2
`
`Rules
`37 C.F.R. § 42.108(c) .......................................................................................... 2, 12
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`
`
`
`
`– ii –
`
`
`
`
`
`
`
`I.
`
`SUMMARY OF THE ARGUMENT
`
`“A party dissatisfied with a decision may file a request for rehearing without
`
`prior authorization from the Board” and must “specifically identify all matters the
`
`party believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, opposition, or a reply.” 37 C.F.R. §
`
`42.71(d). This request is timely filed within 30 days from the Board’s decision
`
`denying institution. See 37 C.F.R. § 42.71(d)(2). Petitioner submits that the Board
`
`has misapprehended or overlooked the following points:
`
`1. The Board adopted Patent Owner’s attorney argument without engaging
`
`in a claim construction analysis of “subsystem.” DI, 7-8 (“We discern no terms in
`
`need of express interpretation”). Patent Owner’s argument, that the front, center,
`
`and rear differentials are a “single subsystem” (Prelim. Resp. 16-17; DI, 12-14),
`
`defines “subsystem” without reference to the claim language and in a manner
`
`inconsistent with the claim language and specification of the ’828 patent; and
`
`2. The Board gave “no weight” to the expert testimony of Dr. Glenn Bower,
`
`who testified that the Porsche 959 Art teaches two differential “subsystems” as
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`claimed in the ’828 patent, which treats the center and rear differentials as separate
`
`“subsystems,” citing Figures 5 and 6. DI, 13-14; Pet. 20-23 (citing Ex. 1004 ¶¶ 43-
`
`48). The ’828 patent does not treat the center, rear, and front differentials as a
`
`single “subsystem.” Pet. 22-23 (citing Ex. 1004 ¶ 48).
`
`
`
`
`
`
`
`
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`3. The Board resolved a disputed issue of fact and found that “nothing in
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`Figures 5 or 6 states or describes each row in the tables as a separate subsystem nor
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`does the related written description describe each row as a separate subsystem,”
`
`without requesting supplemental briefing. DI, 14 (citing Ex. 1001, 5:31-32, 9:65-
`
`10:6, Figs. 5, 6); see Yamaha Golf Car Co. v. Club Car, LLC, IPR2017-02141,
`
`Paper 21, 2 (PTAB June 26, 2018) (“Pursuant to our request . . . the parties each
`
`filed a supplemental claim construction brief.”).
`
`Petitioner submits that Patent Owner’s attorney argument challenging Dr.
`
`Bower’s expert testimony (Prelim. Resp. 18-20) raised a claim construction issue
`
`based on an underlying issue of fact, which should have been “viewed in the light
`
`most favorable to the petitioner solely for purposes of deciding whether to institute
`
`an inter partes review.” 37 C.F.R. § 42.108(c); see Yamaha Golf, Paper 21 at 5
`
`(rehearing request granted “[b]ecause the conflicting testimony creates a genuine
`
`issue of material fact, we should have viewed the material fact in the light most
`
`favorable to Petitioner solely for purposes of deciding whether to institute an inter
`
`partes review.”); see also Teva Pharms. USA v. Sandoz, Inc., 135 S. Ct. 831, 841
`
`(U.S. 2015) (“The district judge, after deciding the factual dispute, will then
`
`interpret the patent claim in light of the facts as he has found them.”). Unlike the
`
`Yamaha case, Patent Owner did not even submit an expert declaration to support
`
`
`
`– 2 –
`
`
`
`
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`its argument. In view of the above, Petitioner respectfully requests reconsideration
`
`of the Board’s decision denying institution.
`
`II. ARGUMENT
`Patent Owner’s attorney argument, which the Board adopted, defines “the
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`’828 patent’s differential subsystem [as] a single subsystem that encompasses the
`
`front, center, and rear differentials,” without reference to the claim language or
`
`analysis of all relevant description in the ’828 patent specification. Prelim. Resp.
`
`16-20; DI, 12-13. Instead of starting with the claim language, as required by
`
`Phillips,1 Patent Owner starts with a disputed interpretation of the ’828 patent
`
`specification, particularly Figures 5 and 6, and an incorrect characterization of
`
`dependent claim 35. Id. The Board should not have adopted Patent Owner’s
`
`flawed construction. An analysis of the relevant claim language and the ’828
`
`patent specification demonstrates the error of Patent Owner’s position.
`
`A.
`
`The Claims Define “Subsystem” in Functional Terms
`
`The Board cites to claim 35 as support for Patent Owner’s contention that
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`the front, center, and rear differentials are a single subsystem. DI 13-14. Claim 35
`
`depends from independent claim 30, and both claims support Bentley’s position
`
`
`1 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (“‘[T]he
`
`claims of a patent define the invention to which the patentee is entitled the right to
`
`exclude.’”) (citations omitted).
`
`
`
`– 3 –
`
`
`
`
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`that the differentials constitute separate “subsystems,” given that “subsystems” are
`
`defined in functional terms. “A patent applicant is free to recite features of an
`
`apparatus either structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478
`
`(Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)).
`
`Independent claim 30 recites:
`
`A vehicle control system having a driver input device for
`selecting a driving surface, the vehicle control system arranged
`to control a plurality of vehicle subsystems each of which is
`operable in a plurality of subsystem configuration modes, . . .
`the vehicle control system . . . is arranged to select the
`subsystem configuration modes in a manner suitable for a
`respective driving surface, and . . . the subsystem
`configurations are controlled in a manner suitable for driving
`on respective off-road driving surfaces, and . . . for driving on-
`road . . . . Ex. 1001, 21:33-49.
`
`The claim language defines “each” vehicle “subsystem” as one that is
`
`controlled by the “vehicle control system” in response to a driver “selecting a
`
`driving surface.” The vehicle control system selects the “subsystem configuration
`
`modes” (“subsystem configurations”) such that each subsystem “is operable in a
`
`plurality of subsystem configuration modes.” Thus, each subsystem is capable of
`
`operating or functioning in two or more configurations.
`
`The key to defining a “subsystem” is to understand how the vehicle control
`
`system selects the “subsystem configuration modes” based on the driver’s selection
`
`of a driving surface. Claims 14 and 16 recite the basic method: “connecting a
`
`vehicle mode controller to the vehicle subsystems,” “storing a set of control
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`
`
`– 4 –
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`
`
`
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`commands,” “transmitting the set of stored control commands to each of the
`
`plurality of vehicle subsystems,” and “selecting [of ] a set of subsystem control
`
`parameters of the plurality of vehicle subsystems so as to provide the appropriate
`
`operation of each of the vehicle subsystems.” Stored control commands select the
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`subsystem control parameters transmitted to each subsystem, which causes each
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`subsystem to function according to a particular configuration chosen from among
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`two or more possible configurations (the “appropriate operation”).
`
`The’828 patent claim language, therefore, defines a “subsystem” in
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`functional terms, i.e. each subsystem is capable of operating or functioning
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`(“operable”)2 in two or more (“a plurality of”)3 configurations. Nothing more is
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`required.
`
`Claim 35 depends from claim 30 and recites “one of the subsystems
`
`comprises a differential system operable to provide a plurality of levels of
`
`differential lock, wherein the subsystem configuration modes are arranged such
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`that the level of differential lock is higher in dependence on the selection of the
`
`2 See In re Imes, 778 F.3d 1250, 1253-54 (Fed. Cir. 2015) (“operable to wirelessly
`
`communicate” means “capable of wirelessly communicating”).
`
`3 See Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir.
`
`2001) (“‘plurality,’ when used in a claim, refers to two or more items, absent
`
`some indication to the contrary.”).
`
`
`
`– 5 –
`
`
`
`
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`second off-road mode than for the first off-road mode.” Id. at 22:1-7 (emphasis
`
`added). Claim 35 recites an embodiment of Figure 6 (see p. 11, infra), where the
`
`Rear Differential subsystem is set to the “Locked” configuration (higher) for
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`Boulder Crossing and Mud off-road driving modes (each a “second off-road
`
`mode”) and set to the “Open” configuration (lower) for the Grass driving mode (a
`
`“first off-road mode”). Id. at Fig. 6. In contrast, Figure 6 depicts the Centre
`
`Differential subsystem as having the same “Locked” configuration across the four
`
`off-road modes; none is higher or lower than the other. Id. Thus, the subsystem
`
`being configured in claim 35 with reference to Figure 6 is not the Centre
`
`Differential, it is the Rear Differential, which is its own separately controlled
`
`“subsystem.” Petitioner submits that Patent Owner’s attorney argument, which
`
`cites claim 35 for support and on which the Board relied, is in error.
`
`B.
`
`The ’828 Patent Specification Treats Each Row in Figs. 5 and 6 as
`a Separate “Subsystem”
`The ’828 patent specification does not expressly define “subsystem,” and
`
`there is no evidence in the record of a plain and ordinary meaning for “subsystem.”
`
`The ’828 patent variously describes how each subsystem functions according to
`
`one of several subsystem configurations, each of which is represented in a single
`
`row of the tables in Figures 5 and 6. That is the point of Figures 5 and 6, to set out
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`a matrix of operable “subsystem configurations” for each “subsystem” in each row.
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`
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`– 6 –
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`
`
`
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`Column 2 of the ’828 patent describes how “each of the subsystems is
`
`operable in a plurality of subsystem configuration modes,” the same language used
`
`in claim 30. Ex. 1001, 2:10-11. Column 2 goes on to describe various
`
`“subsystems.” For example, “[p]referably one of the subsystems comprises a
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`suspension system and said plurality of subsystem configuration modes comprises
`
`a plurality of ride heights.” Id. at 2:15-17. The first row in Figures 5 and 6
`
`(below) identifies “Suspension Ride Height,” a subsystem capable of functioning
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`in “High,” “Standard,” and “Low” configurations. Id. at 7:22-28. “Preferably one
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`of the subsystems comprises a fluid suspension system in which fluid
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`interconnection can be made . . . and said plurality of subsystem configuration
`
`modes provide different levels of said interconnection.” Id. at 2:19-23. Figures 5
`
`and 6, row two, identifies “Side/Side Air Interconnection,” an air suspension
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`subsystem capable of functioning in “Closed” and “Open” air interconnection
`
`configurations. Id. at 7:29-40.
`
`The ’828 patent at column 10, lines 7-25, with specific reference to Figures
`
`5 and 6, explains how for a selected driving mode the vehicle controller sets the
`
`“subsystem configurations” for the subsystems:
`
`When the vehicle mode controller 98 is in “motorway”
`mode the vehicle functions and subsystem configurations are
`optimized for traveling at high speeds on flat surfaces with
`good levels of friction. The suspension ride height is set at
`“low” for low wind resistance and good stability. The air
`suspension interconnection is set at “standard” for good
`
`
`
`– 7 –
`
`
`
`
`
`stability. The steering assistance is set so that it will be low
`at high speeds to give a firm steering feel, but will be speed
`dependent and increase at low vehicle speeds. The brake
`pedal effort is set at “high” to avoid rapid deceleration at
`high speed, but with “panic assist” to ensure that the vehicle
`can be slowed rapidly in an emergency. The A.B.S, E.T.C
`and D.S.C are all set to “high mu”. The throttle progression
`is set to the “slow” characteristic . . . . The transfer box 21 is
`set to “high range”, the transmission is set to “normal mode”
`and the center and rear differentials are both “more open.”
`Ex. 1001, 10:7-25 (emphasis added).
`
`The above description directly reflects the named “subsystems” from
`
`column 2, referenced here as “vehicle functions,” and their associated “subsystem
`
`configurations” for motorway driving mode, as depicted in each row of Figure 5:
`
`
`
`– 8 –
`
`
`
`
`
`
`
`The reference to “vehicle functions” in column 10 is just another way to
`
`reference “subsystems,” which are functionally defined in the claims and further
`
`described in column 2 and throughout the ’828 patent. For example, “Suspension
`
`Ride Height,” “A.B.S.,” “E.T.C.,” “D.S.C.,” and “speed control/hill descent” are
`
`all interchangeably described as a “subsystem” (Ex. 1001, 2:16-18, 2:32-45, 3:12-
`
`15) and a “function” (7:18-25, 8:3-5, 8:17-19, 8:36, 8:42-43, 12:55-56, 24:12-14).
`
`A “function” is a “subsystem” as claimed and described in the ’828 patent.
`
`Starting at the top of the first column in Figure 5, the Suspension Ride
`
`Height subsystem is configured to “low,” indicated by the “x” adjacent to “low”
`
`under “Motorway” (column 2), rather than a “high” or “standard” configuration.
`
`Ex. 1001, 7:22-27. The Steering Assistance subsystem is “speed proportional” and
`
`set to a “low” configuration at high speeds and a “high” configuration at low
`
`speeds. Id. at 10:13-15. The Brake Pedal Effort subsystem is set to a “high”
`
`configuration instead of “low.” Id. at 7:61-8:2. The A.B.S. subsystem, E.T.C.
`
`subsystem, and D.S.C. subsystem are each set to a “high mu” configuration instead
`
`of a “low mu” or “plough surface” (ABS) configuration. Id. at 8:3-55. The
`
`Throttle Progression subsystem is set to “slow” rather than “quick.” Id. at 8:56-65.
`
`The Auto Transmission subsystem is set to “normal mode” rather than
`
`“performance,” “snow/ice,” “manual,” or “sand” configurations. Id. at 9:7-32.
`
`The Centre Differential subsystem is set to “open” instead of a “locked”
`
`
`
`– 9 –
`
`
`
`
`
`configuration. Id. at 9:33-43. The Rear Differential subsystem is set to “open”
`
`instead of a “locked” configuration. Id.
`
`In short, the ’828 patent does describe each row in Figures 5 and 6 as a
`
`separate subsystem when read in context of the ’828 patent. Cf. DI, 14.
`
`C.
`
`The Centre and Rear Differentials are Separate “Subsystems”
`
`The description at column 2, lines 64-column 3, line 6 of the ’828 patent, on
`
`which Patent Owner and the Board rely to define a single differential subsystem
`
`(Prelim. Resp. 14-22; DI, 12-14), are in fact consistent with Dr. Bower’s
`
`testimony. The ’828 patent describes a differential “subsystem” as “operable to
`
`provide a plurality of levels of differential lock.” Ex. 1001, 2:64-67; Ex. 1004 ¶
`
`48. The description is consistent with functional claim language defining a
`
`“subsystem.” And though a “differential may be a center differential, a front
`
`differential, or a rear differential,” each one still qualifies as a “subsystem.”
`
`Figures 5 and 6 of the ’828 patent depict the Centre and Rear Differentials as
`
`separately controlled subsystems, with each subsystem capable of operating in at
`
`least two configurations – “Locked” and “Open.” According to Figure 6, the
`
`Centre and Rear Differential subsystems operate in different configurations from
`
`each other, at the same time, when in Grass and Sand driving modes.4 Figures 5
`
`4 See Ex. 1001, 10:32-37, 11:5-7 (“(X)” in Figs. 5 and 6 indicates an “option” or
`
`“alternative” configuration).
`
`
`
`– 10 –
`
`
`
`
`
`and 6 of the ’828 patent were cited in the Petition and directly addressed by Dr.
`
`Bower, who explained that the ’828 patent distinguishes between the center and
`
`rear differentials as separate subsystems. Pet. 22-23 (citing Ex. 1004 ¶ 48). Figure
`
`6 is reproduced below with the bottom two rows boxed in red:
`
`As can be seen from looking at the rows and columns of Figure 6, above,
`
`when read in context with the specification description at column 2, lines 10-67,
`
`column 3, lines 1-6, and column 10, lines 7-25 (quoted above), Figures 5 and 6 do
`
`
`
`
`
`– 11 –
`
`
`
`
`
`describe each row in the table as a separate subsystem, including a center
`
`differential subsystem and a separately controlled rear differential subsystem.
`
`The written description of “differential” cited by Patent Owner and the
`
`Board, when read in view of the ’828 patent claim language, specification, and
`
`Figures 5 and 6, is properly understood to describe separate differential
`
`“subsystems.” At a minimum, the Board should have viewed Dr. Bower’s on-
`
`point testimony as raising a disputed issue of fact for resolution after institution.
`
`III. CONCLUSION
`In denying institution the Board construed a “differential subsystem”
`
`without engaging in a claim construction analysis of “subsystem.” The Board also
`
`should have evaluated the evidence “in the light most favorable to the petitioner,”
`
`as required by Board rules. 37 C.F.R. § 42.108(c). Petitioner submits “that at this
`
`stage of the proceeding, and viewing all disputed material facts in a light favorable
`
`to Petitioner, Petitioner presents a reasonable likelihood of prevailing.” Yamaha
`
`Golf, Paper 21 at 7. For the reasons set forth above and in the Petition, Petitioner
`
`respectfully requests that the Board institute inter partes review of ’828 patent
`
`claims 21, 24, 30, 32-34, 37, 39, 41-43, 45, and 46.
`
`
`
`
`
`
`
`– 12 –
`
`
`
`
`
`Date: February 26, 2020
`
`
`
`Respectfully Submitted,
`
`
`By: /s/ Edgar H. Haug
`Edgar H. Haug (Reg. No. 29,309)
`Brian P. Murphy (Reg. No. 34,986)
`Robert E. Colletti (Reg. No. 76,417)
`Georg C. Reitboeck (pro hac vice to be requested)
`Christopher F. Gosselin (pro hac vice to be
`requested)
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
`
`Counsel for Petitioner
`
`
`
`
`
`
`– 13 –
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on February 26, 2020, pursuant to 37
`
`C.F.R. §§ 42.6(e), a complete and entire copy of Petitioner’s Request for
`
`Rehearing, and any other motions or filings were served by electronic mail on
`
`Petitioner’s lead and backup counsel at the following addresses:
`
`Jonathan M. Strang (Reg. No. 61,724)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`jonathan.strang@lw.com
`
`Clement Naples (Reg. No. 50,663)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`clement.naples@lw.com
`
`
`
`By: /s/ Robert E. Colletti
`Robert E. Colletti (Reg. No. 76,417)
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
`
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
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