IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
`
`JAGUAR LAND ROVER LIMITED,
`
`Plaintiff,
`
`v.
`
`BENTLEY MOTORS LIMITED, and
`BENTLEY MOTORS, INC.,
`
`Defendants.
`
`CASE NO. 2:18-CV-320-MSD-LRL
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`
`Plaintiff Jaguar Land Rover Limited (“JLR”) is asserting claims 21, 24, 30, 31, 32, 33,
`
`41, 42, 43, and 46 (the “Asserted Claims”) of U.S. Patent No. RE46,828 (the ’828 patent) against
`
`Defendants Bentley Motors Limited and Bentley Motors, Inc. (collectively, “Bentley”) in this
`
`litigation. (See Plaintiff’s Preliminary Infringement Contentions, dated Oct. 1, 2019).
`
`Pursuant to Paragraph III.B of the Joint Discovery Plan, Bentley, through counsel,
`
`provide the following Preliminary Invalidity Contentions to Plaintiff. Bentley contends that each
`
`of the Asserted Claims of the ’828 patent is invalid under at least 35 U.S.C. §§ 101, 102, 103,
`
`and/or 112.
`
`I.
`
`PRELIMINARY STATEMENT
`
`Defendants’ Preliminary Invalidity Contentions are based on the information currently
`
`available to and known by Bentley. Bentley reserves the right to amend or supplement these
`
`Preliminary Invalidity Contentions as the pre-trial phase of the litigation proceeds, including in
`
`view of the claim constructions by the Court, and as additional information may come to light,
`
`including information obtained during discovery, prior art searches, and expert investigations,
`(cid:214)¿„«¿fi (cid:212)¿†… ˛–“»fi (cid:212)‹…(cid:242)
`(cid:219)¤‚•(cid:190)•‹ (cid:238)(cid:240)(cid:240)(cid:239)
`(cid:222)»†‹·»§ “(cid:242) (cid:214)¿„«¿fi
`(cid:215)—˛(cid:238)(cid:240)(cid:239)(cid:231)(cid:243)(cid:240)(cid:239)º(cid:240)(cid:238)
`
`Ex. 2001-0001
`
`

`

`analyses or experimentation. Bentley also reserves the right to supplement these Preliminary
`
`Invalidity Contentions in reply to Plaintiff’s pre-trial submissions, including any supplemental
`
`infringement contentions, expert reports, and responses to discovery requests and in response to
`
`any ruling issued by the Court.
`
`These Preliminary Invalidity Contentions are provided without prejudice to Defendants’
`
`right to introduce expert opinions and demonstratives as expert discovery progresses, and to
`
`produce and introduce at trial all evidence, whenever discovered, relating to the proof of
`
`currently known and subsequently discovered facts. Accordingly, these Preliminary Invalidity
`
`Contentions are subject to modification, amendment, or supplementation as this litigation
`
`progresses and additional information is obtained.
`
`Bentley reserves the right to amend, alter, or supplement these Preliminary Invalidity
`
`Contentions based on any further investigation, discovery of new prior art or re-evaluation of
`
`known prior art, fact or expert discovery, evaluation of the scope and content of any prior art,
`
`any claim construction from the Court, any contentions or positions taken by Plaintiffs or their
`
`designated experts, or as a result of changes in Plaintiff’s contentions and infringement positions.
`
`By providing these Preliminary Invalidity Contentions, Bentley makes no admissions on
`
`any issue related to claim construction in this matter. Any statement herein concerning any
`
`claim limitation is solely for the purpose of comparison with the prior art and does not constitute
`
`an adoption of any of Plaintiff’s proposed constructions. By addressing any Asserted Claim
`
`term, Defendants do not concede that such terms are definite or otherwise comply with 35 U.S.C.
`
`§§ 101 or 112. Defendants expressly reserve the right to propose any claim construction they
`
`consider appropriate and/or to contest any claim construction they consider inappropriate and
`
`will not be limited by any position arguably set forth in these Preliminary Invalidity Contentions.
`
`2
`
`Ex. 2001-0002
`
`

`

`Where multiple interpretations of a claim or claim term reasonably exist, Defendants may
`
`identify disclosures by certain references in the alternative. Any alternatives should not be
`
`considered inappropriate merely because Plaintiff may believe that they are inconsistent with one
`
`another.
`
`By providing these contentions, Defendants do not waive any right to introduce at trial
`
`any subsequently-discovered evidence or expert opinions related to currently-known facts and to
`
`produce and introduce at trial all evidence, whenever discovered, relating to the proof of
`
`subsequently-discovered facts. Bentley reserves the right to refer to, conduct discovery with
`
`reference to, or offer into evidence at the time of trial, any and all facts, expert opinion
`
`testimony, documents and things notwithstanding the written statements in these contentions.
`
`Bentley may also rely on documents, testimony, and things produced in the course of fact
`
`and expert discovery, including those that have not yet been produced by Plaintiff, that do not yet
`
`exist, or that Defendants have not yet identified or appreciated the significance of in the context
`
`of this litigation.
`
`Defendants’ identification of certain disclosures for each reference should not be
`
`considered exhaustive; rather, Defendants are only required to identify, and therefore have only
`
`referred to, exemplary disclosures within each reference. Not every single disclosure present
`
`within a reference, expressly or inherently, is discussed in Defendants’ analysis of the Asserted
`
`Claims. This approach is not a waiver of later asserting any of those disclosures against any
`
`Asserted Claim, nor does it preclude Defendants from relying on any non-cited portion of the
`
`identified prior art references. A person of ordinary skill in the art would generally read a prior
`
`art reference as a whole and in the context of other publications, literature, and general
`
`knowledge in the field. To understand and interpret any specific statement or disclosure in a
`
`3
`
`Ex. 2001-0003
`
`

`

`prior art reference, a person of ordinary skill in the art would rely upon other information
`
`including other documents, publications, testimony, and general marketing, scientific, or
`
`engineering knowledge. Defendants reserve the right to rely on any of these sources, including
`
`on the basis of modifications and combinations of certain cited references.
`
`Citation to a particular figure in a reference encompasses the figure, its caption and/or
`
`description of the figure, and any text relating to or discussing the figure in the reference or any
`
`reference cited in the disclosure. Likewise, citation to a particular text that refers, relies on, or
`
`discusses a figure or other material includes the figure or other material as well.
`
`Bentley may rely on admissions concerning the scope of the prior art relevant to the
`
`Asserted Claims found, inter alia, in: (i) the specification of the ’828 patent and related patents;
`
`(ii) the prosecution history of the ’828 patent and related patents and/or patent applications
`
`including foreign applications; (iii) any deposition testimony in this or other actions of the named
`
`inventors of the ’828 patent regarding the Asserted Claims; and (iv) any evidence submitted by
`
`Plaintiff in connection with this or any other litigation or patent office proceeding concerning the
`
`Asserted Claims. Finally, nothing in these Preliminary Invalidity Contentions shall be treated as
`
`an admission that any accused product meets any limitation of the Asserted Claims.
`
`II.
`
`IDENTIFICATION OF PRIOR ART
`
`Bentley hereby identifies prior art that anticipates, renders obvious, or otherwise
`
`describes the state of the art.
`
`PATENTS AND PATENT APPLICATIONS
`
`Patent
`Prod.
`Number
`No.
`10529 4,569,255
`
`Country of
`Origin
`USA
`
`Date of
`Issue/Publication
`2/11/1986
`
`Inventor (first
`named)
`Russell Holmes
`
`Basis for
`Invalidity
`§ 103
`
`10541 4,576,065
`
`USA
`
`3/18/1986
`
`Donald Speranza
`
`§ 103
`
`4
`
`Ex. 2001-0004
`
`

`

`Patent
`Prod.
`Number
`No.
`10554 4,760,893
`
`10562 5,067,778
`
`10592 5,278,761
`
`10606 5,303,794
`
`10616 5,373,447
`
`10625 5,406,861
`
`10638 5,513,107
`
`10646 5,701,247
`
`10664 5,941,614
`
`10671 5,997,108
`
`10679 6,044,318
`
`Country of
`Origin
`USA
`
`Date of
`Issue/Publication
`8/2/1988
`
`Inventor (first
`named)
`Alfred Sigl
`
`Basis for
`Invalidity
`§ 103
`
`USA
`
`USA
`
`USA
`
`USA
`
`USA
`
`USA
`
`USA
`
`USA
`
`USA
`
`USA
`
`11/26/1991
`
`David Testardi
`
`1/11/1994
`
`4/19/1994
`
`Anthony Ander
`
`Davorin Hrovat
`
`12/13/1994
`
`Michael Howes
`
`4/18/1995
`
`4/30/1996
`
`Jon Steeby
`
`Joseph Gormley
`
`12/23/1997
`
`Hiroki Sasaki
`
`8/24/1999
`
`12/7/1999
`
`3/28/2000
`
`Michael Gallery
`
`Heiko Claussen
`
`Klaus Bourdon
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`10688 6,182,002
`
`10694 6,213,242
`
`10700 6,260,859
`
`10715 6,293,632
`
`10735 2154763
`
`10770 2273580
`
`10795 2357159
`
`10805 EP0976629
`
`10818 EP0983894
`
`USA
`
`USA
`
`USA
`
`USA
`
`GB
`
`GB
`
`GB
`
`DE
`
`GB
`
`10831 WO 02/26519 DE
`
`10841 DE19834167
`
`DE
`
`1/30/2001
`
`4/10/2001
`
`7/17/2001
`
`9/25/2001
`
`9/11/1985
`
`6/22/1994
`
`6/13/2001
`
`2/2/2000
`
`3/8/2000
`
`4/2/2002
`
`2/3/2000
`
`5
`
`Paul Bauerle
`
`Ashok Rodrigues
`
`Christopher Dixon
`
`John Grote
`
`Akio Hosaka
`
`Joseph Gormley
`
`Marin Ranson
`
`Andreas Bastian
`
`Paul Beever
`
`Luk Lamellen
`
`Andreas Bastian
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Ex. 2001-0005
`
`

`

`Prod.
`No.
`10877
`
`10895
`
`10920
`
`10936
`
`10958
`
`11074
`
`Title
`
`The Porsche 959-Group
`B – a Very Special
`Automobile – Part
`1, 88 No. 5, pp. 265-
`270
`The Porsche 959-Group
`B – a Very Special
`Automobile – Part
`2, ATZ 88 No. 6, pp.
`353-356
`The Porsche 959-Group
`B – a Very Special
`Automobile – Part
`3, ATZ 88 No. 7/8, pp.
`407-413
`The Porsche 959-Group
`B – a Very Special
`Automobile – Part
`4, ATZ 88 No. 9, pp.
`509-513
`Porsche 959 Driver’s
`Manual
`Porsche 959 Flyer
`
`11087
`
`11123
`
`Porsche 959 Workshop
`Manual
`Understanding the
`Mitsubishi Montero
`Active Trac 4WD
`System
`Development of Active-
`Traction Control System
`Heart-Beat Motors
`Mitsubishi Motors,
`Lancer Evolution VII
`Press Information
`Seventh Heaven is a
`new EVO
`11176 Mental Oriental
`
`11130
`
`11138
`
`11170
`
`PUBLICATIONS
`
`Date of
`Publication
`May, 1986
`
`Author
`(First Named)
`Bantle/Bott
`
`June, 1986
`
`Bantle/Bott
`
`July/August
`1986
`
`Bantle/Bott
`
`September
`1986
`
`Bantle/Bott
`
`Basis for
`Invalidity
`§ 102/103
`
`§ 102/103
`
`§ 102/103
`
`§ 102/103
`
`Publisher
`
`Automobilte
`chnische
`Zeitschrift
`(“ATZ”)
`
`Automobilte
`chnische
`Zeitschrift
`(“ATZ”)
`
`Automobilte
`chnische
`Zeitschrift
`(“ATZ”)
`
`Automobilte
`chnische
`Zeitschrift
`(“ATZ”)
`
`June, 1987
`
`Porsche AG
`
`Porsche AG
`
`§ 102/103
`
`Porsche AG
`
`Porsche AG
`
`§ 103
`
`Porsche AG
`
`Porsche AG
`
`§ 103
`
`Mike
`Weinberg
`
`Transmission
`Digest
`
`§ 103
`
`Kazushi
`Hosomi
`Mitsubishi
`Motors
`
`Yoshio
`Ishikawa
`Stephen
`Sutcliffe
`
`SAE
`International
`Mitsubishi
`Motors
`
`§ 103
`
`§ 102/103
`
`Autocar
`
`Autocar
`
`§ 103
`
`§ 103
`
`September,
`1985
`December,
`1989
`November
`1997
`
`2001-01
`
`2001.1
`
`February,
`2001
`June, 2001
`
`6
`
`Ex. 2001-0006
`
`

`

`Prod.
`No.
`11187
`
`Title
`
`Survival of the fastest
`
`Date of
`Publication
`March,
`2001
`11197 Mitsubishi Evo Extreme August,
`2001
`April, 2001
`
`Author
`(First Named)
`Stephen
`Sutcliffe
`
`Publisher
`
`Autocar
`
`Autocar
`
`Basis for
`Invalidity
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`11206
`
`Seven Samurai
`
`Peter Nunn
`
`11219
`
`Idolwild
`
`June, 2001 Mark Walton
`
`Car
`
`Car
`
`11234
`
`11243
`
`11258
`
`11273
`
`11324
`
`Lancer Evolution VII
`Close-Up, Bestcar
`Special Edition
`Lancer Evolution vs.
`Impreza, 4WD Turbo
`Rippu Best Mook
`LEVOLANT Perfect
`Guide
`Hummer Begins a
`“Brand” New Era with
`H2
`H2 Chassis
`
`11329
`
`H2 Exterior Design
`
`11333
`
`H2 Interior
`
`11336
`
`11340
`
`11345
`
`11349
`
`11789
`
`11908
`
`12124
`
`12380
`
`H2’s Premium
`Powertrain
`“Hummer Powertrain
`Article”
`Safety and Security
`
`Hummer H2
`Preliminary
`Specifications
`2003 Hummer H2
`Owner’s Manual
`1997 Ford Expedition
`Owner’s Guide
`1999 Ford Expedition
`Owner’s Guide
`2000 Ford Expedition
`Owner’s Guide
`2001 Ford Expedition
`Owner’s Guide
`
`Montonobu
`Takehira
`
`Shinpei
`Kawaguchi
`
`§ 102/103
`
`October 27,
`2001
`May 13,
`2001
`
`11/21/2001
`
`General
`Motors
`
`11/21/2001
`
`General
`Motors
`11/21/2001 General
`Motors
`General
`Motors
`General
`Motors
`
`11/21/2001
`
`11/21/2001
`
`General
`Motors
`General
`Motors
`
`General
`Motors
`Ford Motor
`Company
`Ford Motor
`Company
`Ford Motor
`Company
`Ford Motor
`Company
`
`11/21/2001
`
`11/21/2001
`
`3/29/2002
`
`1996
`
`1998
`
`1999
`
`1999
`
`7
`
`Apollo
`Publishing
`Rippu Shobo
`Publishing
`
`General
`Motors
`
`General
`Motors
`General
`Motors
`General
`Motors
`General
`Motors
`
`General
`Motors
`General
`Motors
`
`General
`Motors
`Ford Motor
`Company
`Ford Motor
`Company
`Ford Motor
`Company
`Ford Motor
`Company
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Ex. 2001-0007
`
`

`

`Prod.
`No.
`12660
`
`12940
`
`13051
`
`13475
`
`13479
`
`13947
`
`14366
`
`14705
`
`14913
`
`15067
`
`15384
`
`15762
`
`16144
`
`16157
`
`16163
`
`16174
`
`16184
`
`Title
`
`2002 Ford Expedition
`Owner’s Guide
`2001 BMW 7-Series
`Owner’s Manual (E38)
`2002 BMW 745Li (E65)
`Owner’s Manual
`BMW 740i SPORT
`
`2001 Chevy Silverado
`Owner’s Manual
`2001 Tahoe Suburban
`Owner’s Manual
`2000 Cadillac Escalade
`Owner’s Manual
`2000 Range Rover
`Owner’s Handbook
`2001 Freelander
`Owner’s Handbook
`2000 Mercedes-Benz
`M-class Operator’s
`Manual
`2001 Mercedes-Benz C-
`class Operator’s Manual
`2002 Mercedes-Benz G-
`class Operator’s Manual
`Delphi Electronic
`Throttle Control
`Systems for Model Year
`2000
`Traction Control (ASR)
`– An Extension of the
`Anti-Lock Braking
`System (ABS)
`New Approaches to
`Electronic Throttle
`Control
`Electronic Throttle
`Control (ETC): A Cost
`Effective System for
`Improved Emissions,
`Fuel Economy, and
`Driveability
`A Comprehensive Light
`Vehicle Antilock Brake
`
`Date of
`Publication
`2001
`
`08/1999
`
`10/2001
`
`Author
`(First Named)
`Ford Motor
`Company
`BMW
`
`Publisher
`
`Ford Motor
`Company
`BMW
`
`BMW
`
`BMW
`
`Basis for
`Invalidity
`§ 103
`
`§ 103
`
`§ 103
`
`June, 1999 Matt Stone
`
`Motor Trend
`
`§ 103
`
`2000
`
`2000
`
`1999
`
`General
`Motors
`General
`Motors
`General
`Motors
`Land Rover
`
`General
`Motors
`General
`Motors
`General
`Motors
`Land Rover
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`2000
`
`Rover Group
`
`Rover Group
`
`§ 103
`
`10/31/2000 Mercedes-
`Benz
`
`Mercedes-
`Benz
`
`3/31/2000
`
`9/21/2001
`
`2000-01
`
`Mercedes-
`Benz
`Mercedes-
`Benz
`Daniel McKay
`
`Mercedes-
`Benz
`Mercedes-
`Benz
`SAE
`International
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Jurgen
`Gerstenmeier
`
`SAE
`International
`
`§ 103
`
`1991
`
`Werner Huber
`
`SAE
`International
`
`February,
`1996
`
`Hans-Martin
`Streib
`
`SAE
`International
`
`§ 103
`
`§ 103
`
`March,
`1999
`
`Garrick
`Forkenbrock
`
`SAE
`International
`
`§ 103
`
`8
`
`Ex. 2001-0008
`
`

`

`Prod.
`No.
`
`16197
`
`16258
`
`16429
`
`Title
`
`System . . .
`Hummer H2
`
`Date of
`Publication
`
`Author
`(First Named)
`
`Publisher
`
`2002
`
`John Lamm
`
`Lancer Evolution
`Technical Information
`Manual
`Press Information,
`Geneva Motor Show
`
`April, 2001
`
`March 11,
`2001
`
`Basis for
`Invalidity
`
`§ 103
`
`§ 102/103
`
`§ 102/103
`
`Motorbooks
`International
`Mitsubishi
`Motors Corp.
`
`Mitsubishi
`Motors Corp.
`
`Bentley additionally incorporates by reference all prior art references cited in the asserted
`
`patents, and all prior art references cited during prosecution of the asserted patents.
`
`Complainants’ already have copies of these references.
`
`Bentley’s disclosure of prior art is based on a priority date for the asserted patents of
`
`April 18, 2002.
`
`ON-SALE AND PRIOR PUBLIC USE UNDER 35 U.S.C. § 102(b)
`
`The following table identifies vehicles on sale or in public use in the United States before
`
`the priority date which anticipate or render the asserted claims obvious. On information and
`
`belief, each of these vehicles were sold to, used by, and known to, a large number of individuals,
`
`such that the details of each specific offer or use is impractical, and should be unnecessary.
`
`2002/2003 Hummer H2
`
`Mitsubishi Lancer Evolution VII
`
`Prior Public Use / Item Offered For Sale Date
`1997-2002 Ford Expedition
`First sale and use not later than October 2, 1996
`(for the model year 1997 vehicle)
`First use in early 2001, not later than the New
`York Auto Show on April 10, 2001.
`First use no later than April 2001, at the New York
`Auto Show.
`First sale in approximately 1987 to Porsche
`Motorsport North America, Inc.
`First use in approximately 1988 by Bruce Canepa.
`
`Porsche 959
`
`9
`
`Ex. 2001-0009
`
`

`

`III.
`
`DISCLOSURE OF ANTICIPATION AND OBVIOUSNESS GROUNDS
`
`The references listed above as invalidating under § 103 render the Asserted Claims
`
`obvious when the references are read in combination with each other, and/or when read in view
`
`of the state of the art and knowledge of those skilled in the art. Each and every reference
`
`identified is also relevant to the state of the art at the time of the alleged invention. Bentley may
`
`rely upon a subset of the references listed above, for purposes of obviousness depending on the
`
`claims that JLR ultimately asserts at trial, the Court’s claim construction, and after further
`
`investigation and discovery. In addition, Bentley incorporates by reference the entirety of the
`
`arguments and exhibits presented in its petitions for Inter Partes Review (Nos. 2019-01502 and
`
`2019-01539) (BENTLEY0000001-0010528).
`
`At this time, Bentley discloses the following combinations of prior art.
`
`Claim
`Chart
`21-A
`
`Asserted
`Claims
`21, 24
`
`21-B
`
`21, 24
`
`21-C
`
`30-A
`
`21, 24
`
`30-32
`
`30-B
`
`30-32
`
`41-A
`
`41, 42, 33
`
`41-B
`
`41, 42, 33
`
`Invalidity Contentions and Combinations
`
`- Porsche 959 Art alone under § 102 (claim 21)
`- Porsche 959 Art in view of the knowledge of a POSA under § 103
`- Porsche 959 Art in view of the Hummer H2 Art under § 103
`- The Lancer Art in view of the knowledge of a POSA under § 103
`(claim 21)
`- GB 2,273,580 (“GB ’580”) in view of the Lancer Art and the knowledge
`of a POSA under § 103
`- GB ’580 in view of the Lancer Art and the Hummer H2 Art under § 103
`- The Lancer Art in view of the Active Trac Art under § 103
`- GB ’580 in view of the Lancer Art and the Active Trac Art under § 103
`- Porsche 959 Art alone under § 102
`- Porsche 959 Art in view of the knowledge of a POSA under § 103
`- Porsche 959 Art in view of the Hummer H2 Art under § 103
`- Lancer Art alone under § 102 (claim 30)
`- The Lancer Art in view of the knowledge of a POSA under § 103
`- The Lancer Art in view of the Hummer H2 Art under § 103
`- Porsche 959 Art in view of the knowledge of a POSA under § 103
`- The Porsche 959 Art in view of the Ford Expedition under § 103
`- The Porsche 959 Art in view of the Range Rover under § 103
`- The Porsche 959 Art in view of GB ’580 under § 103
`- GB ’580 in view of the Lancer Art and U.S. Pat. No. 6,260,859
`under § 103
`
`10
`
`Ex. 2001-0010
`
`

`

`43
`
`43
`
`46
`
`46
`
`- Porsche 959 Art in view of the knowledge of a POSA under § 103
`- Porsche 959 Art in view of the Hummer H2 Art under § 103
`- The Lancer Art in view of the knowledge of a POSA under § 103
`- GB 2,273,580 (“GB ’580”) in view of the Lancer Art and the Hummer
`H2 Art under § 103
`- GB ’580 in view of the Lancer Art and the knowledge of a POSA under
`§ 103
`- The Lancer Art in view of the Active Trac Art under § 103
`- GB ’580 in view of the Lancer Art and the Active Trac Art under § 103
`- Porsche 959 Art in view of the knowledge of a POSA under § 103
`- Porsche 959 Art in view of U.S. Pat. No. 5,941,614, EP 0983894, or
`Rover Freelander under § 103
`- GB ’580 in view of the Lancer Art and the knowledge of a POSA under
`§ 103
`- GB ’580 in view of the Lancer Art and either U.S. Pat. No. 5,941,614,
`EP 0983894, or Rover Freelander under § 103
`
`A.
`
`Claim 21 is Anticipated or Obvious Over the Porsche 959 Art Alone, or
`Obvious Over the Porsche 959 Art in View of the Hummer H2 Art
`(Appendix 21-A)
`
`The Porsche 959 Art discloses each element of the Base Claim (abbreviated B.C.)
`
`common to all of the asserted independent claims. As used herein, the Porsche 959 Art refers to
`
`each and every one of the following sources describing the Porsche 959, either used alone or in
`
`combination with one other:
`
`Prior public sale and use of the Porsche 959 vehicle
`
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile – Part 1-4,
`
`Automobiltechnische Zeitschrift 88 (May-September 1986) (BENTLEY0010877-
`
`BENTLEY0010957)
`
`Porsche 959 Driver’s Manual (BENTLEY0010958)
`
`Porsche 959 Flyer (BENTLEY0011074)
`
`Porsche 959 Workshop Manual (BENTLEY0011087)
`
`11
`
`Ex. 2001-0011
`
`

`

`For simplicity, these contentions often cite to a single document in the Porsche 959 Art,
`
`however that citation is intended to encompass all similar disclosures from the other sources
`
`within the Porsche 959 Art.
`
`The “Porsche 959 is equipped with an electro-hydraulically regulated all-wheel drive
`
`control system.” Driver’s Manual at 52, col. 1. “The driver has four programs which can be
`
`selected to suit road conditions or task in hand by moving a stalk switch on the steering column.”
`
`Id. The selected program is displayed in the instrument panel by illumination of one of the four
`
`lights arranged vertically down the center of the instrument (below left):
`
`ATZ at 356.
`
`Driver’s Manual at 54.
`
`The driver uses the stalk switch (above right) to select a driving surface, for example Ice,
`
`by pushing the stalk up or down until the symbol for the corresponding icon illuminates in the
`
`dashboard display. The Porsche 959 driver could select from multiple driving surfaces, for
`
`example Ice/snow or “Wet.” “Four options are selectable: three programs with fine-tuning for
`
`optimum driving behavior under different road surface conditions, and one “Traction” program
`
`for difficult driving-off (snow, mud, etc.), or for special driving tasks. The selected program is
`
`displayed in the instrument.” ATZ at 356 (emphasis added).
`
`12
`
`Ex. 2001-0012
`
`

`

`The system diagram reproduced below shows that two subsystems, the interaxle
`
`differential (shown in red) and the lateral lock (shown in light blue) are connected to a vehicle
`
`controller (the “function drive controller” in the center).
`
`The first subsystem, the interaxle differential, regulates the amount of torque distributed
`
`to the front wheels “in a plurality of subsystem configuration modes.” ATZ at 356, col. 2. The
`
`control system adopts a different torque distribution depending on the selected driving mode, and
`
`other variables such as speed.
`
`“Depending on the preselected program, the all-wheel drive controller calculates the
`
`corresponding values for interaxle differential and lateral lock from the engine output, wheel
`
`speeds, and additional vehicle parameters.” ATZ at 356, col. 2. The interaxle differential is
`
`represented by an icon with a solid vertical white line, a visual representation of the front/back
`
`torque split. Driver’s Manual at 54; ATZ at 356.
`
`13
`
`Ex. 2001-0013
`
`

`

`The second subsystem, the rear-axle slip limiter, for adjusting lateral lock, controls a
`
`clutch pack integrated into the rear axle housing, locking the two rear axles, and forcing the rear
`
`wheels to spin at the same rate. The vehicle will adopt a different percentage of lock depending
`
`on the selected driving mode, and other variables such as speed. ATZ at 356, col. 2. In the
`
`instrument, “[t]he gauge on the left shows the amount of lock applied by the rear-axle slip
`
`limiter.” Driver’s Manual at 54.
`
`These two subsystems operate in a plurality of configuration modes—the subsystems
`
`target different operating percentages depending on the driving mode—and are analogous to the
`
`center differential and rear differential subsystems listed at the bottom of Figs. 5 and 6 in the
`
`’828 patent.
`
`Each of the four available programs – Traction, Ice/snow, Wet, and Dry – is a driving
`
`mode, and for each selectable driving mode, the controller configures the two subsystems—
`
`interaxle differential and lateral lock—in a manner suitable for a respective driving surface.
`
`14
`
`Ex. 2001-0014
`
`

`

`“Four options are selectable: three programs with fine-tuning for optimum driving behavior
`
`under different road surface conditions, and one “Traction” program for difficult driving-off
`
`(snow, mud, etc.)” ATZ at 356, col. 1. In the “Dry” program, the drive torque distribution
`
`corresponds to the axle load distribution—typically 40% load to the front wheels at constant
`
`speed on a dry road. Id. But in the “Traction” program, the controller uses fixed parameters, in
`
`contrast to the dynamically controlled values in the “Dry” program. Id.
`
`Driver’s Manual at 52.
`
`Traction Program: “In this setting, the very high degree of lock almost completely
`
`prevents any of the four wheels slipping. This proves its worth in extracting the car from deep
`
`mud or snow. . .” Id.
`
`Ice Program: “In this program for ice and snow-covered roads, the front wheels are
`
`driven with a constant, maximum driving torque and the rear wheels exert a constant, interactive
`
`slip-limiting effect. Both effects are maintained independent of speed. . . . in the interests of
`
`comfort you should select this program only on very slippery surfaces or when driving on ice and
`
`snow.” Id.
`
`Wet-Road and Dry-Road Programs: “In brief terms, these settings split the driving
`
`torque to suit the axle load. At a constant speed, approximately 40% of the driving force is
`
`applied to the front wheels. As the car accelerates, the percentage of drive to the front wheels is
`
`15
`
`Ex. 2001-0015
`
`

`

`reduced because the front-axle load decreases. These programs also make provision for speed-
`
`dependent adjustments matched to particular road conditions.” Id.
`
`The Porsche 959 ATZ Article discloses two off-road modes, a “Traction” program “for
`
`difficult driving-off (snow, mud, etc.)” and an “Ice, snow” program for driving on “ice and
`
`snow-covered roads.” ATZ at 356, col. 1; Driver’s Manual at 52. In the two off-road modes, the
`
`subsystems are controlled in a manner suitable for driving on off-road surfaces. “The traction
`
`program is intended to aid pulling away under difficult conditions and is not suitable for
`
`normal traffic.” Driver’s Manual at 52, col. 2 (original emphasis). Instead, the traction
`
`program “proves its worth in extracting the car from deep mud or snow.” Id. The Ice program
`
`should only be selected “on very slippery surfaces or when driving on ice and snow.” Id. In the
`
`Ice program, “the front wheels are driving with a constant, maximum driving torque and the rear
`
`wheels exert a constant, interactive slip-limiting effect.” Id.
`
`The subsystems are controlled differently in the on-road modes, which use “fixed
`
`parameters.” ATZ at 356, col. 3. In the wet and dry-road programs, the “settings split the
`
`driving torque to suit the axle load. At a constant speed, approximately 40% of the driving force
`
`is applied to the front wheels.” Driver’s Manual at 52. The wet and dry-road programs “also
`
`make provision for speed-dependent adjustments matched to particular road conditions.” Id.
`
`Claim 21 additionally recites a driving mode suitable for driving on sand. Claim 21 is
`
`obvious in light of the Porsche 959 Art. A POSA would have understood that an off-road
`
`vehicle such as the Porsche 959, originating from a famous rally car, would be suitable for
`
`driving on surfaces such as sand. It was well within the skill of a POSA to test the driving
`
`modes in the Porsche 959 to determine their suitability for driving on different types of sand, or
`
`to develop an additional driving mode for sand. A POSA also would have known that the
`
`16
`
`Ex. 2001-0016
`
`

`

`Traction Mode in the Porsche 959 (which is suitable for mud) is suitable for some types of sand,
`
`because the settings for the differentials in the Porsche 959 would be the same for either surface.
`
`See ’828 patent, 15:7-8 (the “differential control is the same as in the mud/ruts mode.”).
`
`Alternatively, claim 21 is obvious over the Porsche 959 Art in view of the Hummer H2
`
`Art. The Hummer H2 was an infamous vehicle sold by General Motors beginning in 2002. The
`
`Hummer H2 had two modes suitable for sand, depending on whether the vehicle is traveling
`
`through light sand (a slippery surface), or deep sand. In the Hummer H2, the “4HI Locked”
`
`mode was designed “for semi-slippery surfaces like snow, light sand, or wet areas.” Hummer
`
`Powertrain Article at 1 (emphasis added). Alternatively, the “4 LO Locked” mode “allow[s] a
`
`driver to select a different set of calibrations for the traction control system, using a separate
`
`‘TC2’ button. This provides additional wheel slip for select operating conditions and road
`
`surfaces, such as paddling through deep sand.” Id.at 2 (emphasis added).
`
`Hummer Powertrain Article at Cover.
`
`The functionality of the Hummer H2 has been described in numerous printed
`
`publications. Bentley has identified a small number of references describing the Hummer H2,
`
`17
`
`Ex. 2001-0017
`
`

`

`but reserves the right to supplement these contentions if other documents describing the Hummer
`
`H2 with additional detail or clarity are located during discovery. As used herein, the Hummer H2
`
`Art refers to each and every one of the following sources describing the Hummer H2, either used
`
`alone or in combination with one other:
`
`Prior public sale and use of the Hummer H2
`
`The Hummer H2 Owner’s Manual (BENTLEY0011349)
`
`The contents of the Hummer H2 Press Kit and Media Page (BENTLEY0011273-
`
`0011348), including the “Hummer Powertrain Article” (BENTLEY0011336)
`
`The Lynch Hummer Powertrain Article (BENTLEY0001471)
`
`Hummer H2 by John Lamm (BENTLEY0016197)
`
`For simplicity, these contentions often cite to a single document in the Hummer H2 Art,
`
`however that citation is intended to encompass all similar disclosures from the other sources
`
`within the Hummer H2 Art.
`
`The Hummer H2 Press Kit and Media Page refers to 5,000 press kits (pictured below)
`
`advertising the features of the new Hummer H2. The press kit contains seven articles
`
`BENTLEY0011273-0011348). Copies of the same articles were available on GM’s website by
`
`December, 2001. (BENTLEY0011278).
`
`18
`
`Ex. 2001-0018
`
`

`

`The Hummer H2 had the following three selectable driving modes:
`
`(4HI) A high-range open mode “for normal, everyday driving on dry road surfaces.”
`
`(4HI Lock) A high-range locked mode “for semi-slippery surfaces like snow, light sand,
`
`or wet areas.”
`
`(4LO Lock) A low-range locked mode “for severe off-pavement use, such as crawling
`
`over large rocks.”
`
`A POSA familiar with the Hummer H2 would have understood that the vehicle had
`
`multiple operating modes, and the driver should select an operating mode based on the driving
`
`surface. For example, a driver would select the 4HI mode when driving on the highway
`
`(pavement), the 4HI Lock mode when driving in light sand, or the 4LO Lock mode when driving
`
`over large rocks.
`
`The Hummer Powertarin Article also discloses the configuration of multiple subsystems
`
`based on the selection of different driving modes. In addition to electronic throttle control
`
`19
`
`Ex. 2001-0019
`
`

`

`(ETC), the Hummer H2 configured the transfer case, ABS brakes, and traction control in
`
`response to the driving surface, or the driver’s selection of a driving mode. The Hummer
`
`Powertrain Article at 2 describes the “four-channel antilock braking/traction control system
`
`(ABS/TCS),” which allowed greater levels of wheel slip on surfaces such as gravel and sand:
`
`In addition to providing optimum control on slippery surfaces, the ABS
`can detect and adjust its braking capabilities to rough off-road surfaces
`like gravel and potholes. . . . This provides distinct advantages in different
`driving conditions, such as loose sand or gravel in the desert or mud or
`slippery conditions.
`
`TC2, a feature of the ABS/TCS system available only in the off-road driving modes,
`
`“frees the TCS up to provide more wheel slip on loose or deformable road surfaces like sand,
`
`where a driver typically needs to “paddle” through.” Hummer Powertrain Article at 2.
`
`The 959 Art emphasizes the importance of “the highest active driving safety possible” in
`
`the development of the Porsche 959. ATZ at 266, col.3. For the 959 project, Porsche created an
`
`entirely new brake system, and introduced antilock braking (ABS) into a motorsports vehicle for
`
`the first time. ATZ at 411, col.3. The ABS system in the Porsche 959 would have been
`
`modernized by April, 2002. One area of modernization concerned the ABS system’s ability to
`
`cope with different driving surfaces. Whereas ABS is nearly always superior to driver-managed
`
`braking, one exception is braking on loose and deformable surfaces like sand and gravel.
`
`Patent Owner’s own prior art vehicle manuals, for example the 2000 Range Rover Owner’s
`
`Handbook, reflect the understanding at the time that ABS could be a detriment in soft surfaces
`
`such as sand or gravel:
`
`On soft surfaces such as powdery snow, sand or gravel, and also on very
`rough surfaces, braking distances with ABS may be greater than those
`achievable with a non-ABS system. This is because the natural action of
`locked wheels on soft surfaces is to build up a wedge of material in front
`of the wheels which assists in stopping (however, ABS will continue to
`provide better stability and steering control).
`
`20
`
`Ex. 2001-0020
`
`

`

`(BENTLEY0014814).
`
`B.
`
`Claim 21 is Obvious Over GB ’580 in View of the Lancer Art alone,