Filed on behalf of: Jaguar Land Rover Limited
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`Entered: November 25, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`BENTLEY MOTORS LIMITED
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`and
`BENTLEY MOTORS, INC.,
`Petitioner,
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`v.
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`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`_______________________
`Case IPR2019-01502
`Patent RE46828
`______________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`
`
`TABLE OF CONTENTS
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`I.
`II.
`
`III.
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`Page
`Introduction ...................................................................................................... 1
`Background ...................................................................................................... 3
`A. Overview of the ’828 patent’s award-winning technology ................... 3
`B.
`Prosecution History: The Examiner allowed the challenged
`claims over art similar to the Porsche 959 references ........................... 9
`Procedural History ............................................................................... 12
`C.
`Person of Ordinary Skill In the Art ..................................................... 14
`D.
`Petitioners Failed To Show A Likelihood Of Prevailing On The
`Merits ............................................................................................................. 14
`A.
`The Porsche 959 references do not teach the claimed vehicle
`control system that controls a plurality of subsystems ....................... 14
`1.
`The ’828 patent defines the differential subsystem as a
`single subsystem ....................................................................... 16
`Figures 5 and 6 do not describe a vehicle’s center and
`rear differentials as two distinct subsystems............................. 17
`The Porsche 959’s differential system is the same as
`every other differential system described in the prior art,
`such as Shiraishi, already considered by the Examiner ............ 20
`The Porsche 959 references do not teach both “driving modes”
`and “subsystem configuration modes” ................................................ 22
`Petitioners fail to address known objective indicia of non-
`obviousness that demonstrate patentability ......................................... 24
`Petitioners fail to show that their primary references are prior
`art printed publications ........................................................................ 30
`1.
`Petitioners fail to allege, much less show, that the
`Porsche 959 manual was publicly available ............................. 31
`Petitioners fail to allege, much less show, that the
`Porsche ATZ articles were publicly available .......................... 38
`
`B.
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`C.
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`D.
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`2.
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`3.
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`2.
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`i
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`2.
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`3.
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`4.
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`5.
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`6.
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`IV. The Petition Warrants Discretionary Denial Under 35 U.S.C.
`§§ 314(a) and 325(d) ..................................................................................... 42
`A.
`The Petition warrants denial under § 325(d) ....................................... 43
`1.
`B-D Factor 1: There are no material differences between
`the Porsche 959 art and Shiraishi .............................................. 44
`B-D Factor 2: The Porsche 959 references are cumulative
`of Shiraishi ................................................................................ 45
`B-D Factor 3: The Examiner closely evaluated Shiraishi,
`using it as a basis for rejections ................................................ 46
`B-D Factor 4: Petitioners make the same arguments here
`already rejected by the Examiner when considering
`Shiraishi .................................................................................... 46
`B-D Factor 5: Petitioners failed to address the
`Examiner’s analysis of Shiraishi ............................................... 47
`B-D Factor 6: Petitioners have presented no reasons to
`reconsider the Examiner’s conclusions ..................................... 48
`The Petition warrants denial under § 314(a) ....................................... 48
`B.
`Conclusion ..................................................................................................... 51
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`V.
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) ............................................................................ 39
`Alice Corp. v. CLS Bank Int’l,
`523 U.S. 209 (2014) ............................................................................................ 13
`ASM IP Holding B.V. v. Kokusai Elec. Corp.,
`IPR2019-00369, Paper 8 (June 27, 2019) ........................................................... 37
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (Dec. 15, 2017)....................................................passim
`Becton, Dickinson & Co. v. Tyco Healthcare Grp.,
`616 F.3d 1249 (Fed. Cir. 2010) .......................................................................... 23
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ..................................................30, 31, 32, 33, 38
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .............................................................. 32, 38, 40
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) .............................................................................. 34
`E-One, Inc. v. OshKosh Corp.,
`IPR2019-00162, Paper 16 (June 5, 2019) ........................................................... 42
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) .......................................................................... 23
`Goss Int’l Americas, Inc. v. Graphic Mgmt. Assocs., Inc.,
`739 F. Supp. 2d 1089 (N.D. Ill. 2010) ................................................................ 37
`Gross v. Town of Cicero,
`619 F.3d 697 (7th Cir. 2010) .............................................................................. 34
`Harmonic Inc. v. Avid Tech, Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 41
`
`iii
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`HTC Corp. v. Cellular Commc’ns Equip., LLC,
`701 F. App’x 978 (Fed. Cir. 2017) ..................................................................... 23
`Int’l Bus. Machs. Corp. v. Intellectual Ventures II LLC,
`IPR2015-01323, Paper 38 (Sept. 27, 2016) ........................................................ 41
`Intel Corp. v. Alacritech, Inc.,
`IPR2017-01395, Paper 8 (Nov. 22, 2017) .......................................................... 41
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) .......................................................................... 38
`
`Next Caller v. TRUSTID, Inc.
`IPR2019-00961, -00962, Paper 10 (Oct. 16, 2019) ...................................... 42, 49
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (Sept. 12, 2018) .............................................. 42, 48, 49
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 50
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019) .......................................................................... 32
`Stryker Corp. & HowMedica Osteonics Corp. v. KFX Med., LLC,
`IPR2019-00817, Paper 10 (Sept. 16, 2019) .................................................. 30, 42
`Wasica Fin. GmbH v. Continental Automotive Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................................... 30
`STATUTES
`35 U.S.C. § 102 ........................................................................................................ 30
`35 U.S.C. § 312(a)(3) ......................................................................................... 30, 39
`35 U.S.C. § 314(a) ......................................................................................... 2, 42, 48
`35 U.S.C. § 325(d) ................................................................................... 2, 42, 43, 49
`REGULATIONS
`37 C.F.R. § 1.68 ................................................................................................. 40, 41
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`37 C.F.R. § 42.2 ....................................................................................................... 40
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 33
`37 C.F.R. § 42.63(a) ................................................................................................. 40
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`
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`Exhibit
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`Exhibit List
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`
`Description
`Defendants’ Preliminary Invalidity Contentions, Jaguar Land Rover
`Ltd. v. Bentley Motors Ltd., No. 2:18-CV-320 (E.D. Va. Nov. 5,
`2019)
`Bob Sorokanich, Wrecked Porsche 959 Sells for $467,500 at
`Monterey Auction, Road & Track (Aug. 24, 2018)
`Amended Complaint for Patent Infringement, Jaguar Land Rover
`Ltd. v. Bentley Motors Ltd., No. 2:18-CV-320 (E.D. Va. Nov. 1,
`2018), ECF No. 31 (“Am. Compl.”)
`David Colman, At Long Last: Federalizing the Porsche 959 Has
`Been a Long Road. Now, at Least, It Can Be Traversed, Autoweek
`(Sept. 14, 2003)
`Reserved
`
`Reserved
`
`CPI Inflation Calculator, Bureau of Labor Statistics,
`https://www.bls.gov/cgi-bin/cpicalc.pl
`VCARS, Dual Queen’s Awards in Diamond Year, AA Cars (Apr.
`23, 2008)
`Kevin Hepworth, First Drive, The Daily Telegraph (Sydney
`Australia) (Oct. 9, 2004) (Exhibit D to Am. Compl., ECF No. 31-4)
`Land Rover Wins Two Queen’s Awards, The Manufacturer (June 27,
`2008) (Exhibit E to Am. Compl., ECF No. 31-5)
`Richard Russell, Seize Control of All Terrains, The Globe and Mail
`(May 19, 2005) (Exhibit F to Am. Compl., ECF No. 31-6)
`Jan Prins & David Armstrong, Terrain Response, Land Rover
`Official Magazine (Exhibit G to Am. Compl., ECF No. 31-7)
`Land Rover LR3 Wins Prestigious 2005 Motor Trend SUV of the
`Year, PR Newswire (Oct. 27, 2004) (Exhibit H to Am. Compl., ECF
`No. 31-8)
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`vi
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`
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`Exhibit
`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
`
`Description
`David Booth, 2007 Range Rover A Masterpiece in the SUV Gallery,
`The Star Phoenix (Feb. 2, 2007) (Exhibit I to Am. Compl., ECF No.
`31-9)
`John LeBlanc, Nothing In Its Way: The Land Rover LR3 Can Go
`Anywhere You Want Thanks to the New Terrain Response System,
`The Gazette (Montreal) (Nov. 15, 2004) (Exhibit K to Am. Compl.,
`ECF No. 31-11)
`Terrain Response Wins Henry Ford Award: Land Rover Has Won a
`Henry Ford Technology Award for Its Patented Terr Response
`System, PAGCMS (2005)
`Jaguar Land Rover Limited’s Opposition to Defendants’ Motion to
`Dismiss, Jaguar Land Rover Ltd. v. Bentley Motors Ltd., No. 2:18-
`CV-320 (E.D. Va. Dec. 3, 2018), ECF No. 38
`Motor Trend Names 2005 Sport/Utility of the Year Winner, Motor
`Trend (Oct. 27, 2004)
`Arthur St. Antoine, Long-Term Verdict: 2005 Land Rover LR3 HSE,
`Motor Trend (Oct. 1, 2006)
`John Kiewicz, 2005 SUV of the Year: Land Rover LR3, Motor Trend
`(Oct. 28, 2004)
`Opinion and Order, Jaguar Land Rover Ltd. v. Bentley Motors Ltd.,
`No. 2:18-CV-320 (E.D. Va. June 26, 2019)
`The Queen’s Awards for Enterprise, Background Note: Business
`Awards, Department for Business, Innovation and Skills Enterprise
`Directorate
`The Queen’s Awards for Enterprise: Innovation, Winner’s List
`(2006-2010)
`Rule 16(b) Scheduling Order, Jaguar Land Rover Ltd. v. Bentley
`Motors Ltd., No. 2:18-CV-320 (E.D. Va. Sept. 25, 2019), ECF No.
`55
`U.S. Patent No. 5,366,041 (“Shiraishi”)
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`Exhibit
`2026
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`2027
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`Description
`RM Sotheby’s – 1985 Porsche 959 Paris-Dakar, The Porsche 70th
`Anniversary Auction 2018 (Description of RM Sotheby’s Auction
`Lot No. 196)
`RM Sotheby’s – 1988 Porsche 959 Sport, Paris 2017 (Description of
`RM Sotheby’s Auction Lot No. 131)
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`IPR2019-01502 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`I.
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`Introduction
`Petitioners filed two petitions for inter partes review challenging the same
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`claims of Patent Owner’s U.S. Patent No. RE46,828 (the “’828 patent”) (Ex.
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`1001), ranking this one as their best (Paper 3 in the -01539 IPR). But that ranking
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`is based on a low bar. This Petition relies on prior art that suffers from the same
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`fatal defects as prior art that the Examiner expressly considered and rejected.
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`First, Petitioners’ primary references, which all relate to the Porsche 959
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`sports car, do not teach a vehicle control system controlling multiple subsystems.
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`Rather, just like the Shiraishi prior art that was expressly considered, applied and
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`rejected by the Examiner during prosecution, the Porsche 959 references merely
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`describe controlling a single subsystem (much like many other vehicles prior to the
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`invention of the ’828 patent).
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`Second, even if the Porsche 959 references disclosed controlling multiple
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`subsystems, the Petition still fails because Petitioners do not identify any
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`disclosure in the Porsche 959 references for the claimed “subsystem configuration
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`modes.” This is simply a failure of proof that cannot be overcome.
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`Third, Petitioners ignore the overwhelming amount of objective evidence
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`indicating that the inventions of the ’828 patent are non-obvious but the Board
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`should not. As discussed further below, when the first Range Rover equipped with
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`the inventions of the ’828 patent, called Terrain Response, was released the
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`industry praise was deafening. No one had ever done anything like it before, and
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`the industry recognized it.
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`Fourth, Petitioners fail to establish that the Porsche 959 references are prior
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`art printed publications. Specifically, Petitioners rely on the driver’s manual for the
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`rare and exotic Porsche 959, but this manual appears to have never been indexed in
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`any subject-matter searchable database. Moreover, only 292 production 959 cars
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`were ever built, the car was not legal in United States for over a decade because of
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`U.S. regulations and it cost $295,000 in 1987. It is folly to assume that a POSA
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`searching for relevant subject matter would have located or have even been able to
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`obtain a copy of this manual.
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`Here, the Board should exercise its discretion and deny institution under
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`§§ 314(a) and 325(d). The Examiner already expressly considered the exact type of
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`single subsystem control in the Porsche ’959 because it considered and rejected a
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`functionally identical system in Shiraishi. And as shown below, Petitioners merely
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`repeat the same allegations for the Porsche 959 references that have been
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`considered and rejected. There is no reason for the Board to plow that same ground
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`again here, and doing so would be a waste of the Board’s and the parties’ time and
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`resources. Moreover, due to Petitioners’ delay in filing this IPR, the district court
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`trial will resolve the same invalidity questions presented here roughly four months
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`before the Board would issue its final written decision.
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`For all of these reasons, the Board should deny institution.
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`II. Background
`A. Overview of the ’828 patent’s award-winning technology
`The ’828 patent, entitled “Vehicle Control,” describes and claims “a vehicle
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`control system arranged to control a plurality of vehicle subsystems each of which
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`is operable in a plurality of subsystem configuration modes” when driving on
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`different off-road surfaces and terrains. ’828 patent 2:2-6. Before the invention,
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`“drivers often encounter[ed] a broad range of surfaces and terrains in both on-road
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`and off-road settings,” but prior art control systems did not allow a driver to
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`“provide direct input regarding the surface terrain” to optimize the selection of
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`“appropriate subsystem configuration modes” for different terrains. Id. at 1:47-55.
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`The increasingly large number of configuration choices was “complicated and
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`confusing” to all but “very experienced” drivers. Id. at 1:35-40. As a result, prior
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`art control systems delivered “less than optimal stability, handling, and safety
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`performance.” Id. at 1:55-61. Thus, “there [wa]s a need for an integrated control
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`system” that “provide[d] improved control of the vehicle on a broad range of
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`surfaces.” Id. at 1:57-61.
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`Patent Owner recognized this need, solved it, and patented it. The
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`innovations described and claimed in the ’828 patent, and embodied in Patent
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`Owner’s products, were immediately praised by the automotive industry because
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`they allow drivers to simply select the appropriate terrain mode and drive. “In
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`simple terms, Land Rover has made serious off-roading as easy as point (vehicle)
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`and click (mode). Your grandmother could drive the LR3 everywhere we did.” Ex.
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`2020.
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`
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`Indeed, this ground-breaking technology was the primary reason Patent Owner
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`won the 2005 Motor Trend Sport/Utility of the Year award:
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`[P]erhaps [the] most important [update in the LR3 is] the debut of Land
`Rover’s brilliant Terrain Response system, which allows drivers to
`automatically configure the vehicle’s myriad 4WD systems for
`different conditions (i.e., mud, snow, sand) simply by twisting a dial.
`The LR3 proved as impressive in the metal as it looked on paper,
`winning our 2005 Motor Trend Sport/Utility of the Year award.
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`Ex. 2019.
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`In addition, Patent Owner’s innovative Terrain Response technology was
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`awarded the prestigious the Queen’s Award in 2008 for Innovation. Ex. 2008;
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`Ex. 2010 (Ex. E to Am. Compl., Jaguar Land Rover Ltd. v. Bentley Motors, No.
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`2:18-CV-320 (E.D. Va. Nov. 1, 2018)); Ex. 2023. The Award for Innovation
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`represents “substantial improvement in business performance and commercial
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`success, sustained over not less than two years, to levels which are outstanding for
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`the goods or services concerned.” Ex. 2022 at 3. Terrain Response was also the
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`basis for Land Rover receiving the Henry Ford Technology Award. Ex. 2016; Ex.
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`2012 at 4 (Ex. G to Am. Compl.).
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`As the Summary of Invention explains, “the present invention provides a
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`vehicle control system arranged to control a plurality of vehicle subsystems.” ’828
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`patent 2:4-5. Figure 4 below shows the vehicle control system “controlling the
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`subsystems.” ’828 patent 5:29-30.
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`IPR2019-01502 (USP RE46,828)
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`’828 patent Fig. 4. The vehicle mode controller 98 controls a plurality of vehicle
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`subsystems, including the engine management system 28, transmission controller
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`30, steering controller 48, brakes controller 62, and suspension controller 82. ’828
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`patent 9:44-49; id. at Fig. 4.
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`“Preferably one of the subsystems comprises a differential system operable
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`to provide to a plurality of levels of differential lock.” ’828 patent 2:64-66. “The
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`differential may be a center differential, a front differential or a rear differential.”
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`Id. at 3:5-6. The transmission sends drive torque to the center differential. Id. at
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`5:57-60. The center differential then transmits drive torque to the front and rear
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`differentials, and the front and rear differentials transmit the torque to the front and
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`rear wheels of the car. Id. at 5:60-62.
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`The driver rotates rotary knob 99 to select one of a plurality of driving
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`modes or surfaces. Id. at 9:59-62; id. at Figs. 4 and 13. The driving modes or
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`surfaces selectable by the driver can include Grass, Sand, Rock Crawl and Mud. Id.
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`at 9:59-10:5, 13:19-23, 16:57-59, Fig. 13. Once the driver selects a mode, the
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`vehicle controller “controls the configuration modes of operation of each of the
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`subsystem controllers.” Id. at 9:44-58, 2:3-9.
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`For example, the driver can select Rock Crawl mode.
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`When in Rock Crawl mode, the vehicle controller configures the powertrain
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`system that sets throttle response to follow an off-road curve (curve B in Figure 7
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`below) that causes the gas pedal to be “relatively insensitive to changes in throttle
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`pedal position” to allow finer throttle control while slowly crawling over boulders.
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`’828 patent at 15:29-33. The vehicle controller also configures the
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`transmission/differential controller 30 to follow the higher locking torque curve B
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`in Figure 8 (below) to “increase the locking torque more rapidly in response to
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`differences in wheel speeds between the vehicle wheels, as measured by slip across
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`differentials.” Id. at 15:34-40. And at the same time, the response of the differential
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`control relative to suspension articulation is increased to follow curve B as shown
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`in Figure 9 (below), ensuring sufficient torque is delivered to wheels that are in
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`contact with the boulders and not simply spinning in the air. Id. at 15:40-44.
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`Id. at Figs. 7-9. The Rock Crawl configuration also adjusts the traction control and
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`dynamic stability control (“D.S.C.”) subsystem to follow curve B in Figure 10
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`(below), and for decreased sensitivity to yaw error according to curve B in Figure
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`11 (below). Id. at 15:44-48.
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`\
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`Id. at Figs. 10-11. Thus, the patented invention gave everyday drivers what they
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`needed to properly set up a highly advanced off-road vehicle for the terrain without
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`being experts themselves. As one reviewer explained:
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`Before attempting to get my LR3 up a near vertical wall with boulders
`the size of grizzly bears, … [I] engage[d] the “Rock Crawl” setting.
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`This adjusted the traction control, electronic throttle, HDC, ride height,
`antilock braking and centre and rear differentials for maximum
`performance. It also had me looking like Sir Edmund Hillary, minus the
`frostbite.
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`Ex. 2015 (Ex. K to Am. Compl.) (emphasis added).
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`And as explained in the next section, the Examiner recognized that this
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`innovative and valuable feature was missing from prior art that is remarkably
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`similar to the teachings Petitioners cite in its Petition for IPR.
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`B.
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`Prosecution History: The Examiner allowed the challenged claims
`over art similar to the Porsche 959 references
`The ’828 patent issued from Patent Application No. 15/227,516 (“the reissue
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`application”). During the reissue examination, the Examiner rejected the pending
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`claims over a combination including U.S. Patent No. 5,366,041 (Ex. 2025,
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`“Shiraishi”), which is just like the Porsche 959 references asserted here in that it
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`lacks a vehicle control system that selects modes in various subsystems. Instead, it
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`(like the Porsche references) discloses only a single subsystem—a differential
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`control subsystem—that controls the distribution of driving torque and amount of
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`lock provided by the differentials.
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`Indeed, the Examiner considered and expressly rejected the idea that a
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`“differential mode control” with a front, center and rear differentials could read on
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`the claimed “vehicle control system arranged to control a plurality of vehicle
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`IPR2019-01502 (USP RE46,828)
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`subsystems” based on Shiraishi. Ex. 1021 at 428-29 (emphasis in original). 438
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`(same), 458-60 (“While Shiraishi discloses a differential subsystem, Shiraishi does
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`not expressly disclose a plurality of vehicle subsystems wherein the plurality of
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`vehicle subsystems comprises one or more of: an engine management system; a
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`transmission system; a steering system; and a suspension system.” (emphasis in
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`original)).
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`Specifically, the Examiner considered Shiraishi’s disclosure of a differential
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`mode control that “operates in various different modes,” in column 1 lines 51-61
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`and the “the front differential 21, the center differential 20, and the rear differential
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`22” controlled by Shiraishi’s differential mode controller in column 5 lines 7-16,
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`and other related disclosures. Id. at 429. Shiraishi’s differential mode control
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`system “allows the driver to select various patterns of differential action of a
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`differential using his or her own discretion.” Ex. 2025 1:42-45 (Shiraishi) 1:42-45.
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`Shiraishi’s driver-selectable modes that configure front, center and rear
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`differentials are shown below:
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`Ex. 2025 (Shiraishi) 4:33-50. For example, Shiraishi’s “A mode” is “best suited for
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`ordinary city driving,” leaving the front differential unlocked and automatically
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`controlling the center and rear differentials. Ex. 2025 (Shiraishi) 5:7-16. In
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`contrast, Shiraishi’s “F Mode” is “most appropriate for off-road driving” and locks
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`all three differentials. Id.
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`After considering Shiraishi’s disclosure of a “differential mode control
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`means” with front, center and rear differentials—just like the Porsche 959
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`references—the Examiner found that “Shiraishi does not expressly disclose the
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`vehicle control system arranged to control a plurality of vehicle subsystems.” Ex.
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`1021 at 428-39 (emphasis in original, and discussing the above-cited teachings at
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`length). And despite stating that secondary reference Fioravanti taught a system
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`controlling a plurality of subsystems, the Examiner allowed the challenged claims
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`over the combination of Shiraishi and Fioravanti, explaining that:
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`As discussed in the Notice of Allowance in [the original prosecution],
`none of the prior art of record, alone or in combination, discloses a
`vehicle control method and system having a driver input for selecting a
`road surface, the system being arranged to control a plurality of vehicle
`subsystems operable
`in a plurality of configuration modes
`corresponding to a plurality of driving modes arranged to select the
`subsystem configuration modes suitable for a respective driving
`surface.
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`Ex. 1021 at 627 (also acknowledging that the art failed to teach the additional
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`limitations recited in each challenged claim).
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`Thus, as will be explained in the following sections, the Examiner analyzed
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`those teachings in Shiraishi that are the same as those relied on by Petitioner in the
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`Porsche 959 references, and found that they did not teach or render obvious the
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`claimed subject matter.
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`C.
`Procedural History
`Patent Owner Jaguar Land Rover Limited protected its award-winning
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`Terrain Response technology with the ’828 patent. After Patent Owner’s direct
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`competitor, Petitioners Bentley Motors Limited and Bentley Motors, Inc.,
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`incorporated this patented technology into their Bentayga sport-utility vehicle,
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`Patent Owner engaged in good-faith negotiations for over two years, but was
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`eventually forced to sue Petitioners for infringement on June 14, 2018. Jaguar
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`Land Rover Ltd. v. Bentley Motors Ltd., No. 2:18-cv-320 (E.D. Va. filed June 14,
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`2018).
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`Patent Owner’s Preliminary Response
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`During these discussions, the Patent Owner filed a reissue application on
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`September 27, 2016. This reissue patent, the ’828 patent, issued on May 8, 2018.
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`On June 14, 2018, Patent Owner sued Petitioners for infringement in the
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`U.S. District Court for the Eastern District of Virginia. Petitioners responded with
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`a motion to dismiss for lack of patentable subject matter and two IPRs, this one
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`and another challenging the same claims (IPR2019-01539).
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`The Court dismissed Petitioners’ § 101 challenge under both steps 1 and 2
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`set forth in Alice Corp. v. CLS Bank Int’l, 523 U.S. 209 (2014). Specifically, the
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`Court held that the claims were not directed to an abstract idea, and with respect to
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`Alice’s step 2, found that the claims recited an “inventive concept” as evidenced by
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`“a number of articles and reviews by third parties praising the Terrain Response
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`technology … [and] not[ing] the inventive features.” Ex. 2021 at 28-31 (Opinion
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`and Order, Jaguar Land Rover Ltd. v. Bentley Motors Ltd., No. 2:18-cv-320, D.I.
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`45 (E.D. Va. June 26, 2019)). As the Court found, the patented “Terrain Response
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`technology improves existing vehicle control technology by permitting drivers to
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`control multiple vehicle subsystems when driving in particular conditions or on
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`certain surfaces with a ‘twist’ and a ‘flick.’” Id. at 30.
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`The district court matter is now in the middle of fact discovery that is
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`scheduled to conclude in mid-January 2020. Ex. 2024. Petitioners have already
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`served their preliminary invalidity contentions that cite to references redundant of
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`those relied on in its two petitions for IPR, including an identical claim that the
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`Porsche 959 reads on the base claims of the ’828 patent. Ex. 2001.
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`D.
`Person of Ordinary Skill In the Art
`Patent Owner does not dispute Petitioners’ definition of a person of ordinary
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`skill in the art at this time, but reserves the right to do so later and elsewhere.
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`III. Petitioners Failed To Show A Likelihood Of Prevailing On The Merits
`Petitioners failed to show that the challenged claims are unpatentable for
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`several independent reasons: (i) the Porsche 959 references fail to teach a vehicle
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`control system “arranged to control a plurality of vehicle subsystems” as recited in
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`the claims—just like Shiraishi, (ii) the Petitioners failed to identify any “subsystem
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`configuration modes” taught by the Porsche 959 references, (iii) the objective
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`evidence of record demonstrates patentability, and Petitioners failed to address it,
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`and (iv) Petitioners failed to properly allege or demonstrate that the Porsche 959
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`references are prior art printed publications.
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`The following sections addresses each of these independent reasons this
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`Petition should be denied on the merits in turn.
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`A. The Porsche 959 references do not teach the claimed vehicle
`control system that controls a plurality of subsystems
`Each of the challenged Base Claims recite a “vehicle control system
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`arranged to control a plurality of vehicle subsystems” and “each of [the vehicle
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`subsystems] is operable in a plurality of subsystem configuration modes.” See, e.g.,
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`’828 patent cls. 21, 26, 30, 37, 41, 43, 45, and 46.
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`Petitioners rely solely on its Porsche 959 references’ all-wheel drive control
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`system to teach Base Claims 1-4 of the ’828 patent. Pet. 19-26. But the Porsche
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`959’s all-wheel drive controller is not “arranged to control a plurality of vehicle
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`subsystems” as claimed in the ’828 patent. Rather it controls only a single
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`subsystem—the differential—as described by the ’828 patent. ’828 patent 2:64-66,
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`3:5-6, 5:57-62, cl. 35. As a result, Petitioners fail to allege, much less demonstrate,
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`that the Porsche references teach each and every element of the challenged claims.
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`Specifically, Petitioners allege that the Porsche 959’s all-wheel drive system
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`discloses a vehicle controller arranged to control only “two subsystems, the
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`interaxle differential (shown in red) and the lateral lock (shown in light blue) ….”
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`Pet. 21. Petitioners admits that “[t]hese [alleged] subsystems [the interaxle
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`differential and lateral lock] are analogous to the center differential and rear
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`differential ….” Pet. 23. But, the interaxle differential and lateral lock (i.e., center
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`and rear differentials) used in Porsche’s 959 sports car are not two different
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`subsystems as claimed and described in the ’828 patent. The interaxle differential
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`and lateral lock in the Porsche 959 are both part of a single differential system.
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`Petitioners effectively admits that