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
`_________________________________
`
`U.S. Patent No. RE46,828
`
`IPR2019-01539
`__________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`TABLE OF CONTENTS
`
`LIST OF EXHIBITS ................................................................................................ iii 
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................... 5 
`
`III.  CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED .................................................................................................. 5 
`
`IV.  SUMMARY OF THE ’828 PATENT AND PROSECUTION
`HISTORY ........................................................................................................ 6 
`
`V. 
`
`STATE OF THE ART ................................................................................... 11 
`
`VI.  PERSON OF ORDINARY SKILL IN THE ART ........................................ 11 
`
`VII.  CLAIM CONSTRUCTION .......................................................................... 12 
`
`VIII.  GROUND 1: CLAIMS 30, 32 AND 45 ARE OBVIOUS OVER GB
`’580 IN VIEW OF THE LANCER ART ...................................................... 15 
`
`A.  GB ’580 ............................................................................................... 16 
`
`B. 
`
`The Mitsubishi Lancer Evolution VII ................................................. 16 
`
`C.  Motivation to Combine GB ’580 and the Lancer Art with
`a Reasonable Expectation of Success ................................................. 20 
`
`D.  GB ’580 and the Lancer Art Disclose the Base Claim
`Elements .............................................................................................. 24 
`
`1. 
`
`2. 
`
`3. 
`
`[BC.1] The Prior Art Discloses “A vehicle control
`system having a driver input device for selecting a
`driving surface” ......................................................................... 24 
`
`[BC.2] The Prior Art Discloses “the vehicle
`control system arranged to control a plurality of
`vehicle subsystems each of which is operable in a
`plurality of subsystem configuration modes” ........................... 26 
`
`[BC.3] The Prior Art Discloses “wherein the
`vehicle control system is operable in a plurality of
`i
`
`
`
`

`

`
`
`4. 
`
`driving modes in each of which it is arranged to
`select the subsystem configuration modes in a
`manner suitable for a respective driving surface” .................... 27 
`
`[BC.4] The Prior Art Discloses “and further
`wherein the plurality of driving modes includes at
`least two off-road modes in which the subsystem
`configurations are controlled in a manner suitable
`for driving on respective off-road driving surfaces,
`and an on-road mode in which the subsystem
`configurations are controlled in a manner suitable
`for driving on road”................................................................... 29 
`
`5. 
`
`It is Axiomatic that Adding a Second Off-Road
`Mode Does Not Confer Patentability ........................................ 30 
`
`Claims 30 and 32 Are Obvious – The Prior Art Teaches
`Ordered Driving Mode Selection ........................................................ 32 
`
`Claim 45 – The Prior Art Teaches a Transmission
`Subsystem with Different Configuration Modes ................................ 34 
`
`E. 
`
`F. 
`
`IX.  GROUND 2: CLAIMS 33, 34, 41 AND 42 ARE OBVIOUS OVER
`GB ’580 IN VIEW OF THE LANCER ART AND ROVER’S ’859
`PATENT ........................................................................................................ 37 
`
`A. 
`
`The ’859 Patent ................................................................................... 37 
`
`B.  Motivation to Combine the ’859 Patent with GB ’580
`with a Reasonable Expectation of Success ......................................... 39 
`
`C. 
`
`The Prior Art Teaches a Suspension Subsystem with
`Adjustable Ride Height Dependent upon Driver Selection
`of a Driving Mode ............................................................................... 40 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Claim 33 is Obvious .................................................................. 40 
`
`Claim 34 is Obvious .................................................................. 43 
`
`Claim 41 is Obvious .................................................................. 44 
`
`Claim 42 is Obvious .................................................................. 45 
`
`
`
`
`ii
`
`
`
`

`

`
`
`X.  GROUND 3: CLAIMS 37 AND 39 ARE OBVIOUS OVER GB ’580
`IN VIEW OF THE LANCER ART AND THE ’318 PATENT ................... 45 
`
`A. 
`
`The ’318 Patent ................................................................................... 46 
`
`B.  Motivation to Combine the ’318 Patent and GB ’580 with
`a Reasonable Expectation of Success ................................................. 50 
`
`C. 
`
`Claims 37 and 39 Are Obvious Over GB ’580 in View of
`the Lancer Art and the ’318 Patent...................................................... 52 
`
`XI.  GROUND 4: CLAIM 46 IS OBVIOUS OVER GB ’580 IN VIEW OF
`THE LANCER ART AND ROVER’S ’614 PATENT ................................. 54 
`
`D. 
`
`The ’614 Patent ................................................................................... 54 
`
`E.  Motivation to Combine the ’614 Patent and GB ’580 with
`a Reasonable Expectation of Success ................................................. 55 
`
`XII.  GROUND 5: CLAIMS 21, 24, AND 43 ARE OBVIOUS OVER GB
`’580 IN VIEW OF THE LANCER ART AND THE HUMMER
`ARTICLE ...................................................................................................... 58 
`
`F. 
`
`The Hummer Article ........................................................................... 58 
`
`G.  Motivation to Combine the Hummer Article and GB ’580
`with a Reasonable Expectation of Success ......................................... 61 
`
`H. 
`
`I. 
`
`Claim 21 is Obvious Because the Prior Art Discloses an
`Off-Road Driving Mode Suitable for Driving on Sand ...................... 63 
`
`Claims 24 and 43 are Obvious Because the Prior Art
`Discloses a Brake System Set to Allow Relatively High
`Wheel Slip Under Braking .................................................................. 64 
`
`XIII.  MANDATORY NOTICES AND PAYMENT OF FEES UNDER 37
`C.F.R. §§ 42.8 AND 42.103 .......................................................................... 66 
`
`A. 
`
`B. 
`
`C. 
`
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................ 66 
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 66 
`
`Notice of Lead and Back-Up Counsel (37 C.F.R. §
`42.8(b)(3)) ........................................................................................... 67 
`
`
`
`
`iii
`
`
`
`

`

`
`
`D. 
`
`E. 
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ..................................... 68 
`
`Payment of Fees (37 C.F.R. § 42.103) ................................................ 68 
`
`XIV.  CONCLUSION .............................................................................................. 68 
`
`CERTIFICATE OF SERVICE ................................................................................ 70 
`
`
`
`
`iv
`
`
`
`

`

`
`
`
`
`Exhibit
`Number
`1001
`
`1002A
`
`1002B
`
`1002C
`
`1002D
`1002E
`1003
`1004
`1005
`1006
`1007
`1008A
`1008B
`1009
`1010
`1011
`1012
`1013
`1014A
`1014B
`1014C
`1014D
`1014E
`1014F
`1014G
`1015
`
`1016
`
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`
`LIST OF EXHIBITS
`
`Exhibit Name
`U.S. Patent No. RE 46,828 (“the ’828 patent”)
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile – Part
`1, Automobiltechnische Zeitschrift 88 (May, 1986) No. 5, pp. 265-270
`(“ATZ”)
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile – Part
`2, ATZ 88 (June, 1986) No. 6, pp. 353-356
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile – Part
`3, ATZ 88 (July/August 1986) No. 7/8, pp. 407-413
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile – Part
`4, ATZ 88 (September 1986) No. 9, pp. 509-513
`Public Availability Statement from the British Library
`Porsche 959 Driver’s Manual
`Expert Declaration of Dr. Glenn R. Bower
`GB 2,273,580
`U.S. Patent No. 6,044,318
`1997 Ford Expedition Owner’s Guide
`2001 BMW 7-Series Owner’s Manual
`2001 BMW 7-Series Owner’s Manual, Service and Warranty Information
`2002 Montero Sport Owner’s Manual
`Intentionally Left Blank
`Intentionally Left Blank
`Hummer H2 Media Page, Internet Archive, December 21, 2011
`2003 Hummer H2 Owner’s Manual
`H2 Chassis Article from Hummer H2 Press Kit
`H2 Exterior Article from Hummer H2 Press Kit
`H2 Interior Article from Hummer H2 Press Kit
`H2 Overview Article from Hummer H2 Press Kit
`H2 Powertrain Article from Hummer H2 Press Kit
`H2 Safety Article from Hummer H2 Press Kit
`H2 Specs Article from Hummer H2 Press Kit
`Affidavit of Christopher Butler from the Internet Archives regarding the H2
`Powertrain Article (the Hummer Article )
`Mitsubishi Motors Press Release – MMC launches Lancer Evolution VII
`(January 26, 2001)
`2001 Mitsubishi Lancer Evolution VII Press Information
`2000 Range Rover Owner’s Handbook
`2001 Chevy Tahoe Owner’s Manual
`2001 Mercedes C-Class Operator’s Manual
`Prosecution File History for the ’828 patent
`Prosecution File History for the ’776 patent
`U.S. Patent No. 7,349,776
`
`iii
`
`

`

`Exhibit
`Number
`1024
`1025
`1026
`1027
`1028
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`1034
`1035
`1036
`1037
`
`1038
`1039
`1040
`1041
`1042
`
`1043
`1044
`1045
`
`1046
`1047
`1048
`
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`
`
`
`
`
`
`Exhibit Name
`EPO File History for 3,252,006
`GB 2,154,763
`U.S. Patent No. 5,941,614
`U.S. Patent No. 6,280,859
`U.S. Patent No. 5,997,108
`Phillips, David, Hummer H2 SUT concept storms N.Y., Automotive News
`(April 10, 2018)
`Hans-Martin Streib and Hubert Bischof, Electronic Throttle Control (ETC):
`A Cost Effective System for Improved Emissions, Fuel Economy, and
`Driveability, SAE International 960338 (1996).
`Constantine, Chris, This Paris-Dakar Porsche 959 Rally Car May Bring in
`$3.4 Million at Auction, The Drive (June 30, 2018)
`Garrick Forkenbrock et al., A Comprehensive Light Vehicle Antilock Brake
`System Test Track Performance Evaluation, SAE INTERNATIONAL 1999-01-
`1287 (1999).
`2003 Lexus GX 470 Owner’s Manual
`2002 Nissan Pathfinder Owner’s Manual
`2002 Infinity QX4 Owner’s Manual
`Ford Press Release (Feb. 8, 1999)
`Frank, Michael, The Best of the New York Auto Show, Forbes (April 16,
`2001)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Honda News, 1990 Honda Accord – Drivetrain (April 1, 1989)
`
`Mitsubishi-Motors Pajero, https://www.mitsubishi‐
`
`motors.com/en/innovation/history/detail/ (1991)
`Mitsubishi Pajero Showroom Catalog
`Mitsubishi Facts and Figures (2005)
`Autocar Magazine, Twin Test Mitsubishi EVO VII vs. Subaru Impreza STi,
`(June 13, 2001)
`Autocar Magazine, Seventh heaven is a new Evo (Feb.14, 2001)
`BestCar Special Edition, Lancer Evolution VII Close-Up
`Car Magazine, Seven samurai Number VII is the most grown-up complete
`Evo ever. But don’t write off for a pipe and slippers yet… (Apr. 2001)
`Car Magazine, BMW v. EVO VII (June 2001)
`Autocar Magazine, Mitsubishi EVO Extreme (Aug. 15, 2001)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`2002 Detroit Auto Show, Part 1, 2002 North American International Auto
`Show (Jan.14, 2002)
`
`iv
`
`
`
`

`

`
`
`
`
`
`Exhibit
`Number
`1056
`1057
`1058
`1059
`1060
`1061
`
`Exhibit Name
`Autocar Magazine, Survival of the fastest (Mar. 7, 2001)
`Motor Trend, BMW 740i Sport (June, 1999)
`Automobile Magazine, Mitsubishi Lancer Evolution VII (May 2001)
`LEVOLANT 30 (May, 2001)
`Lancer Evolution in 4WD Turbo (October, 2001)
`Lancer Evolution VII Technical Information Manual (April, 2001)
`
`v
`
`
`
`

`

`
`
`I.
`
`INTRODUCTION
`Bentley Motors Limited and Bentley Motors, Inc. (“Petitioner”) request inter
`
`partes review (“IPR”) of claims 21, 24, 30, 32-34, 37, 39, 41-43, 45 and 46 of U.S.
`
`Patent No. RE 46,828 (“the ’828 patent”). Ex. 1001. The challenged claims would
`
`have been obvious to a person of ordinary skill in the art (“POSA”), as
`
`demonstrated below.
`
`The ’828 patent is a reissue of U.S. Patent No. 7,349,776 (“the ’776 patent”),
`
`filed on April 17, 2003. Ex. 1023. The ’828 patent claims a control system for a
`
`conventional motor vehicle with multiple driving modes. The driver selects a
`
`driving mode based on the driving surface, and, in response, the vehicle configures
`
`multiple subsystems within the vehicle (e.g. suspension and transmission).
`
`As the ’828 patent itself describes, this control strategy—configuring
`
`multiple vehicle subsystems to suit a selected driving mode—had been known for
`
`many years, and was disclosed in Applicants’ own prior art patent application,1 GB
`
`2,273,580 (“GB ’580”). The ’828 patent explains:
`
`As the number of controllable systems increases, the driver will
`become faced with an increasing number of choices as to which
`configuration modes to select for each of the systems. Unless
`the driver is very experienced, this can become complicated and
`confusing.
`
`
`
`1 The original assignee of the ’776 patent was Ford Motor Company, the same applicant listed on
`the face of GB ’580.
`
`1
`
`

`

`
`
`Therefore, systems have been proposed in which the control of
`a number of the vehicle subsystems is coordinated by a central
`vehicle controller, which can be switched between a number of
`modes thereby controlling all of the subsystems in a
`coordinated way which is simple for the driver to control. Such
`a system is disclosed in GB2273580.
`
`Ex. 1001, 1:36-46.
`
`GB ’580 (Fig. 2, below-left) depicts essentially the same vehicle control
`
`system as the ’828 patent (Fig. 4, below-right).
`
`(Ex. 1005)(color added)
`
`
`
`
`
`
`
`
`
`(Ex. 1001)(color added)
`
`
`
`The “deficiency” of GB ’580, the ’828 patent alleges, is that it lacks a driver
`
`input for selecting a driving surface:
`
`While GB2273580 teaches an integrated control system to
`control and configure vehicle operating subsystems in response
`to control signals, drivers often encounter a broad range of
`surfaces and terrains in both on-road and off-road settings.
`Unfortunately, the operating characteristics of such an
`integrated control system does not provide the driver with the
`ability to provide direct input regarding the surface terrain in
`
`
`
`
`2
`
`
`
`

`

`
`
`an attempt to better select the appropriate subsystem
`configuration modes.
`
`Id., 1:47-55. In the same vein, during more than three years of active prosecution,
`
`the Applicants repeatedly and consistently argued that the feature of a driver input
`
`for selecting a driving surface was the point of novelty distinguishing the
`
`application from the prior art. See below Section IV.
`
`However, the prior art does include vehicle control systems with a driver
`
`input for selecting a driving surface. As described in various publications and as
`
`shown in the published images below, the 2001 Mitsubishi Lancer Evolution VII
`
`vehicle included a driver input button for selecting among three driving surfaces—
`
`tarmac, gravel, or snow. Based on that selection, the vehicle reconfigured its
`
`center and rear differential systems. Ex. 1017, 8-9; Ex. 1059, Page 6; Ex. 1060,
`
`Page 7, Ex. 1048, 82 (together “the Lancer Art,” see section VIII.B. infra).2
`
`
`
`In September 2016, Patent Owner filed for reissue and changed its story.
`
`Patent Owner stated the “error to be corrected is the omission of a claim directed to
`
`
`2 Except as otherwise noted by page numbers designated “Page ##,” all citations
`reference the internal page numbers of the document
`
`
`
`
`3
`
`
`
`

`

`
`
`a vehicle control system having driving modes that include at least two off-road
`
`modes and an on-road mode.” Ex. 1021, Page 425. But the Lancer Art discloses
`
`the allegedly novel feature of “two off-road modes and an on-road mode,” too. As
`
`shown in the images above, the Lancer vehicle had two off-road modes—Gravel
`
`and Snow—and an on-road mode—Tarmac. Ex. 1017, 8; Ex. 1060, Page 7; Ex.
`
`1048, 82. The reissue Examiner failed to recognize this critical disclosure in the
`
`2001 Lancer Press Information (Ex. 1017), which was cited in an IDS during
`
`reissue but never discussed or relied on by the Examiner to reject the claims.
`
`And even disregarding the Lancer and its two off-road modes, the quantity
`
`of off-road modes should never have served as the basis to allow the new reissued
`
`claims. GB ’580 already discloses an open-ended number of driving modes, for
`
`example “sport performance, cruise performance, luxury performance, off-road
`
`performance or a like mode of performance.” Ex. 1005 at 3 (emphasis added). It
`
`would have been trivial to add another “off-road” mode in GB ’580 to arrive at two
`
`off-road modes. See Duplication of Parts, MPEP 144.04(VI)(B)(citing In re
`
`Harza, 274 F.2d 669 (CCPA 1960)(holding that mere duplication of parts has no
`
`patentable significance unless a new and unexpected result is produced); Supercell
`
`Oy v. Gree, Inc., No. PGR2018-8, 2019 WL 80477, *21 (PTAB Jan. 2, 2019)(“it is
`
`axiomatic that duplication has no patentable significance”).
`
`
`
`
`4
`
`
`
`

`

`
`
`In summary, when combining the GB ’580 patent with the Lancer Art, there
`
`is nothing left in the ’828 patent that is arguably new. The challenged claims
`
`should be cancelled.
`
`II.
`
`GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’828 patent is eligible for IPR and that Petitioner
`
`and its real parties-in-interest are not barred or estopped from requesting IPR.
`
`III.
`
`CHALLENGE UNDER 37 C.F.R. § 42.104(b) AND RELIEF
`REQUESTED
`
`Petitioner requests review of claims 21, 24, 30, 32-34, 37, 39, 41-43, 45 and
`
`46 of the ’828 patent on the grounds set forth in the table below and requests
`
`cancellation of the claims as unpatentable.
`
`Grounds
`Ground 1
`
`Ground 2
`
`Ground 3
`
`Ground 4
`
`Ground 5
`
`
`
`Prior Art
`Claims
`Obvious over GB ’580 (Ex. 1005) in view of the
`30, 32, 45
`Lancer Art (Exs. 1017, 1048, 1059, 1060)3
`33, 34, 41, 42 Obvious over GB ’580 in view of the Lancer Art
`and U.S. Pat. No. 6,260,859 (Ex. 1027)
`Obvious over GB ’580 in view of the Lancer Art
`and U.S. Pat. No. 6,044,318 (Ex. 1006)
`Obvious over GB ’580 in view of the Lancer Art
`and U.S. Pat. No. 5,941,614 (Ex. 1026)
`Obvious over GB ’580 in view of the Lancer Art
`and the Hummer Article (Ex. 1015)
`
`21, 24, 43
`
`37, 39
`
`46
`
`
`3 The full description of the Lancer Art can be found in Section VIII.B, infra.
`
`
`
`
`5
`
`
`
`

`

`
`
`IV.
`
`SUMMARY OF THE ’828 PATENT AND PROSECUTION HISTORY
`
`The ’828 patent claims foreign application priority to two Great Britain
`
`applications filed on April 18, 2002 and December 20, 2002, respectively.4 The
`
`’828 patent “relates to the control of vehicles, in particular to the coordinated
`
`control of a number of subsystems of a vehicle,” (Ex. 1001, 1:14-16), wherein
`
`various vehicle subsystems are configured in a manner suitable for a respective
`
`driving surface based on the current driving mode. Id., 2:3-14. The driver uses an
`
`input device (for example, a rotary knob or push buttons) to select a driving mode.
`
`Id., 9:59-64. “Each of the driving modes corresponds to a particular driving
`
`condition or set of driving conditions, and in each driving mode each of the
`
`functions is set to the function mode most appropriate to those conditions.” Id.,
`
`9:55-58. These driving conditions, called “driving surfaces” in the claims, include
`
`motorways, snow/ice, sand, and mud. Id., Figs. 5 and 6.
`
`As the number of subsystems in a vehicle increases, inexperienced drivers
`
`will face “complicated and confusing” choices about how to configure their
`
`vehicle. Id., 1:36-40. The ’828 patent sought to “provide improved control of the
`
`vehicle on a broader range of surfaces” by giving “the driver [] the ability to
`
`provide direct input regarding the surface terrain in an attempt to better select the
`
`appropriate subsystem configuration modes.” Id., 1:51-67.
`
`4 Petitioner does not concede entitlement to a priority date of April 18, 2002 or
`December 20, 2002.
`
`
`
`
`6
`
`
`
`

`

`
`
`In the “Background of the Invention,” Applicants admit that the majority of
`
`the claimed features were already disclosed in their own GB ’580 application. Id.
`
`at 1:41-46. GB ’580 discloses the coordinated control of an open-ended number of
`
`subsystems adapted for a variety of driving modes:
`
`Operating characteristic parameters are stored in an integrated
`control system controller from which they are retrieved to
`control and configure operating subsystems of the motor
`vehicle and thereby the motor vehicle itself. Control and
`configuration can be based on individual recognised operators
`of the vehicle or, alternately, an operating mode can be
`selected for the vehicle. For example, the vehicle can be
`selected to provide sport performance, cruise performance,
`luxury performance, off-road performance or a like mode of
`performance.
`
`Ex. 1005, 2-3 (emphasis added). GB ’580 (figure 2, below left) discloses a vehicle
`
`interface (108, highlighted in blue below) “for the user to communicate with the
`
`integrated control system.” Id., 6. “The integrated control system comprises a
`
`processor based vehicle controller 102 [highlighted green] for controlling and
`
`configuring operating characteristics of the motor vehicle.” Id. “The vehicle
`
`controller 102 is connected to a number of processor controlled operating
`
`subsystems [highlighted yellow] of the vehicle” (Id., 7):
`
`
`
`
`7
`
`
`
`

`

`
`
`Id., Fig. 2 (color added).
`
`
`
`
`
`Ex. 1001, 9:50-53 (color added).
`
`The control system depicted in Figure 4 (above, right) of Applicants’ ’828
`
`patent shows the same elements. A driver input device (99, blue highlight), a
`
`processor based vehicle mode controller for providing the appropriate control
`
`commands to each subsystem controller (98, green highlight), and a number of
`
`subsystem controllers, including subsystems for suspension, steering, brakes, and
`
`transmission (yellow highlight).
`
`GB ’580 was the primary reference the European Patent Office relied on in
`
`rejecting Applicant’s corresponding EPO application. Ex. 1024, Pages 3-6. The
`
`claims in the rejected EPO application were substantially the same as those in the
`
`original ’776 application. Ex. 1022 and 1024. The European Patent Office
`
`rejected the claims for lacking inventive step. Ex. 1024, 8/11/05 Office Action,
`
`Page 4. Applicants withdrew their EPO application after the initial Examination
`
`
`
`
`8
`
`
`
`
`
`

`

`
`
`Report, and similarly abandoned the British priority applications filed in 2002. Id.,
`
`Page 2. The EPO and GB application claims never issued.5
`
`As originally filed, the U.S. claims did not require the driver to select a
`
`driving surface. Instead, the claims recited a control system that could
`
`automatically configure one or more vehicle subsystems according to a driving
`
`mode automatically selected by the vehicle based on the current driving surface.
`
`The Examiner, among other rejections, rejected the originally filed claims as
`
`anticipated by U.S. Pat. No. 5,487,002 to Diller, describing a control system
`
`capable of operating several vehicle subsystems in different driving modes, both
`
`with and without driver input. Ex. 1022, Page 308.
`
`Applicants canceled all of the original claims in favor of new claims that
`
`ultimately issued in the ’776 patent. The new claims abandoned automatic driving
`
`mode selection and instead recited a “driver input for selecting a road surface.” Id.
`
`During prosecution, Applicants repeatedly emphasized driver selection of a road
`
`surface or driving surface as the only point of novelty.
`
` “There is no evidence in this reference that the driver
`interface provides for input of the road surface by the
`driver.” Further, Diller fails to provide any teaching of
`controlling the vehicle performance as a function of the
`driver input of a road surface.
`
`
`
`5 Patent Owner did not obtain claims comparable to the challenged claims
`anywhere else in the world.
`
`
`
`
`9
`
`
`
`

`

`
`
`Id., Pages 308-309 (emphasis added), 461, 572. The Examiner then allowed the
`
`application and the ’776 patent issued.
`
`Patent Owner filed for reissue on September 30, 2016. Patent Owner used
`
`the reissue proceeding to add 41 new claims, the majority reciting new limitations
`
`related to the conventional use of common automotive subsystems. All of the
`
`claims challenged in this petition were added during the reissue proceeding, and
`
`contain new claim language requiring “at least two off-road modes . . . and an on-
`
`road mode”—limitations not present in the original claims. The new claim
`
`language does not save the validity of the challenged claims, because driving
`
`modes (including off-road modes) were well known in the prior art.
`
`The Lancer Press Information (Ex. 1017) was cited in a reissue IDS (Ex.
`
`1021, Page 23), but the reissue Examiner never relied on it, or GB ’580, to reject
`
`the reissue claims. Ex. 1021, Pages 423-463, 609-634; see Intex Recreation Corp.
`
`v. Team Worldwide Corp., IPR2018-00874, Paper 14, 13-14 (PTAB Oct. 29, 2018)
`
`(rejecting discretionary denial argument and noting the prior art reference,
`
`although cited in an IDS initialed by the examiner, “was not the basis of rejection
`
`[,which] weighs against exercising discretion to deny under § 325(d)”). The
`
`reissue Examiner also did not benefit from having Dr. Bower’s detailed testimony
`
`explaining the Lancer Art’s disclosure of two driver-selectable off-road modes
`
`based on road surface conditions, with electronically controlled and configurable
`
`
`
`
`10
`
`
`
`

`

`
`
`Active Center Differential and Active Yaw Control subsystems. Ex. 1004, ¶¶70-
`
`81. Therefore, Grounds 1-5 “do not overlap with the arguments made during
`
`examination” and should not be denied under § 325(d). Donghee America, Inc. v.
`
`Plastic Omnium Adv. Innov., IPR2017-01654, Paper 9, 18-19 (PTAB Jan. 19,
`
`2018).
`
`V. STATE OF THE ART
`As first demonstrated by the 1987 Porsche 959, and later by mass-produced
`
`vehicles from Ford, GM, Mitsubishi, Nissan, and others, vehicles with selectable
`
`on and off-road operating modes were not new at the time of the invention.
`
`Millions of vehicles with at least one on-road mode and at least one off-road mode
`
`were in the public domain, and being driven on public roads, before the priority
`
`date. For an overview of other relevant vehicles on the road as of April 2002, see
`
`the accompanying Declaration of Dr. Glenn R. Bower. Ex. 1004, ¶¶30-135.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`For this proceeding, a POSA would be someone with a bachelors degree (or
`
`higher) in a suitable engineering discipline (for example electrical or mechanical
`
`engineering) and at least three years of additional automotive design experience,
`
`for example experience calibrating and designing powertrain, braking, and
`
`suspension subsystems (or a person of commensurate experience). Ex. 1004,
`
`Declaration of Glenn Bower, ¶17.
`
`
`
`
`11
`
`
`
`

`

`
`
`VII. CLAIM CONSTRUCTION
` Patent Owner appears to dispute that snow, grass, and gravel are “off-road
`
`modes.” The intrinsic evidence shows that they are.
`
` “In claim construction, this court gives primacy to the language of the
`
`claims, followed by the specification. Additionally, the prosecution history . . .
`
`serves as intrinsic evidence for purposes of claim construction.” Tempo Lighting,
`
`Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). “[T]he specification ‘is
`
`always highly relevant to the claim construction analysis. Usually, it is dispositive;
`
`it is the single best guide to the meaning of a disputed term.’” Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (citation omitted).
`
` Independent claim 30 recites “at least two off-road modes” and “an on-road
`
`mode.” Ex. 1001, 21:40-44. Claim 31 depends from claim 30 and defines “the
`
`first off road mode” as one “suitable for driving on grass and/or gravel and/or
`
`snow.” Id., 21:50-54. The claim structure expressly includes driving on grass,
`
`gravel, or snow as an “off-road mode.” See Wright Medical Tech., Inc. v.
`
`Osteonics Corp., 122 F.3d 1440, 1445 (Fed. Cir. 1997) (“[W]e must not interpret
`
`an independent claim in a way that is inconsistent with a claim which depends
`
`from it.”).
`
`Other claims in the ’828 patent define driving on snow, grass, or gravel as
`
`examples of an “off-road mode”:
`
`
`
`
`12
`
`
`
`

`

`
`
` the “first off-road mode is a low friction mode . . . arranged to be
`
`suitable for driving on snow and grass.” (Ex. 1001, claim 26);
`
` “a first off-road mode is a low friction mode in which the subsystem
`
`configurations are . . . arranged to be suitable for driving on grass,
`
`gravel, and/or snow.” (Id., claim 52).
`
` “the first off-road mode is arranged to be suitable for driving on
`
`gravel.” (Id., claim 25).
`
`The ’828 patent specification, Figures 5 and 6, lists several exemplary off-
`
`road modes consisting of “a grass mode, a sand mode, a boulder or rock crawl
`
`mode and a mud mode, and also a rough road mode.” Ex. 1001, 9:65-10:2. The
`
`’828 patent specification repeatedly characterizes driving on snow, grass, or gravel
`
`as examples of an off-road, low-friction driving mode:
`
` “For example the two low friction modes may comprise a mud mode
`
`suitable for traveling through deep mud, and another low friction
`
`mode suitable for driving in snow, on grass, or on gravel.” Id., 4:18-
`
`21; see also id., 13:55-58, 16:57-59.
`
`Patent Owner directly linked an “off-road mode” to driving on snow or grass
`
`during reissue prosecution. With regard to application claim 34 (issued claim 26),
`
`Patent Owner stated:
`
`Claim 34 also includes the limitations that a first-off road mode
`is a low friction mode that is arranged to be suitable for driving
`
`
`
`
`13
`
`
`
`

`

`
`
`on snow and grass. Col. 3, Lines 40-42 states that the driving
`modes may include at least one low friction mode, and Col. 4,
`Lines 11-14 states that a low friction mode may be a snow or
`grass mode.
`
`Ex. 1021, Page 522. And with regard to application claim 38, (issued claim
`
`30), Patent Owner stated:
`
`
`
`Referring to FIG. 13, there is shown a rotary selector
`configured such that the off-road modes are selectable in the
`order of the on-road mode (i.e., the “standard mode”), a first
`off-road mode (i.e., grass/gravel/snow), and a second off-road
`mode (i.e., mud/ruts).
`
`Id., Page 523. Figure 13 is reproduced below:
`
`
`
`
`Ex. 1001, Fig. 13.
`
`A POSA reading the ’828 patent would understand driving on snow or ice is
`
`an “off-road mode,” regardless of whether the snow or ice covers a paved roadway
`
`or some other subsurface, because snow and ice are innately slippery “off-road”
`
`conditions. Ex. 1004, ¶181. The ’828 patent does not distinguish the subsurface—
`
`
`
`
`14
`
`
`
`

`

`
`
`paved or unpaved—that lies beneath the snow or ice. Id., ¶¶170-171. As a matter
`
`of claim construction, snow, grass, and gravel are “off-road modes.”
`
`VIII. GROUND 1: CLAIMS 30, 32 AND 45 ARE OBVIOUS OVER GB ’580
`IN VIEW OF THE LANCER ART
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
`
`the subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which that subject matter pertains. KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “The combination of familiar
`
`elements according to known methods is likely to be obvious when it does no more
`
`than yield predictable results.” Id. at 416. “If a person of ordinary skill can
`
`implement a predictable variation, § 103 likely bars its patentability.” Id