Filed on behalf of: Jaguar Land Rover Limited
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`Entered: December 11, 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 IPR2019-01539
`Patent RE46828
`______________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`
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`TABLE OF CONTENTS
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`I.
`II.
`
`III.
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`B.
`
`i
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`Page(s)
`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 Lancer and GB ’580 ................................... 11
`Procedural History ............................................................................... 15
`C.
`Person of Ordinary Skill In the Art ..................................................... 17
`D.
`Petitioners Failed To Show A Likelihood Of Prevailing On The
`Merits ............................................................................................................. 17
`A.
`The proposed combination does not teach a vehicle control
`system that selects subsystem configuration modes for the
`respective driver-selected driving surface for a plurality of
`subsystems ........................................................................................... 18
`1.
`Petitioners rely solely on Lancer for selecting subsystem
`configuration modes for the respective driver-selected
`driving surface for a plurality of subsystems ............................ 19
`Lancer does not teaches multiple “subsystem
`configuration modes” for configuring multiple “vehicle
`subsystems” for respective driving surfaces ............................. 20
`(a)
`The ’828 patent defines the differential subsystem
`as a single subsystem ...................................................... 21
`(b) Lancer describes its ACD+AYC system as a single
`integrated system ............................................................ 24
`Lancer’s differential system is the differential
`system described in Shiraishi and already
`considered and rejected by the Examiner ....................... 26
`Lancer does not teach any “subsystem configuration
`modes” ...................................................................................... 28
`Petitioners fail to address known objective indicia of non-
`obviousness that demonstrate patentability ......................................... 32
`
`2.
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`3.
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`(c)
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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`C.
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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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`Petitioners fail to allege, much less show, that Exhibit 1017 is a
`prior-art printed publication ................................................................ 38
`IV. The Petition Warrants Discretionary Denial Under 35 U.S.C.
`§§ 314(a) and 325(d) ..................................................................................... 41
`A.
`The Petition warrants denial under § 325(d) ....................................... 43
`1.
`B-D Factor 1: There are no material differences between
`the combinations of Shiraishi and Fioravanti and Lancer
`and GB ’580 .............................................................................. 44
`B-D Factor 2: Lancer is cumulative of Shiraishi and GB
`’580 is cumulative of Fioravanti ............................................... 46
`B-D Factor 3: The Examiner closely evaluated the
`combination of Shiraishi and Fioravanti, using that
`combination as a basis for rejections ........................................ 46
`B-D Factor 4: Petitioners make the same arguments here
`already rejected by the Examiner when considering
`Shiraishi in view of Fioravanti .................................................. 47
`B-D Factor 5: Petitioners failed to address the
`Examiner’s analysis of Shiraishi ............................................... 48
`B-D Factor 6: Petitioners have presented no reasons to
`reconsider the Examiner’s conclusions ..................................... 48
`The Petition warrants denial under § 314(a) ....................................... 49
`B.
`Conclusion ..................................................................................................... 52
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`V.
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`ii
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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
`CASES
`
` Page(s)
`
`Alice Corp. Pty. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ............................................................................................ 16
`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) .......................................................................... 31
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ........................................................ 38, 39, 40, 41
`E-One, Inc. v. OshKosh Corp.,
`IPR2019-00162, Paper 16 (June 5, 2019) ........................................................... 41
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) .......................................................................... 31
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 29
`HTC Corp. v. Cellular Commc’ns Equip., LLC,
`701 F. App’x 978 (Fed. Cir. 2017) ..................................................................... 31
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) .......................................................................... 39
`Next Caller, Inc. 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, 49
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 50
`SmithKline Beecham Corp. v. Apotex Corp.,
`439 F.3d 1312 (Fed. Cir. 2006) .......................................................................... 40
`
`iii
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`Patent Owner’s Preliminary Response
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`Stryker Corp. & HowMedica Osteonics Corp. v. KFX Med., LLC,
`IPR2019-00817, Paper 10 (Sept. 16, 2019) .................................................. 38, 42
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 21
`Wasica Fin. GmbH v. Continental Automotive Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .................................................................... 39, 40
`STATUTES
`
`35 U.S.C.
`§ 101 .............................................................................................................. 16, 37
`§ 102 .................................................................................................................... 38
`§ 312(a)(3) .................................................................................................... 39, 40
`§ 314(a) ............................................................................................... 2, 41, 42, 49
`§ 325(d) ........................................................................................................passim
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`iv
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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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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)
`Reserved
`
`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.”)
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`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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`v
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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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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
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`2026
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`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 Terrain 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”)
`
`Reserved
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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`Exhibit
`2027
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`Reserved
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`Description
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`2028
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`U.S. Patent No. 5,247,831 (“Fioravanti”)
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`IPR2019-01539 (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 worst of the two. Paper 3. Petitioners are correct,
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`this second Petition is weaker than their first, and it, too, relies on prior art that
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`suffers from the same fatal defects as prior art that the Examiner expressly
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`considered and rejected.
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`First, Petitioners rely solely on Mitsubishi Lancer Evolution VII references
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`to teach a vehicle control system that configures multiple “vehicle subsystems”
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`having multiple “subsystem configuration modes” for a driver-selected driving
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`surface, and Lancer does not teach this limitation. Just like the Shiraishi prior art
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`that was expressly considered and rejected by the Examiner, Lancer merely
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`describes controlling a single subsystem, not “a plurality of vehicle subsystems” as
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`claimed. In fact, the Petition fails because Petitioners do not identify any disclosure
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`for the claimed “subsystem configuration modes” that are “suitable for a respective
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`driving surface” at all.
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`Second, 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 Land 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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`Third, Petitioners fail to establish that Exhibit 1017, a key Lancer reference,
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`is a prior art printed publication. Specifically, Petitioners rely on Exhibit 1017
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`alone to teach multiple claim limitations, but failed to allege, much less establish,
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`that it was publicly accessible. Petitioners contend that it is “press information,”
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`but do not allege that it was disseminated to POSAs during the relevant time or that
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`it was indexed in any subject-matter searchable database.
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`Here, the Board should exercise its discretion and deny institution under 35
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`U.S.C. §§ 314(a) and 325(d). The Examiner already expressly considered the exact
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`type of subsystem control described in the alleged combination of the Lancer
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`references and GB ’580 because it considered and rejected a functionally identical
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`system in the Shiraishi-Fioravanti combination. And as shown below, Petitioners
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`merely repeat the same faulty allegations here that were considered and rejected by
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`the Examiner during the reissue prosecution. There is no reason for the Board to
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`plow that same ground again, and doing so would be a waste of the Board’s and
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`the parties’ time and resources. Review here is a particular waste of resources
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`given that the parties agree that this Petition is weaker than Bentley’s first.
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`Moreover, due to Petitioners’ delay in filing this IPR, the parallel district court trial
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`will resolve the same invalidity questions presented here nearly five months before
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`IPR2019-01539 (USP RE46,828)
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`the Board would issue its final written decision.
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`Patent Owner’s Preliminary Response
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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 driver
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`input for selecting a road surface and a vehicle control system arranged to control
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`multiple “vehicle subsystems” operable in multiple “subsystem configuration
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`modes” corresponding to multiple “driving modes” for a respective driving
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`surface. ’828 patent 2:3-9; 20:13-29. Each driving mode selects the plurality of
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`subsystem configuration modes suitable for a respective driving surface. ’828
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`patent 2:3-9; 20:13-29. Before the invention, “drivers often encounter[ed] a broad
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`range of surfaces and terrains in both on-road and off-road settings.” Id. at 1:49-51.
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`But 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. Prior art vehicle
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`control systems failed to address and solve these problems.
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`In particular, the ’828 patent singled out one of Petitioners’ primary prior-art
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`references, British Patent Application No. 2,273,580 (“GB ’580”) (Ex. 1005), and
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`explained how the claimed invention was different and an improvement:
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`[D]rivers often encounter a broad range of surfaces and terrains in both
`on-road and off-road
`settings. Unfortunately,
`the operating
`characteristics of [GB ’580’s] integrated control system does not
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`provide the driver with the ability to provide direct input regarding the
`surface terrain in an attempt to better select the appropriate subsystem
`configuration modes. This deficiency results in the less than optimal
`stability, handling, and safety performance of the vehicle. Therefore,
`… there is a need for an integrated control system which will provide
`improved control of the vehicle on a broad range of surfaces.
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`Id. at 1:49-61.
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`Patent Owner recognized this need to free the driver from having to
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`configure multiple vehicle systems for different surfaces, solved it, and patented it.
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`The 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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`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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`
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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,”
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`where each vehicle subsystem is operable in “a plurality of subsystem
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`configuration modes” and each subsystem configuration mode is “suitable for a
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`respective driving surface.” ’828 patent 2:4-9. The claimed invention “provide[s]
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`improved control of the vehicle on a broader range of surfaces, and in particular in
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`a plurality of different off-road surfaces and terrains such as might be encountered
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`when driving off-road.” Id. at 1:66-2:2. Figure 4 below shows the vehicle control
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`system “controlling the subsystems.” Id. at 5:29-30.
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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 for driving over large
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`boulders.
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`
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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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`Id. at 15:29-33.
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`The vehicle controller also configures the transmission controller 30 to
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`follow the higher locking torque curve B in Figure 8 (below) to “increase the
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`locking torque more rapidly in response to differences in wheel speeds between the
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`vehicles wheels, as measured by slip across differentials.” Id. at 15:34-40. And at
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`the same time, the response of the differential control relative to suspension
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`articulation is increased to follow curve B as shown in Figure 9 (below), ensuring
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`sufficient torque is delivered to wheels that are in contact with the boulders and not
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`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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`Id. at Figs. 10-11. The system also sets the automatic transmission to manual
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`“because it is unlikely the driver will want to change gear at all, and any undesired
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`change of gear might affect the stability of the vehicle.” Id. at 12:36-40.
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`Thus, the patented invention gave everyday drivers what they needed to
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`properly set up a highly advanced off-road vehicle for the terrain without being
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`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.
`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 two prior art references that are
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`remarkably similar to the teachings Petitioners cite in their Petition for IPR.
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`B.
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`Prosecution History: The Examiner allowed the challenged claims
`over art similar to Lancer and GB ’580
`The ’828 patent issued from Patent Application No. 15/227,516 (“the reissue
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`application”). The ’828 patent is a reissue of U.S. Patent No. 7,349,776, which
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`issued from Patent Application No. 10/249,551 (“the original application”), which
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`was filed on April 17, 2003 and claims priority from two British patent
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`applications.
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`During original prosecution, Applicant argued that the applied art, like
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`Petitioners’ GB ’580 reference, fails to disclose (1) “a driver input for selecting a
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`road surface,” and (2) a vehicle control system with driving modes “arranged to
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`select the subsystem configuration modes in a manner suitable for a respective
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`driving surface.” Ex. 1022 at 569. The Examiner agreed and allowed the claims,
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`stating:
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`The prior art of record fail to teach 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. 1022 at 595.
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`Patent Owner filed its reissue application on September 17, 2016,
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`accompanied by a copy of Ex. 1017 (the “Lancer Press Information”) and an IDS
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`disclosing the Lancer Press Information. Ex. 1021 at 23, 31.1 The Examiner,
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`however, rejected the pending claims over other art, namely a combination of U.S.
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`Patent No. 5,366,041 (Ex. 2025, “Shiraishi”) and U.S. Patent No. 5,247,831 (Ex.
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`2028, “Fioravanti”). Ex. 1021 at 428-460.
`
`The Shiraishi patent is just like Lancer asserted here in that it lacks a vehicle
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`control system that selects modes in various subsystems. Instead, it (like Lancer)2
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`discloses only a single subsystem—a differential control subsystem—that controls
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`the distribution of driving torque and amount of lock provided by the differentials.
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`Fioravanti, on the other hand, is a stronger reference than GB ’580, in that it
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`“discloses a vehicle control system arranged to control a plurality of vehicle
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`subsystems” that can through sensors optimize the behavior vehicle based on
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`prearranged reference programs for different driving surfaces. Ex. 1021 at 429-30.
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`Even so, the Examiner considered and expressly rejected the Shiraishi-
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`Fioravanti combination as teaching the challenged claims. With respect to
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`Shiraishi, the Examiner expressly rejected the idea that a “differential mode
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`1 Petitioners identified Ex. 1017 to Patent Owner in April of 2016.
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`2 For brevity, Patent Owner will refer to Exs. 1017, 1048, 1059, and 1060
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`collectively as “Lancer.”
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`control” with front, center and rear differentials could read on the claimed “vehicle
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`control system arranged to control a plurality of vehicle subsystems” based on
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`Shiraishi. Ex. 1021 at 428-29 (emphasis in original). 438 (same), 458-60 (“While
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`Shiraishi discloses a differential subsystem, Shiraishi does not expressly disclose a
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`plurality of vehicle subsystems wherein the plurality of vehicle subsystems
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`comprises one or more of: an engine management system; a transmission system; a
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`steering system; and a suspension system.” (emphasis in original)). This is not
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`surprising as the ’828 patent expressly refers to the differential (center, rear, and
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`front) as being controlled by the transmission controller, not by the claimed
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`“vehicle control system” that is “arranged to control a plurality of vehicle
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`subsystems.” See ’828 patent 6:4-9.
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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. Ex. 1021 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 (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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`As for Fioravanti, the Examiner stated that it discloses “control[ling] a
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`plurality of vehicle subsystems” using “prearranged reference programs” for
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`various driving surfaces, e.g., “for normal, sports, or off-road driving or for dry,
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`wet or snowy road conditions.” Ex. 1021 at 429-30. The Examiner, however,
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`allowed the challenged claims over the Shiraishi-Fioravanti combination,
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`concluding that:
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`[N]one of the prior art of record, alone or in combination, discloses a
`vehicle control method and system having a driver input for selecting a
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`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. In rejecting the Shiraishi-Fioravanti combination, the Examiner
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`also acknowledged that the art failed to teach additional limitations recited in each
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`of the challenged claims. Id.
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`Thus, the Examiner analyzed those teachings in Shiraishi and Fioravanti that
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`are the same (and actually stronger) than those relied on by Petitioners in Lancer
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`and GB ’580, and found that they did not teach or render obvious the claimed
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`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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`IPR2019-01539 (USP RE46,828)
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`Patent Owner’s Preliminary Response
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`During these discussions, 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 (IPR2019-01502).
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`The Court dismissed Petitioners’ 35 U.S.C. § 101 challenge under both steps
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`1 and 2 set forth in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).
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`Specifically, the Court held that the claims were not directed to an abstract idea,
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`and with respect to Alice’s step 2, found that the claims recited an “inventive
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`concept” as evidenced by “a number of articles and reviews by third parties
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`praising the Terrain Response technology … [and] not[ing] the inventive features.”
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`Ex. 2021 at 28-31 (Opinion and Order, Jaguar Land Rover Ltd. v. Bentley Motors
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`Ltd., No. 2:18-cv-320, D.I. 45 (E.D. Va. June 26, 2019)). As the Court found, the
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`patented “Terrain Response technology improves existing vehicle control
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`technology by permitting drivers to control multiple vehicle subsystems when
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`driving in particular conditions or on certain surfaces with a ‘twist’ and a ‘flick.’”
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`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 invalidity contentions that cite to references redundant of those relied on in
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`its two petitions for IPR, including an identical claim that the Lancer and GB ’580
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`Application read on the Base Claim elements 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 the
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`following independent reasons: (A) the combination of Lancer and GB ’580 fails
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`to teach a “vehicle control system … operable in a plurality of driving modes in
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`each of which it is arranged to select the subsystem configuration modes in a
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`manner suitable for a respective driving surface” for its “plurality of subsystems,”3
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`