Takeaway: Uncorroborated testimony by an inventor is not sufficient to prove actual reduction to practice prior to the prior art date.

In its Final Written Decision, the Board found that all challenged claims of the ’721 Patent (claims 1-10) are unpatentable. The ’721 Patent is directed to a Global Positioning System (“GPS”)-enabled radar detector designed to process radar sources dynamically based on previously-stored geographically referenced information.

The Board began with claim construction, stating that it must give the terms the broadest reasonable interpretation in light of the specification. Patent Owner argued that the terms “warning section” and “alert section” both require a function beyond a mere detection of a signal, and specifically, that they provide an alert to a signal only if a determination is made that the signal is a signal that is likely to be worth alerting, based on comparing it to the attributes of actual police signals. Patent Owner supported its interpretation with expert testimony and statements in the Specification. Petitioner disagreed, arguing that the proposed construction was an improper attempt to narrow the term “correlating” to techniques that are not required by the claims and that are admitted to be in the prior art. The Board was persuaded by Petitioner’s arguments and construed “providing a warning if a received signal correlates to a law enforcement signal” as “providing a warning if a received signal correlates to one or more characteristics of a law enforcement signal.” The Board also construed other terms in contradiction to proposals by Patent Owner stating that Patent Owner’s proposals were not supported by the language of the Specification.

The Board then analyzed the prior art. Patent Owner argued that both of the references relied upon by Petitioner are not, in fact, prior art because they have been antedated by a showing of a prior invention by the sole inventor of the ’721 Patent. Specifically, Patent Owner argued that the sole inventor had actually reduced to practice each of the claims of the ’721 Patent prior to the earlier effective date of the two references. In support, Patent Owner provided a chart comparing the elements of the claims to the statements made in the Declaration by the sole inventor.

In evaluating the date of the actual reduction to practice, the Board began with the key aspects of claim 1. The Board determined that the inventor’s testimony regarding a 1992 prototype was insufficient to establish that the embodiment constructed met all the limitations of the claimed invention, based on how the terms of claim 1 were construed.

The Board then analyzed the evidence regarding the 1996 prototype. Specifically, the inventor testified that he drafted software code to demonstrate the GPS lockout concept of the claimed invention with the 1996 prototype. However, the only software file in the record did not relate to a position determining circuit. The inventor testified that the software was missing those lines of code, but that Patent Owner was unable to recover it. Thus, the Board determined that the evidence did not corroborate sufficiently the inventor’s claimed actual reduction to practice. Therefore, the Board found that Patent Owner filed to prove by a preponderance of the evidence its claim of reduction to practice of the challenged claims prior to the prior art reference dates.

The Board then assessed the proposed grounds of unpatentability. Patent Owner argued against the grounds of unpatentability stating that the references were antedated, and that even if they were not, they did not teach all of the limitations of the claims based on the proposed claim construction provided by Patent Owner. However, the Board was not persuaded by either of these arguments, because the references were found to still be prior art for the reasons discussed above, and the references disclosed all of the claim elements as construed by the Board. Based on the Board’s claim construction, the Board concluded that Petitioner had established by a preponderance of evidence each of the proposed grounds of unpatentaiblity.

K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203
Paper 45: Final Written Decision
Dated: August 27, 2014
Patent 7,999,721 B2
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward
Written by: Ward
Related Proceedings: IPR2013-00240 (USP 6,670,905)