iTakeaway: The Board will not incorporate limitations from the specification into the claims during claim construction.
In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that all of the challenged claims of the ’802 patent are unpatentable. The ’802 patent relates to a system and method for managing and analyzing information about components of an apparatus, e.g., a vehicle, in order to monitor the apparatus and detect operational and functional problems with the apparatus.
The Board began with claim construction, and interpreted the term “automatically.” Prior to institution, neither party proposed a construction for the term, but in the Decision to Institute, the Board agreed with Petitioner’s witness that “automatically” means without any human intervention, which the Board believed was its ordinary and customary meaning. Patent Owner argued that “automatically” means “without human intervention and as appropriate in response to receiving input from the processing module on the vehicle about a monitored component that is operating non-optimally or is forecast to fail.” The Board was not persuaded that the section of the Specification that Patent Owner cited supported its construction, because Patent Owner’s interpretation read limitations into the claims from the specification. The Board maintained its construction from the Decision to Institute for a few other terms that neither of the parties contested.
The Board then considered Petitioner’s alleged ground of unpatentability based on anticipation by Asano. The Board found Petitioner’s evidence persuasive, including its explanation for how each of the elements in claims 1, 6, 7, 11, and 13 were disclosed in Asano. Patent Owner argued that Asano discloses that the vehicle-mounted computer transmits data to a host computer for detailed analysis, and that the vehicle mounted computer cannot be the claimed processing module. However, the Board agreed with Petitioner that although the host computer may be involved in more detailed vehicle diagnosis, the “basic abnormal diagnosis” is made by the vehicle-mounted computer. Patent Owner also argued that Asano fails to disclose that the claimed wireless transmission of information regarding “non-optimal operation” is initiated “automatically” from the vehicle to the remote entity, based on Patent Owner’s interpretation of the term “automatically.” However, because the Board did not adopt Patent Owner’s interpretation of “automatically,” the argument was not persuasive. Third, Patent Owner argued that Asano fails to disclose “notification system,” as claimed. Specifically, Patent Owner argued that “notification” must be to the occupant about “the presence and identity of any non-optimally operating component or component forecast to fail.” However, the Board was not persuaded.
The Board then considered Petitioner’s obviousness ground of unpatentability regarding claim 5. The Board found Petitioner’s evidence of obviousness persuasive. Patent Owner merely argued that the secondary reference fails to remedy the deficiencies of Asano with regard to claim 1. However, this was not persuasive because the Board had determined that there were no deficiencies of Asano with regard to claim 1.
Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00414
Paper 45: Final Written Decision
Dated: January 6, 2015
Patent 7,630,802 B2
Before: Jameson Lee, Barbara A. Parvis, and Gregg I. Anderson
Written by: Anderson
Related Proceeding: American Vehicular Sciences LLC v. Toyota Motor Corp., Case No. 6:12-cv-405 (E.D. Tex.)
