Takeaway: A claimed combination will be considered to have been obvious where all of the recited limitations were known in the prior art and the combination yields nothing more than predictable results.

In its Final Written Decision, the Board found that each of challenged claims 1, 4-15, and 20-22 of the ’796 patent is unpatentable. The Board also denied Patent Owner’s Contingent Motion to Amend.

Petitioner had requested inter partes review of claims 1, 4-15, and 20-22 of the ’796 patent based on various unpatentability grounds. These included: obviousness of claims 1 and 4-14 under 35 U.S.C. § 103 in view of McClelland, Kranz, Dixit, and Howell; obviousness of claim 15 under 35 U.S.C. § 103 in view of McClelland, Kranz, Dixit, Howell, Pacsai ’467, and Gaborit; and obviousness of claims 16 and 20-22 under 35 U.S.C. § 103 in view of McClelland. Petitioner had relied on the Declaration of its expert, Dr. Valdis Liepa, in support of its assertions.

The ’796 patent is directed to “a tire positioning tool, for activating remote tire monitoring system (“RTMS”) tire sensors by a plurality of methods, and receiving data from the activated RTMS tire sensors at various different radio frequency signals.” The challenged claims of the ’796 patent included both apparatus and method claims. The apparatus claims recited, for example, “[a] tool comprising a plurality of means for activating remote tire monitoring system tire sensors, the plurality of means selected from the group consisting of a magnet, a valve core depressor, means for generating continuous wave signals, and means for generating modulated signals[.]” Related methodology was recited in claims 20-22.

Patent Owner had not disputed that all of the recited methods of tire sensor activation were known in the art. As acknowledged by Patent Owner, “[t]he inventors said so in the specification of the patent.” Thus, a basic issue addressed by the Board was whether it would have been obvious to one skilled in the art to have combined all of the admittedly known features into a single, “universal” tool. The Board agreed with Petitioner that such a combination would have been obvious. Although counsel for Patent Owner had asserted during oral argument that “the novelty of the combination of the known ‘means for activating’ was based at least in part, on ‘convenience’ to the user[,]” the Board cited KSR and other Supreme Court precedent indicating otherwise.

Patent Owner had attempted to rely on a number of secondary considerations theories in order to rebut the Petitioner’s assertions of obviousness, including commercial success, licensing activity, and alleged evidence of industry praise. The Board did not find any of these to be persuasive, however. In each case, as stated by the Board, “[t]he evidence of non-obviousness presented by [Patent Owner] falls short of demonstrating the required nexus.”

Patent Owner had filed a Contingent Motion to Amend by which Patent Owner sought to substitute new claims 23-38 for challenged claims 1 and 4-15, and 20-22, respectively, in the event the Board found original claims 1, 4–15, and 20–22 to be unpatentable. The Board denied this Motion because it found that the proposed substitute claims were not amenable to construction (because, for example, they recited means-plus-function limitations for which the specification lacked sufficient disclosure of corresponding structure), and because Patent Owner had not met its burden in demonstrating that the proposed substitute claims are patentable.

Autel U.S. Inc., and Autel Intelligent Technology Co. Ltd. v. Bosch Automotive Service Solutions LLC, IPR2014-00183
Paper 59: Final Written Decision
Dated: May 5, 2015
Patent 6,904,796 B2
Before: Josiah C. Cocks, Sheridan K. Snedden, and Scott A. Daniels
Written by: Daniels
Related Proceeding: Service Solutions U.S. LLC v. Autel U.S. Inc., Case No. 4:15-10534-TGB-LJM (U.S. District Court for the Eastern District of Michigan)