Takeaway: Despite giving consideration to live oral testimony by the inventor in a patent for which Patent Owner was attempting to antedate asserted prior art via a reduction to practice showing, the Board concluded that the record lacked sufficient evidence corroborating the inventor’s testimony.

In its Final Written Decision, the Board ordered that Petitioner had shown by a preponderance of the evidence that claims 1-6, 11-12, 15-18, 22-33, 41-72, and 74-85 of the ’905 patent are unpatentable.  In particular, the Board found that Petitioner has demonstrated by a preponderance of the evidence that claims 1-4, 11, 15-18, 22–33, 41-57, 59-72, and 74-85 are anticipated by Hoffberg; that claims 1, 2, 4-6, 11-12, 15-16, 18, 22, 24-29, 41-55, 57-72, and 74-85 are anticipated by Fleming III; and that claims 1-6, 11-12, 15-18, 22-33, 41-72, and 74-85 would have been obvious over Fleming III and Hoffberg.  At the same time, the Board ordered that Petitioner hadnot shown by a preponderance of the evidence that claims 36-38 of the ’905 patent are unpatentable.

The ’905 patent relates to a radar detector utilizing a Global Positioning System (GPS) for dynamically processing radar sources using stored geographically referenced information.  The Board’s claim construction interpreted a number of claim terms.  For example, the Board disagreed with Patent Owner’s construction in concluding that “provide an alert if a received electromagnetic signal correlates to a police signal” should be interpreted as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.”  The Board also disagreed with Patent Owner’s proposed construction for other terms, e.g., the Board found that Patent Owner’s proposed constructions for “interface connector” and “communication circuitry” were not supported by the language of the specification.  In particular, the Board did not adopt Patent Owner’s proposed construction of these terms which would have limited the claims only to wired, and not wireless, connections.

Turning to the challenges based on prior art, Patent Owner had argued that neither the Fleming III nor Hoffberg relied on by Petitioner was prior art because they were antedated by a prior invention date by Mr. Steven K. Orr, the sole inventor listed for the ’905 patent.  In particular, Patent Owner contended that Mr. Orr had shown an actual reduction to practice of the subject matter recited in claims 1-6, 15-16, 22-29, 33, 41-52, 54-66, 68-72, 75, 77-83, and 85 of the ’905 patent, prior to the earliest effective filing date available for either of Hoffberg or Fleming III.  In support of this position, Patent Owner submitted a comparison claim chart and a Declaration by Mr. Orr as evidence of the asserted reduction to practice.  Moreover, the oral hearing for this case held on June 17, 2014 included live oral testimony from Mr. Orr.  Nonetheless, the Board concluded that Patent Owner had failed to prove by a preponderance of the evidence that the subject matter of claims 1-6, 15-16, 22-29, 33, 41-52, 54-66, 68-72, 75, 77-83, and 85 of the ’905 patent were reduced to practice prior to the January 27, 1998 prior art date.  Thus, Fleming III and Hoffberg were considered by the Board to be viable prior art references.

K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240
Paper 37:  Final Written Decision
Dated: September 29, 2014 
Patent 6,670,905 
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward 
Written by: Ward
Related Proceeding: IPR2013–00203