Takeaway: When a patent owner chooses not to rely on expert testimony, the patent owner is only able to point out a lack of evidence provided by the petitioner’s expert and not able to rebut the sufficiency of the petitioner’s expert’s evidence.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that challenged claims 1-5, 12-15, 18-20, 25-31, and 34-36 of the ’463 patent are unpatentable, but that claims 21 and 23 were not found to be unpatentable. The ’463 patent relates to a cruise control system for use in a human operated vehicle.

Petitioner challenged claims 1-5, 12-15, 18-20, 23, 25-31, and 34-36 of the ’463 patent on three grounds: (1) anticipation by Mizuno; (2) anticipation by Miura; and (3) obviousness over Miura and Ordinary Skill in the Art. The parties did not dispute any of the claim interpretations provided in the Decision on Institution, and thus the Board maintained that construction.

The Board began its analysis of Petitioner’s challenges to the patentability of the challenged claims with the ground of anticipation by Mizuno. Petitioner argued that Mizuno disclosed all of the limitations of claim 1, and, in particular, that “Mizuno discloses the recited ‘enable switch’ because Mizuno states ‘if the key switch of the vehicle is turned on, . . . the microcomputer (1A) is power-on reset in controller (1)’ and ‘the initial value 80km/H is displayed on the display device 6C by turning on the key switch.’” Patent Owner argued that Petitioner “incorrectly alleges that either ‘key switch’ or the ‘start switch (5)’ in Mizuno is the claimed ‘enable switch,’” because Petitioner failed to rely on the key switch of an analog embodiment. Patent Owner further argued that activating display device 6C is not putting a cruise control system into a “system-on state” because it is not a cruise control system and powering the digital system does not necessarily mean that the digital system is in a system-on state. Petitioner replied that the “system must be on if the system is drawing power and a display device is operating,” and its expert confirmed the same in a Declaration. Patent Owner provided no expert witness and thus no rebuttal evidence. The Board agreed with Petitioner and determined that Petitioner had shown by a preponderance of evidence that claim 1 is anticipated. With regard to independent claim 2, the Board agreed with Petitioner that there was no patentable distinction between the switches of claims 1 and 2, and that Mizuno also anticipated claim 2. The Board further agreed with Petitioner that Mizuno anticipated independent claims 12, 13, 18, 25, 26, and 34, as well and dependent claims 3, 5, 14, 35, and 36, which depend therefrom.

However, the Board agreed with Patent Owner that the Petition failed to show by a preponderance of the evidence that independent claim 21 was anticipated by Mizuno. Petitioner argued that Mizuno discloses all of the limitations of claim 21, including that “Mizuno discloses a key switch to supply power to the electric system, and ‘when the key switch is off, power is no longer provided to the display device, and it turns off,’ and ‘flashing of the display lamp (for example, set up on the control panel (6) can be changed[(].’” Patent Owner argued that the key switch, cited by Petitioner, is not a symbol that is displayed, and that the “display lamp,” cited by Petitioner, is not shown in any of the figures or mentioned in the specification of Mizuno. Further, Patent Owner argued that “if the cruise control system is deactivated (turned off), Mizuno does not provide any indication of whether the display lamp would still be on or capable of flashing” and provides no indication that “the flashing of the lamp is related to whether or not the vehicle is under speed control,” not “the state of the preset speed.” Although Petitioner argued that Patent Owner provides no evidence rebutting its expert’s testimony, the Board agreed with Patent Owner that Petitioner did not explain suitably why the powering off does not eliminate the presence of any indicia upon the display. Specifically, the Board stated that “an operator may be able to devise from the off condition of the display that the preset speed is not set does not mean that a “symbol” of that unset state is displayed.”

The Board then moved to the second anticipation ground. Petitioner argued that Miura discloses all of the limitations of claim 1, and specifically, that the recited enable switch is described by Miura when it discloses that “[t]he engine starts when ignition SW (21) is on and power is applied to the CPU (20).” Patent Owner argued that the “’ignition switch’ of Miura is not the recited ‘enable switch,’ because Miura expressly states, ‘ignition switch (21) . . . is the switch for controlling engine start and stop.’” Further, Patent Owner argued that “Miura expressly states that the cruise control speed travel unit is not in a system-on state until it is determined that the vehicle speed is within a threshold range” and “though the CPU 20 may receive power when the engine starts, the supply of power does not mean that the cruise speed travel unit is in a system-on state, especially when Miura states that the unit cannot work until the vehicle speed is within a threshold range.” The Board did not agree with Patent Owner that ignition switch is not an enable switch, and thus, it determined that Petitioner had shown by a preponderance of the evidence that claim 1 is anticipated by Miura. Similar to its analysis of the first anticipation ground, the Board concluded that Miura anticipated all of the claims asserted by Petitioner except claim 21.

Finally, the Board assessed the obviousness ground and determined that all of the features of dependent claims 4, 19, 20, 27, and 28 would have been obvious to one of ordinary skill in the art based on Mizuno. However, the Board determined that Petitioner failed to demonstrate by a preponderance of the evidence that claim 23 is unpatentable over Mizuno and ordinary skill in the art, because the ground was based on Mizuno anticipating claim 21, which the Board determined was not shown by a preponderance of the evidence.

Nissan North America, Inc., Toyota Motor North America, Inc., Subaru of America, Inc., American Honda Motor Co., Inc., Ford Motor Company, Jaguar Land Rover North America, LLC, and Volvo Cars of North America, LLC v. Cruise Control Technologies LLC, IPR2014-00279
Paper 46: Final Written Decision
Dated: June 29, 2015
Patent 6,324,463 B1
Before: Josiah C. Cocks, Hyun J. Jung, and George R. Hoskins
Written by: Jung
Related Proceedings: IPR2014-00280; IPR2014-00281; IPR2014-00289; IPR2014-00291