Takeaway: Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight, and the Board has discretion to give weight to one item of evidence over another unless no reasonable trier of fact could have done so.

In its Final Written Decision, the Board decided that Petitioner had demonstrated that claims 1, 6-8, 17, and 18 of the ’501 patent are unpatentable as anticipated by Probst under 35 U.S.C. § 102(b); and that claims 1, 4-10, 17, and 18 of the ’501 patent are unpatentable as having been obvious under 35 U.S.C. § 103 in view of Scholl taken in combination with Probst.

The ’501 patent relates to the generation of vehicle diagnostic and prognostic information, based on information provided by sensors.  Petitioner had challenged claims 1, 6-8, 17, and 18 35 U.S.C. § 102(b) via alleged anticipation by Probst; and had challenged claims 1, 4-10, 17, and 18 under 35 U.S.C. § 103 via alleged obviousness in view of Scholl and Probst.

The Board began by providing its claim construction for certain recited terms, interpreting “pattern” to mean “frequency of occurrences of certain data present in a set of data, a rate of change of data, or a trend of data;” interpreting “failure” to include “failures attributable to the manner in which an operator operates a vehicle and failures that are correctable without repair or replacement;” interpreting “informing . . . about the predicted failure” to encompass “sending a message or a fault code that is used to bring about the awareness” and as not requiring “transmitting either the predicted failure or a pattern used to predict the failure;” and construed other claim terms including “component,” “sensor,” and “signal.”

As for the ground(s) based on anticipation, after considering Petitioner’s arguments and supporting evidence, the declaration of Petitioner’s expert Mr. Andrews, and detailed claim charts set forth in the Petitioner, the Board found that Petitioner had successfully shown that each limitation in each of claims 1, 6–8, 17, and 18 was disclosed by Probst.  At the same time, the Board did not find Patent Owner’s counter-arguments to be persuasive.  For example, although Patent Owner argued that Probst teaches the prediction of critical operating conditions only for the vehicle as a whole, and not on the component or subsystem level, the Board found that such arguments by Patent Owner were not commensurate with the scope of claim 1.

Regarding the ground(s) based on obviousness, the Board considered Petitioner’s obviousness assertions and supporting evidence, the declaration of Mr. Andrews, and the claim charts set forth in the Petition (as it had done so in analyzing anticipation).  The Board then went on to conclude that Petitioner had “articulated sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would combine the technique of directing predicted failure information through a satellite transceiver, as described in Scholl, into the failure prediction system of Probst.”  In doing so, the Board credited the testimony of Petitioner’s expert over that of Patent Owner’s expert.

Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00416 
Paper 54: Final Written Decision
Dated: December 5, 2014 
Patent 8,019,501 B2 
Before: Jameson Lee, Barbara A. Parvis, and Gregg I. Anderson 
Written by: Parvis
Related Proceedings: American Vehicular Sciences LLC v. Toyota Motor Corp., No. 6:12-CV-00405 (E.D. Tex., filed June 25, 2012); American Vehicular Sciences LLC v. BMW Grp., No. 6:12-CV-412 (E.D. Tex., filed June 25, 2012); American Vehicular Sciences LLC v. Hyundai Motor Co., No. 6:12-CV-00776 (E.D. Tex., filed Oct. 15, 2012); and American Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-CV-00148 (E.D. Tex., filed Feb. 13, 2013)