Takeaway: The Board declined to exercise its discretion to deny institution of similar grounds submitted in a previous Reexamination, because at least one reference was not asserted in any rejection in the Reexamination even though the reference had been cited in an Information Disclosure Statement in the Reexamination.

In its Decision, the Board denied the Petition as to all challenged claims of the ’781 patent, because Petitioner failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’781 patent.

Petitioner had sought inter partes review of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 17-32 of the ’781 patent, which relates to “a system which notifies the driver of recommended corrections in vehicle operation and, under certain conditions, automatically initiates corrective action.” The grounds asserted by Petitioner included: obviousness of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, and 28-30 over Jurgen, Smith, and Habu; obviousness of claims 17-27 over Jurgen, Smith, Habu, and Davidian; anticipation of claim 31 by Davidian; and obviousnesss of claim 32 over Davidian and Tonkin.

The Board construed the claims under the broadest reasonable interpretation standard. Petitioner proposed that the term “fuel overinjection notification circuit” means a circuit that “provides the driver with . . . an alert that his or her driving is fuel inefficient.” Patent Owner proposed that the same term means “a circuit that provides a driver with a notification that his or her driving is fuel efficient or inefficient.” The Board was unable to discern how either of the constructions proposed by Petitioner or Patent Owner adds any clarity to the term. Accordingly, the Board determined that no explicit construction is necessary for that term or any other term in the claims.

The Board then addressed Patent Owner’s argument that the Board should exercise its discretion under 35 U.S.C. § 325(d) to deny review of the challenged claims. The Patent Owner based its arguments on Petitioner disclosing substantially the same references and arguments in this proceeding as were previously presented in Reexamination. The Board declined to exercise its discretion in this case, because it found that the prior art and arguments presented by Petitioner in this proceeding are not substantially similar to those presented in the previous Reexamination. For example, Petitioner argued in this proceeding that the Smith reference, not asserted in a ground in the Reexamination, teaches one or more limitations of twenty-four of the twenty-six challenged claims. Patent Owner argued that Smith was considered in the Reexamination based on being listed by Patent Owner in an Information Disclosure Statement. The Board, however, determined that Petitioner had not argued the reference in the Reexamination, and thus the reference was not meaningfully considered in the Reexamination. Accordingly, the Board did not exercise its discretion under § 325(d).

The Board then addressed the prior art grounds presented in the Petition. Regarding the first obviousness ground, Patent Owner argued that Petitioner did not attempt to “explain why an ordinary artisan would modify Smith to incorporate processor control into Smith’s system,” and that one of ordinary skill in the art would not have combined Jurgen, Smith, and Habu. The Board agreed with Patent Owner and found that Petitioner did not supply expert testimony to supports its assertions and attempts through only counsel argument to provide a rationale for combining Jurgen, Smith, and Habu by citing to certain excerpts of the references. The Board also agreed with Patent Owner that the excerpts of the references merely disclosed some of the respective goals of the references, which do not by themselves explain a motivation to combined the to create the inventions of the ’781 patent. Specifically, Patent Owner argued that “[i]t does not necessarily follow, as Petitioner suggests, that one of skill in the art would combine each prior art reference containing boilerplate statements concerning a desire to improve on a particular technical issue,” and citing to Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) for the proposition that “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Accordingly, the Board concluded that Petitioner had provided only generic, conclusory assertions by counsel, unsupported by testimony of an expert witness, rather than articulating reasoning with rational underpinnings as to why one of ordinary skill in the art would have looked to Smith’s indicator light connected in parallel with a vacuum operated switch pneumatically connected to the engine manifold, in considering how to implement a fuel overinjection notification circuit coupled to a processor subsystem. Thus, the Board was not persuaded that the Petition demonstrated a reasonable likelihood that Petitioner would prevail in establishing unpatentability of any of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 15, or 28-32. The remaining grounds of the Petition included claims having similar limitations to those discussed above, and were not instituted for any of the claims for similar reasons as presented above.

The Board also addressed the lack of proposed constructions in the Petition for any of the means-plus-function limitations recited in some of the dependent claims. The Board determined that Petitioner failed to meet its burden of demonstrating a reasonable likelihood that those claims are unpatentable for the additional reason that Petitioner had failed to provide constructions for the means-plus-function limitations, as required under 37 C.F.R. § 42.104(b)(3).

Volkswagen Group of America, Inc. v. Velocity Patent LLC, IPR2015-00276
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: June 1, 2015
Patent: 5,954,781
Before: Glenn J. Perry, Rama G. Elluru, and Peter P. Chen
Written by: Chen
Related Proceedings: Velocity Patent LLC v. Audi of America, Inc., Case No. 1:13-cv-08418-JWD (N.D. Ill.); Ex Parte Reexamination Control No. 90/013,252