Ex Parte 8032278 et al

Patent Trial and Appeal Board

Nov 13, 2018

90013851 (P.T.A.B. Nov. 13, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,851 10/28/2016 8032278 C13-03896.RE2 8717
7590 11/13/2018
CHRISTOPHER F. REGAN, ESQUIRE
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A.
P. O. BOX 3791
ORLANDO, FL 32802-3791
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/13/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OMEGA PATENTS, L.L.C.
Patent Owner and Appellant
____________

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Reexamination Control 90/013,851
United States Patent 8,032,278 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–22. We have jurisdiction under 35 U.S.C. §§ 134
and 306, and we heard the appeal on October 31, 2018. We reverse.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on October 28, 2016 of United States Patent 8,032,278 (“the ’278 patent”),
issued to Kenneth E. Flick on October 4, 2011.
The ’278 patent describes a tracking unit that is compatible with
multiple vehicles. To this end, the tracking unit includes a multi-vehicle
compatible controller that communicates with a vehicle device using a
corresponding vehicle device code from among plural codes. The unit also
has a downloading interface that permits downloading enabling data related
to the corresponding vehicle device code, where enabling data may be (1)
the vehicle device code; (2) an instruction to select a code from among those
already stored; or (3) the data or sequence to allow the controller to generate
the vehicle device code. See generally ’278 patent, Abstract; col. 23, l. 41 –
col. 24, l. 4.
Claim 1 is illustrative of the invention and is reproduced below:
1. A multi-vehicle compatible tracking unit for a vehicle
comprising a vehicle data bus extending throughout the vehicle,
the multi-vehicle compatible tracking unit comprising:
a vehicle position determining device;
a wireless communications device;
a multi-vehicle compatible controller for cooperating
with said vehicle position determining device and said wireless
communications device to send vehicle position information;
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said multi-vehicle compatible controller to be coupled to
the vehicle data bus for communication thereover with at least
one vehicle device using at least one corresponding vehicle
device code from among a plurality thereof for different
vehicles; and
a downloading interface for permitting downloading of
enabling data related to the at least one corresponding vehicle
device code for use by said multi-vehicle compatible controller.

RELATED PROCEEDINGS
This appeal is said to be related to various proceedings. First,
Appellant informs us that briefs have been filed with the Court of Appeals
for the Federal Circuit in connection with related litigation between Patent
Owner and Requester (CalAmp). App. Br. 7–8; Reply Br. 2.1 Also, a
second litigation against Enfora, Inc. is said to be stayed pending the
outcome of this reexamination. App. Br. 9; Reply Br. 2.
Appellant also informs us of seven other ex parte reexamination
proceedings involving four patents, one of which (Control No. 90/013,587)
resulted in issuing a reexamination certificate confirming patentability of the
’278 patent’s claims. See App. Br. 9–12; Reply Br. 3; see also US
8,032,278 C1, issued Dec. 28, 2016.

THE REJECTIONS
The Examiner rejected claims 1, 4–8, 11, 12, and 18–21 under
35 U.S.C. § 102(b) as anticipated by Chou (US 6,330,499 B1; issued Dec.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed February
27, 2018 (“App. Br.”); (2) the Examiner’s Answer mailed May 14, 2018
(“Ans.”); and (3) the Reply Brief filed July 13, 2018 (“Reply Br.”).
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11, 2011), or, alternatively, under 35 U.S.C. § 103 as obvious over Chou.
Ans. 30–42.
The Examiner rejected claims 9, 10, and 22 under 35 U.S.C. § 103 as
obvious over Chou and Suman (US 6,028,537; issued Feb. 22, 2000). Ans.
42–46.
The Examiner rejected claims 2, 3, and 13–16 under 35 U.S.C.
§ 103 as obvious over Chou and Spaur (US 5,732,074; issued Mar. 24,
1998). Ans. 46–49.
The Examiner rejected claim 17 under 35 U.S.C. § 103 as obvious
over Chou, Suman, and Spaur. Ans. 50.

PROCEDURAL MATTERS
Before addressing the merits of the Examiner’s rejections at issue in
this appeal, we first address several procedural matters. First, Appellant’s
contention that the Examiner improperly refused to enter various exhibits
attached to the Final Office Action (App. Br. 16–19) is a petitionable—not
appealable—matter and is, therefore, not before us.2 Accord Ans. 3 (noting
this petitionable matter).
We reach the same conclusion regarding Appellant’s contention that
the present reexamination was allegedly improperly granted. App. Br. 54–

2 See MPEP § 706.01 (“[T]he Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a
question that should be decided by the Director on petition . . . .”).

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61. To be sure, the propriety of an Examiner’s determination that a
substantial new question of patentability (SNQ) exists in an ex parte
reexamination proceeding is appealable to this Board so long as certain
procedural requirements are satisfied. See MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2274(VI) (9th ed. Rev. 08.2017, Jan. 2018).
But that is not the case where, as here, Appellant does not squarely
address—let alone persuasively rebut—the Examiner’s SNQ determination.
See App. Br. 54–61. Rather, Appellant argues that due to the alleged
inequities of multiple reexamination requests against the same claims of the
same patent in this proceeding, we should apply a standard similar to that
used by the Board in deciding to institute trials for follow-on petitions in
inter partes review proceedings. See id.
We decline to do so here. Not only are Appellant’s procedural
grievances petitionable matters, they do not show error in the Examiner’s
SNQ determination. To the extent Appellant contends otherwise, we
disagree.

THE OBVIOUSNESS REJECTION OVER CHOU
The Examiner finds that Chou discloses or suggests every recited
element of independent claim 1 including a multi-vehicle compatible
controller (e.g., processor 300 and memory 350) to be coupled to a vehicle
data bus 140 for communication thereover with at least one vehicle device
(electronic control unit (ECU) 103) using at least one vehicle device code,
namely a diagnostic trouble code (DTC) or fault code, from among a
plurality thereof for different vehicles. Ans. 31–35. The Examiner reasons
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that because Chou’s fault code is vehicle model dependent, the code can be
used by the vehicle device from among plural such codes. See Ans. 4–5, 35.
The Examiner adds that Chou also discloses or suggests a downloading
interface (e.g., network interface 107, 320) for permitting downloading
“enabling data” (e.g., instructions to gather data and vehicle parameter
changes) related to at least one corresponding vehicle device code for use by
the controller. Ans. 35–36.
Appellant argues that Chou does not teach or suggest the recited
multi-vehicle compatible controller and downloading interface. App.
Br. 19–35; Reply Br. 4–11. Although Appellant acknowledges that Chou’s
vehicle-dependent fault codes are listed in a Society of Automotive
Engineers (SAE) publication, Appellant nonetheless emphasizes that these
codes lack uniformity between manufacturers, and even within product lines
of the same manufacturer—a problem that is said to be addressed by the
claimed invention. App. Br. 24–26. According to Appellant, the
Examiner’s equating different vehicles in the context of the claimed
invention to those of the same make and model, namely vehicles with
identical electronics and vehicle codes, but with different trims, is
inconsistent with the disclosure and, therefore, unreasonable. Reply Br. 6–9.
Appellant also argues that Chou does not teach or suggest the recited
downloading interface, but rather merely passes data between an in-vehicle
system and a remote service center. App. Br. 25–29. According to
Appellant, Chou teaches away from the claimed invention by working with
different vehicle codes at the service center—not the vehicle. App. Br. 35–
38. Appellant adds that evidence of secondary considerations of non-
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obviousness, including licensing, commercial success, copying by others,
customer need, and the limited value for accused products without the
invention, further rebuts the Examiner’s obviousness rejection. App.
Br. 38–54; Reply Br. 11.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Chou would have taught or suggested the recited multi-vehicle
compatible controller and downloading interface?

ANALYSIS
We begin by construing a key disputed limitation of claim 1 which
recites, in pertinent part, a multi-vehicle compatible controller. The
Specification does not define the term, but does describe a multi-vehicle
compatible controller 111 in Figure 10 that includes, among other things, a
central processing unit 126 and input/output (I/O) circuitry 127 that
interfaces with a vehicle device 121 using at least one corresponding vehicle
device code from plural codes for different vehicles. ’278 patent, col. 23, ll.
59–67. The corresponding vehicle code may be for reading from, or writing
to, the vehicle device. Id. col. 23, l. 67 – col. 24, l. 3.
In related litigation involving the ’278 patent, a U.S. District Court
construed the term “multi-vehicle compatible controller” as “electronic
circuitry that performs one or more control functions, and can operate with
more than one vehicle”—a construction that neither party disputed. See
Omega Patents, LLC v. CalAmp Corp., No. 6:13-cv-1950-Orl-40DAB,
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(M.D. Fla. Feb. 20, 2015) (“Dist. Ct. Claim Construction Order”), at 6, 24,
cited in App. Br. Rel. Proc. App. (“Item 8”). Although we apply a claim
construction standard in ex parte reexamination proceedings different from
that used by the court, we nonetheless find that the court’s construction is
consistent with the term’s broadest reasonable interpretation in light of the
Specification. Accord Power Integrations, Inc. v. Lee, 797 F.3d 1318,
1326–27 (Fed. Cir. 2015) (emphasizing the Board’s obligation to (1)
evaluate a district court’s claim construction for terms at issue, and (2)
determine whether that construction is consistent with the term’s broadest
reasonable interpretation).
Claim 1 further recites that the multi-vehicle compatible controller
can communicate with at least one vehicle device using at least one
corresponding vehicle device code from among plural device codes for
different vehicles. The district court construed the term “device codes” as
“signal from a vehicle device,” Dist. Ct. Claim Construction Order at 17,
25—a construction that is likewise consistent with its broadest reasonable
interpretation. Although the court did not construe the term “different
vehicles,” the ’278 patent in column 22, lines 3 to 7 incorporates by
reference a related patent, namely U.S. Patent No. 5,719,551 (“the ’551
patent”), which explains that “the term different vehicles may include
vehicles from different manufacturers, different models, or even different
trim levels of the same make or model.” ’551 patent, col. 6, ll. 38–42.
Accord Reply Br. 8 (acknowledging this explanation).
The term “trim level” in a vehicular context refers to a version of a
vehicle model that comes equipped with a set combination of features. See
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What is a Vehicle Trim Level?, THE NEWSWHEEL,
http://thenewswheel.com/what-is-a-vehicle-trim-level (Oct. 27, 2017)
(“Newswheel”). In defining “trim level,” this article explains that although
trim packages previously were typically purely aesthetic and only added
non-functional touches like chrome accents and upholstery stitching, many
automakers today include sets of higher-technology features and/or
performance upgrades in trim packages, resulting in offering as many as 6–
10 different trim levels for a given vehicle model. Id.
Although the Examiner construes the recited term “different vehicles”
to include vehicles that are the same make and model but with different
trims consistent with the ’551 patent, the Examiner nonetheless includes
vehicles whose electronics are not different as “different vehicles.” See
Ans. 4.
We find this construction problematic on this record. To be sure,
Newswheel indicates that differences among trim packages were formerly
purely aesthetic and non-functional, thus suggesting that the electronics in
these vehicles in these different trim packages would be the same despite the
vehicles’ aesthetic differences.
But as Appellant indicates (Reply Br. 6–9), vehicles with identical
electronics would use the same vehicle codes and, therefore, their inclusion
runs counter to the functionality of the recited multi-vehicle compatible
controller that can communicate with a vehicle device using at least one
corresponding vehicle device code from among plural codes for different
vehicles. Indeed, this compatibility with different vehicles and their
different codes is a fundamental aspect of the claimed invention that solves a
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longstanding problem in the art as Appellant indicates. See App. Br. 32
(noting that the lack of vehicle code compatibility among different vehicles
for vehicle tracking units is the problem addressed by the ’278 patent). To
the extent that the Examiner construes the different vehicles in claim 1 to
include those with the same vehicle codes, we find such a construction
unreasonable when interpreted in light of the Specification.
In reaching this conclusion, we emphasize that the broadest
reasonable interpretation in light of the Specification is not whether the
Specification precludes some broad reading of the claim term adopted by the
Examiner. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017). Nor is the broadest reasonable interpretation simply one that is not
inconsistent with the Specification. Id. at 1383. Rather, it is an
interpretation that corresponds with what and how the inventor describes his
invention in the Specification, that is, an interpretation consistent with the
Specification. Id. (citing In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed.
Cir. 2010)).
Therefore, we find the Examiner’s reliance on Chou for teaching the
recited multi-vehicle compatible controller problematic on this record. In
Chou, a vehicle’s ECUs 103 (which the Examiner maps to the recited
“vehicle device” (see Ans. 35)) report fault codes to fault detector 120B via
vehicle bus 140 and vehicle bus adapter 120C, the latter translating
messages received from the bus into the language of the fault detector and
vice-versa. Chou, col. 4, ll. 20–28; Fig. 3. Although these fault codes’
specifications and protocols depend on the manufacturer and vehicle model,
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and the codes are listed in an SAE publication,3 that does not mean that
Chou’s controller is compatible with multiple vehicles, where the controller
can communicate with a vehicle device using at least one corresponding
vehicle device code from among plural codes for different vehicles as
claimed. Indeed, this very SAE publication acknowledges the lack of
uniformity in these codes between manufacturers and, in some cases, within
the same manufacturer across different product lines. See App. Br. 26–27,
32 (quoting a passage from page 39 of the SAE HS-3000 manual). Accord
Declaration by Joseph C. McAlexander, III Under 37 C.F.R. § 1.132, dated
June 12, 2017 (“2017 McAlexander Decl.”) ¶ 13 (quoting this passage). See
also Rule 132 Declaration by Michael J. Suman, dated July 5, 2016 (“Item
4) (“Suman Decl.”) ¶¶ 11–12 (declaring that, at the time of his U.S. Patent
6,028,537 whose provisional application was filed June 14, 1996, vehicle
device codes were (1) proprietary to different manufacturers, (2) not made
freely available, and (3) difficult to obtain). Accord Rule 132 Declaration
By Joseph C. McAlexander, III, dated July 6, 2016 (“Item 5”) (“2016
McAlexander Decl.”) ¶ 10 (corroborating this testimony).
At best, Chou’s controller is compatible with one vehicle, namely the
particular vehicle whose fault codes correspond to that particular vehicle for
which the controller was designed. Accord App. Br. 32 (noting that Chou’s
ECUs use their own respective trouble codes that are different for different
vehicles). Although Chou’s remote service center can work with different

3 Chou refers to this publication as “SAE On-Board Diagnostics for Light
and Medium Duty Vehicles Standards Manual.” Chou, col. 4, ll. 33–36. For
brevity and consistency, we refer to this manual consistent with Appellant’s
nomenclature, namely “SAE HS-3000.” See App. Br. 25.
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vehicle device codes using a server 201 and repository 203 in Figure 1 as
Appellant acknowledges (App. Br. 37), Chou does not teach or suggest
providing such a capability in a vehicle.
Nor do we find that Chou teaches or suggests the recited downloading
interface for permitting downloading of enabling data related to the at least
one corresponding vehicle device code for use by the multi-vehicle
compatible controller. In the related litigation, the District Court did not
construe the term “downloading interface,” but did construe the term
“enabling data” as data relating to the at least one corresponding vehicle
device code for use by said multi-vehicle compatible controller—a
construction that matches the terms in the claim. See Dist. Ct. Claim
Construction Order at 20–23, 25.
According to the Specification, enabling data may be, for example, (1)
the vehicle device code or codes; (2) an instruction to select a code or codes
from among those already stored; or (3) the data or sequence to allow the
controller 111 to generate the vehicle device code or codes. ’278 patent, col.
24, ll. 9–13. Our emphasis on the permissive and exemplary language in
this passage underscores that enabling data is not limited to these three
alternatives.
But despite this non-limiting description, what is clear from
Appellant’s disclosure is that downloading enabling data via the recited
interface enables the recited controller to use a particular vehicle device
code from among plural such codes for different vehicles by providing either
(1) the code itself to the controller, or (2) data that otherwise enables the
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controller to select or generate the code. See ’278 patent, col. 24, l. 5 – col.
25, l. 28; Figs. 10–13.
Turning to the rejection, the Examiner refers to, among other things,
Chou’s network interface 320 and external device in Figure 2, as well as
network interface 107 and cell phone 102 in Figure 3, in connection with the
recited downloading interface. See Ans. 5–6, 35–36.
As shown in Chou’s Figures 2 and 3, Chou’s network interface 320
communicates wirelessly with remote service center 200 whose diagnostic
server 201 accesses vehicle-related data, including diagnostics and failure
mode data. See Chou, col. 3, ll. 15–32; col. 5, ll. 33–39. In one aspect, the
diagnostic server sends a health report to a vehicle’s client computer device
101, where the report is based on trouble codes reported by the client. Chou,
col. 6, ll. 1–14. If a fault or fault potential is identified, the server (1)
informs the vehicle’s client computer device via the data connection, and (2)
compiles the relevant data and creates a case for an associated call center
system 202 to handle. Chou, col. 6, ll. 15–19.
Chou’s system can also provide vehicle health checkups upon driver
request. See Chou, col. 8, l. 65 – col. 10, l. 11; Fig. 5. After the driver
triggers a health checkup session, vehicle data, including trouble codes, are
sent to the diagnostic server where this information is compared with that
stored in a repository, and a corresponding report is prepared and sent back
to the vehicle for display. Chou, col. 9, ll. 1–59; Fig. 5.
Although this functionality facilitates downloading vehicle-related
data and is, therefore, a “downloading interface” at least in that sense, it
nevertheless does not permit downloading the particular enabling data
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recited in the claim. As noted previously, this enabling data enables the
recited controller to use a particular vehicle device code from among plural
such codes for different vehicles by providing either (1) the code itself to the
controller, or (2) data that otherwise enables the controller to select or
generate the code. See ’278 patent, col. 24, l. 5 – col. 25, l. 28; Figs. 10–13.
To the extent that the Examiner finds that the data contained in the report
sent from Chou’s diagnostic server to the vehicle somehow contains this
particular enabling data, there is no evidence on this record to substantiate
such a finding.
Therefore, we agree with Appellant that Chou does not teach or
suggest the recited multi-vehicle compatible controller and downloading
interface. Although this deficiency is dispositive regarding our reversing the
Examiner’s obviousness rejection, we add that Appellant’s evidence of
secondary considerations of non-obviousness, including licensing,
commercial success, copying by others, customer need, and the limited value
for accused products without the invention (App. Br. 38–54; Reply Br. 11;
2017 McAlexander Decl. ¶ 19), only further weighs in favor of Appellant.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claim 18 which recites commensurate
limitations; and (3) dependent claims 4–8, 11, 12, and 19–21 for similar
reasons. Because this issue is dispositive regarding our reversing the
Examiner’s obviousness rejection of these claims, we need not address
Appellants’ other associated arguments including whether Chou teaches
away from the claimed invention. See App. Br. 35–38.

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THE ANTICIPATION REJECTION
Although Appellant’s arguments regarding (1) the submitted evidence
of secondary considerations of non-obviousness (App. Br. 38–54; Reply Br.
11), and (2) Chou teaching away from the claimed invention (App. Br. 35–
38) are irrelevant to the Examiner’s anticipation rejection over Chou (Ans.
30–42),4 we nonetheless find that Chou does not necessarily disclose the
recited multi-vehicle compatible controller and downloading interface
expressly or inherently for the reasons previously discussed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claim 18 which recites commensurate
limitations; and (3) dependent claims 4–8, 11, 12, and 19–21 for similar
reasons.

THE OTHER OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the additional cited prior art
cures Chou’s above-noted deficiencies, we will not sustain the obviousness
rejections of claims 2, 3, 9, 10, 13–17, and 22 (Ans. 42–50) for similar
reasons.

4 See, e.g., Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed.
Cir. 2008) (“‘[T]eaching away’ is irrelevant to anticipation.”); see also
Cohesive Technologies, Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir.
2008) (“[O]bviousness requires analysis of secondary considerations of
nonobviousness, while secondary considerations are not an element of a
claim of anticipation.”).

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CONCLUSION
The Examiner erred in rejecting (1) claims 1, 4–8, 11, 12, and 18–21
under § 102, and (2) claims 1–22 under § 103.

DECISION
The Examiner’s decision to reject claims 1–22 is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

REVERSED

PATENT OWNER:

CHRISTOPHER F. REGAN, ESQUIRE
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A.
P. O. BOX 3791
ORLANDO FL 32802-3791

THIRD PARTY REQUESTER:

KPPB LLP
2190 S. TOWNE CENTRE PLACE
SUITE 300
ANAHEIM, CA 92806